Ex Parte 7,439,616 et al

Patent Trials and Appeals Board

Feb 1, 2017

95001364 - (D) (P.T.A.B. Feb. 1, 2017)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,364 06/30/2010 7,439,616 092771-0034 7700
139331 7590 02/02/2017
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
ANDUJAR, LEONARDO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/02/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BSE COMPANY, LTD.
Requester

v.

KNOWLES ELECTRONICS, LLC
Patent Owner
____________

Appeal 2016-008586
Reexamination Control 95/001,364 and 90/010,985 (merged)
Technology Center 3900
Patent 7,439,616 B2
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Patent Owner Knowles Electronics, LLC appeals under 35 U.S.C.
§ 134(b) and 35 U.S.C. § 315(a) the Examiner’s final decision to reject
claims 1, 8–18, and 21. Claims 2–7, 19, and 20 have been confirmed. New
claims 22–35 have been added during the reexamination process and have
been determined to be patentable.
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Requester BSE Company, Ltd. appeals the Examiner’s decision not to
reject claims 1, 8–18, and 21–35 under certain grounds proposed by
Requester.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We reverse.

STATEMENT OF THE CASE
A request for ex parte reexamination of U.S. Patent No. 7,439,616
B2 (the ’616 patent), assigned Reexamination Control No. 90/010,985, was
filed on May 6, 2010 by Analog Devices, Inc. A subsequent request for
inter partes reexamination of the ’616 patent, assigned Reexamination
Control No. 95/001,364, was filed on June 30, 2010, by Third-Party
Requester BSE Company, Ltd. The reexamination proceedings have been
merged.
The ’616 patent, entitled “Miniature Silicon Condenser Microphone,”
issued October 21, 2008, to Anthony D. Minervini, based on Application
No. 11/276,025, filed February 10, 2006.
The ’616 patent is assigned to Knowles Electronics, LLC, the real
party in interest.

Related Litigation
The ’616 patent has been asserted in Knowles Electronics, LLC v.
GoerTek, Inc., No. 1:13-cv-4586 (N.D. Ill. June 21, 2013) and In the Matter
of Certain Silicon Microphone Packages and Products Containing the Same,
No. 337-TA-888 (USITC June 21, 2013). The ’616 patent was also subject
to a petition for inter partes review in GoerTek, Inc. and GoerTek
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Electronics, Inc. v. Knowles Electronics, LLC, No. IPR2013-00523 (PTAB
Sept. 23, 2013). These cases have been terminated. (PO App. Br. 2.)

The Claims
Independent claim 1 and new independent claim 22 are exemplary,
with disputed limitations in italics:
1. A package for containing a transducer comprising:
a substrate including a surface and an aperture formed
therein, the transducer attached to the surface of the substrate
adjacent the aperture;
a cover secured to the substrate defining a volume, the
transducer unit being disposed within the volume; and
a sealing ring being formed on a surface of the substrate
opposite the volume, the sealing ring surrounding the aperture
formed in the substrate.

22. A silicon microphone package comprising:
a substrate comprising an upper surface, a lower surface,
and an acoustic port between the upper and lower surfaces:
a silicon microphone die attached to the upper surface of
the substrate;
a cover attached to the upper surface of the substrate to
form an enclosure having an inner chamber, the silicon
microphone die disposed within the inner chamber;
a plurality of solder pads on the lower surface of the
substrate, the solder pads being suitable for soldering to an end
user’s circuit board using a solder reflow process; and
a sealing ring formed on a metalized region on the lower
surface of the substrate surrounding the acoustic port, the
sealing ring being suitable for attaching to an end user’s circuit
board using a solder reflow process.
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The Non-Adopted Rejections
Requester appeals the Examiner’s decision not to adopt the following
proposed rejections:
1. Claims 22–27 and 29–34 as unpatentable under 35 U.S.C. § 103(a)
over Halteren (US 6,324,907 B1; Dec. 4, 2001), Kurtz ’277 (US 4,222,277;
Sept. 16, 1980) and Kaschke (US 5,999,821; Dec. 7, 1999).
2. Claims 28 and 35 as unpatentable under 35 U.S.C. § 103(a) over
Halteren, Kaschke, Kurtz ’277, and Baumhauer (US 4,533,795; Aug. 6,
1985).
3. Claims 22–27 and 29–34 as unpatentable under 35 U.S.C.
§ 103(a) over Halteren, Harris (US 6,052,464; Apr. 18, 2000), and
Kurtz ’277.
4. Claims 28 and 35 as unpatentable under 35 U.S.C. § 103(a) over
Halteren, Harris, Kurtz ’277, and Baumhauer.
5. Claims 22–27 and 29–34 as unpatentable under 35 U.S.C. § 103(a)
over Giasolli (Robert Giasolli, MEMS Packaging Introduction slide
presentation at Advanced Technological Workshop on Packaging and
Integration of MEMS & Related Microsystems (Nov. 10–12, 2000)), Harris,
Kurtz ’277, Kurtz ’579 (US 3,654,579; Apr. 4, 1972), and Halteren.
6. Claims 28 and 35 as unpatentable under 35 U.S.C. § 103(a) over
Giasolli, Harris, Kurtz ’277, Kurtz ’579, Halteren, and Baumhauer.
7. Claims 22–27 and 29–34 as unpatentable under 35 U.S.C. § 103(a)
over Giasolli, Kaschke, Kurtz ’277, Kurtz ’579, and Halteren.
8. Claims 28 and 35 as unpatentable under 35 U.S.C. § 103(a) over
Giasolli, Kaschke, Kurtz ’277, Kurtz ’579, Halteren, and Baumhauer.
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9. Claims 1, 8–18, and 21 as unpatentable under 35 U.S.C. § 103(a)
over Halteren and either Kaschke or Harris.
Requester relied upon the following declarations in support of the
proposed rejections:
Declaration under 37 C.F.R. § 1.132 of Michael Judy, Ph.D., dated
November 4, 2009, accompanied by Exhibit A.
Declaration under 37 C.F.R. § 1.132 of Rao R. Tummala, Ph.D., dated
April 5, 2010, accompanied by Exhibits A–E.
Declaration under 37 C.F.R. § 1.132 of Robert Giasolli, dated
May 26, 2010, accompanied by Exhibits A–C.
Declaration under 37 C.F.R. § 1.132 of Bruce K. Gale, Ph.D., dated
May 26, 2010, accompanied by Exhibits A–C.

The Rejections
Patent Owner appeals the Examiner’s decision to reject all the
pending claims as follows:
1. Claims 1, 8, 10–17, and 21 stand rejected under 35 U.S.C. 103(a)
as unpatentable over Giasolli and Kaschke.
2. Claim 9 stands rejected under 35 U.S.C. 103(a) as unpatentable
over Giasolli, Kaschke, and Mullenborn (US 6,732,588 B1; May 11, 2004).
3. Claim 18 stands rejected under 35 U.S.C. 103(a) as unpatentable
over Giasolli, Kaschke, and Cho (US 5,301,420; Apr. 12, 1994).
4. Claims 1, 8, 10–17, and 21 stand rejected under 35 U.S.C. 103(a)
as unpatentable over Giasolli and Harris (US 6,052,464; Apr. 18, 2000).
5. Claim 9 stands rejected under 35 U.S.C. 103(a) as unpatentable
over Giasolli, Harris, and Mullenborn.
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6. Claim 18 stands rejected under 35 U.S.C. 103(a) as unpatentable
over Giasolli, Harris, and Baumhauer.

ANALYSIS
Requester’s Appeal
§ 103 Rejection—Halteren, Kurtz ’277, and Kaschke
First, the Examiner found that the combination of Halteren,
Kurtz ’277, and Kaschke does not teach the limitation “a silicon microphone
die,” as recited in independent claim 22. (RAN 41.) In particular, the
Examiner found that “Halteren discloses the transducer is ‘comprised on’ the
first die and may comprise a miniature silicon microphone” and accordingly,
“Halteren teaches and shows the transducer is on the die and does not show
the microphone is a silicon die.” (Id. (citation and emphases omitted).) We
do not agree with the Examiner’s determination.
Halteren relates to a flexible substrate transducer assembly, in
particular, an electro-acoustic transducer. (Col. 1, ll. 5–7.) Halteren
explains the following:
The transducer system may comprise a single or several
individual silicon dies or substrates. According to a preferred
embodiment of the invention, the transducer system comprises a
first die and a second die, preferably both of silicon. The first die
comprises a transducer, such as an acoustic sound pressure
transducer, which is adapted to generate the transducer signal on
the two or more signal terminals in response to a measured
physical quantity such as a sound pressure.
(Col. 5, ll. 8–16 (emphases added).) Dependent claim 16 of Halteren recites
“[a] flexible substrate transducer assembly according to claim 15, wherein
the acoustic sound pressure transducer comprises a miniature silicon
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microphone.” (Col. 10, ll. 1–3.) Accordingly, because Halteren explains
that the transducer is a miniature silicon microphone (col. 5, ll. 8–16; see
also col. 10, ll. 1–3), Halteren teaches the limitation “a silicon microphone
die.”
However, Halteren also explains that “[t]he acoustic sound pressure
transducer comprised on the first die may comprise a miniature silicon
microphone.” (Col. 5, ll. 36–37 (emphasis added).) Although a single
ambiguous sentence is Halteren states that “[t]he acoustic sound pressure
transducer [is] comprised on the first die” (col. 5, ll. 36–37), when such
sentence is read in the context of the entire reference, it is apparent that the
language “on the first die” is a typographic error. Moreover, Patent Owner
acknowledges that “Patent Owner does not draw the same conclusions from
the cited quote” that “Halteren ’907 describes its transducer as ‘on’ the die
rather than being the die” and “Patent Owner does not distinguish Halteren
’907 on the basis that it does not disclose a ‘silicon microphone die.’” (PO
Resp. to Office Action 8–9 n.2, filed July 20, 2011.)
Accordingly, we are persuaded by Requester’s argument that
“Halteren clearly discloses a silicon microphone die attached to an upper
surface of a substrate” and “PO acknowledges that Halteren cannot be
distinguished on the grounds alleged by the examiner.” (Requester App.
Br. 7.)
Second, the Examiner found that the combination of Halteren,
Kurtz ’277, and Kaschke does not teach the limitation “a sealing ring formed
on a metalized region on the lower surface of the substrate surrounding the
acoustic port,” as recited in independent claim 22. (RAN 44.) In particular,
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the Examiner found that “to apply the teachings of Kaschke to Halteren the
layers would be used to provide a seal to mechanically couple the
microphone of Halteren and the layers would be applied on the upper
surface to attach the microphone to the substrate.” (Id. (emphasis omitted).)
Patent Owner agrees, arguing that:
as the Examiner found, Kaschke ’821 does not disclose the
claimed sealing ring “formed . . . on the lower surface of the
substrate . . . for attaching to an end user’s circuit board” because
“Kaschke does not suggest a sealing ring that does not attach to
the microphone itself.”
(PO Reb. Br. 15.) We do not agree with the Examiner’s determination.
Figure 1 of Halteren illustrates a lower surface of flexible substrate
transducer assembly 10 (col. 7, ll. 10–11), including flexible member 40
having four electrical conductors 20–23 (col. 8, ll. 28–29) and holes 30
extending through second end portion 45 of flexible member 10 (col. 8,
ll. 47–49). Figure 1 of Halteren, a lower surface of flexible substrate
transducer assembly 10, is reproduced below:

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Figure 4 of Halteren illustrates that the lower surface of second end
portion 45 (i.e., layer 130) is formed of gold. (Fig. 4; see also Fig. 3A.)
Figure 2A, a cross-sectional view of transducer assembly 10, which includes
silicon microphone 61 and Application Specific Integrated Circuit
(ASIC) 62 mounted on flexible member 40 (col. 7, ll. 51–57), is reproduced
below:

Halteren explains that “[t]hese exposed parts [four electrical conductors 20–
23] are utilized as contact pads that provide required electrical connections
between assembly 10 and a piece of electronic equipment (not shown) that
holds a connector adapted to contact and fix the position of the exposed
parts.” (Col. 7, ll. 32–36.) Similarly, Halteren explains that “[t]his assembly
[10] is adapted for use in compact equipment such as mobile phones.”
(Abstract.)
Kaschke relates to a radiotelephone. (Col.1, ll. 5–7.) Figure 3 of
Kaschke illustrates radiotelephone 100 having a microphone acoustic
aperture 318 formed in membrane sheet layer 302 (col. 3, ll. 9–12) and
earpiece electroacoustic transducer 322 mechanically coupled to membrane
sheet layer 302 (col. 3, ll. 23–24) with “a first adhesive layer 368, gasket
layer 370 and a second adhesive layer 372 arranged in a sandwich
configuration” (col. 3, ll. 44–46). Kaschke explains that such sandwich
configuration “provide[s] an appropriate acoustic cavity and acoustic seal for
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the microphone electroacoustic transducer 324.” (Col. 3, ll. 46–49.)
Figure 3 of Kaschke partially reproduced below, is a cross-sectional view of
radiotelephone 100 that includes an annotation in the form of a dashed
rectangle to emphasize first adhesive layer 368, gasket layer 370, second
adhesive layer 372, and microphone acoustic aperture 318 in membrane
sheet layer 302 (unreferenced):

FIG. 3 (partial)
As indicated by Requester, it would have been obvious to one of
ordinary skill in the art to incorporate the first adhesive layer 368, gasket
layer 370, and second adhesive layer 372 sandwich configuration of
Kaschke into the lower surface of flexible substrate transducer assembly 10
of Halteren. Such incorporation of elements, in which the first adhesive
layer 368, gasket layer 370, and second adhesive layer 372 sandwich
configuration of Kaschke is inverted and attached to the lower surface of
flexible substrate transducer assembly 10 of Halteren, such that holes 30 of
Halteren are aligned with microphone acoustic aperture 318, is illustrated
below:
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Thus, the combination of Halteren and Kaschke is nothing more than
incorporating the known first adhesive layer 368, gasket layer 370 and
second adhesive layer 372 sandwich configuration of Kaschke for providing
an acoustic cavity and acoustic seal, with the known flexible substrate
transducer assembly 10 of Halteren, to yield predictable results. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”). Moreover, because
Halteren indicates that transducer assembly 10 is electronically connected to
an unspecified piece of electronic equipment (see col. 7, ll. 32–36) and has
applications in mobile phones (Abstract), one of ordinary skill in the art
would combine the teachings of Halteren and Kaschke, which is related to
radiotelephones.
Accordingly, we are persuaded by Requester’s arguments that
“Kaschke provides motivation and a reason for modifying Halteren insofar
as providing a seal such as disclosed in Kaschke would provide an acoustic
cavity within the teachings of Kaschke” and “[t]he sealing ring would be
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formed on the surface of the substrate where sound is entering the
microphone package, and the sealing ring would surround the aperture in
order to form the acoustic coupling with the substrate.” (Requester App.
Br. 10.)
Third, the Examiner found that the combination of Halteren,
Kurtz ’277, and Kaschke does not teach the limitation “a plurality of solder
pads on the lower surface of the substrate, the solder pads being suitable for
soldering to an end user’s circuit board using a solder reflow process,” as
recited in independent claim 22. (RAN 104–105.) In particular, the
Examiner found that “the metallization of Halteren is
redistribution/connection traces and not a solder pad metallization as
suggested in the request” and “is expressly intended to be plugged into an
external connector and makes no suggestion that its exposed conductors 20–
23 could be transformed into solder pads for surface mounting to an external
circuit board using reflow,” such that “[t]his type of substrate is
perpendicular connected to the substrate similar to SD cards, IC cards or IC
boards and not vertically stacked as the type of substrate disclosed by
Kaschke.” (Id. at 105 (citation omitted).) Patent Owner agrees, arguing that
“the Examiner correctly found in van Halteren ’907 ‘no suggestion that its
exposed conductors 20–23 could be transformed into solder pads for surface
mounting to an external circuit board using reflow’” and “there was no
rationale to combine van Halteren ’907 and Kaschke ’821, which have
substrates with very different structures.” (PO Reb. Br. 12.) We do not
agree with the Examiner’s determination.
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As discussed previously, Halteren explains that “[t]hese exposed parts
[four electrical conductors 20–23] are utilized as contact pads that provide
required electrical connections between assembly 10 and a piece of
electronic equipment (not shown) that holds a connector adapted to contact
and fix the position of the exposed parts.” (Col. 7, ll. 32–36.) However,
Halteren is silent with respect to how such electrical conductors 20–23 are
connected to transducer assembly 10 and thus, the Examiner has provided
insufficient evidence to support a finding that conductors 20–23 of Halteren
“is expressly intended to be plugged into an external connector.”
(RAN 105.)
Moreover, Requester argues that “[a]s demonstrated in the declaration
of Dr. Tummala (see page 6, paragraphs 20, 21, 23, and 24), Halteren
discloses a surface mountable package.” (Requester App. Br. 13.)
Paragraph 20 of the Tummala Declaration states the following:
Halteren discloses a surface mountable package. The
flexible circuit package of Halteren can certainly be surface
mounted. . . . U.S. Patent No. 5,018,005 (Lin et al.) . . . illustrates
an early development of tape carrier packages. Lin shows an
integrated circuit mounted on a flexible substrate that may be
made from Kapton, the same material used in the Halteren
substrate. Fig. 3 of Lin shows the circuit on a flexible substrate
just as was shown by Halteren. Fig. 4 shows the tape carrier
package flipped over and surface mounted to a printed circuit
board. The title of Lin’s patent is “Thin, Molded, Surface Mount
Electronic Device.” In Halteren, the package need not be flipped
over, since the contact pads are on the lower surface of the
flexible substrate.
(¶ 20 (emphases added).) Figure 3 of Lin, which illustrate a cross-sectional
view of a thin electronic device 10, including flexible substrate 32 surface
mounted to printed circuit board (PCB) 12, is reproduced below:
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Accordingly, paragraph 20 of the Tummala Declaration, as evidenced by
Figure 4 of Lin, persuasively supports Requester’s argument that transducer
assembly 10 of Halteren can be surface mounted to a circuit board.
Moreover, paragraph 24 of the Tummala Declaration states the
following:
The ability to make solder connections to the contact pads
20–23 is further demonstrated by the fact that the pads in
Halteren are made of Ni/Au as shown in Fig. 4. Ni/Au pads are
typically used as bond pads to connect packages to boards. Ni
acts as a solder barrier so that the copper is not dissolved in the
solder. Au acts as a wetting layer to solders. Indeed, the
[commonly assigned] ’089 patent [to the same sole inventor,
Anthony D. Minervini] itself discloses Ni/Au bumps for surface
mounting a silicon die microphone or ball grid array package.
(¶ 24.) Accordingly, paragraph 24 of the Tummala Declaration, as
evidenced by commonly assigned ’089 patent, persuasively supports
Requester’s argument that the four electrical conductors 20–23 of
Halteren are solderable.
Third, the Examiner found that the combination of Halteren,
Kurtz ’277, and Kaschke was improper because the “requestor’s
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modification of the structure of Halteren to use the rigid base member of
Kurtz would modify the flexible substrate of Halteren and eliminate the
flexible substrate advantage proposed by Halteren” (RAN 42), and “[b]y
applying Kurtz as proposed with a metal bottom, Halteren would be
modified to cover the entire bottom with metal including the contacts
because the entire bottom of Halteren would be changed to be metal and
appear to not allow for alternative configurations” (id. at 43). Patent Owner
agrees, arguing that “any modification that could transform van Halteren
’907 into the invention of Claims 22 or 29 would necessarily require
replacement or extensive rework of a key feature of van Halteren ’907 – its
‘flexible substrate’ – and there was no motivation to do so.” (PO Reb.
Br. 13.) We do not agree with the Examiner’s determination.
As discussed previously, Figure 4 of Halteren illustrates that the lower
surface of second end portion 45 (i.e., layer 130) is formed of gold (Fig. 4;
see also Fig. 3A), such second end portion 45 having holes 30 extending
through flexible member 10 (col. 8, ll. 47–49). Accordingly, because
Halteren explains that the lower surface of second end portion 45 is formed
of gold and includes holes 30, Halteren teaches the limitation “a metalized
region on the lower surface of the substrate surrounding the acoustic port.”
Kurtz ’277 relates to an absolute pressure transducer. (Abstract.)
Figure 5 of Kurtz ’277 illustrates a sectional view of a transducer and its
housing configuration. (Col. 2, ll. 37–38.) Kurtz ’277 explains that “[t]he
housing basically consists of a bottom base 40 fabricated from a suitable
metal, epoxy, plastic, etc.” (Col. 3, ll. 61–63.) Alternatively, because
Kurtz ’277 explains that the bottom base 40 for a transducer housing is
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formed from metal, Kurtz ’277 teaches the limitation “a metalized region on
the lower surface of the substrate surrounding the acoustic port.”
As such, Requester cited to Kurtz ’277 as a cumulative reference for
teaching the limitation “a metalized region on the lower surface of the
substrate surrounding the acoustic port” (Requester Resp. to Office
Action 20, filed Aug. 19, 2011; see also Requester App. Br. 14), rather than
incorporating the bottom base 40 into the flexible substrate transducer
assembly 10 of Halteren. Accordingly, we are persuaded by Requester’s
argument that “[t]he Requester does not rely on Kurtz [’277] as disclosing a
substrate, but rather relies on Halteren.” (Requester App. Br. 14.)
Last, the Examiner found that the combination of Halteren,
Kurtz ’277, and Kaschke is improper because “a ‘solderable ring’ as
depicted by the Requestor would make unnecessary the elongated section of
the substrate 40 (the section extending outside the area of 70)” and “[t]here
is no indication in the record that Halteren’s structure can be modifying
beyond its intended use which is a side connection.” (RAN 105.) Patent
Owner agrees, arguing that “[t]he Examiner rightly rejected Requester’s
argument that one of ordinary skill would modify Halteren to use a
‘solderable ring’ around the sound inlet ports because such a modification
that ‘would make unnecessary the elongated section of the substrate 40 (the
section extending outside the area of 70).’” (PO Reb. Br. 14.) We do not
agree with the Examiner’s determination.
As discussed previously, Halteren explains that “[t]hese exposed parts
[four electrical conductors 20–23] are utilized as contact pads that provide
required electrical connections between assembly 10 and a piece of
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electronic equipment (not shown) that holds a connector adapted to contact
and fix the position of the exposed parts.” (Col. 7, ll. 32–36.) Similarly,
Halteren explains that “[t]his assembly [10] is adapted for use in compact
equipment such as mobile phones.” (Abstract.) In other words, Halteren
explains that flexible substrate transducer assembly 10 is an interior
component for a larger device, for example, a mobile phone. As such, one
of ordinary skill in the art would attach transducer assembly 10 to other
electronic components.
Accordingly, because Halteren explains that flexible substrate
transducer assembly 10 is an interior component for a larger device,
Halteren does not support the Examiner’s finding that “[t]here is no
indication in the record that Halteren’s structure can be modifying beyond its
intended use which is a side connection.” (RAN 105.) Thus, we are
persuaded by Requester’s argument that “[b]y combining the known seal of
Kaschke with the known microphone package of Halteren at the metalized
portion of the substrate surrounding the sound inlet port defined therein,
each and every feature of the Minervini claims is taught and suggested by
the prior art.” (Requester App. Br. 16.)
Accordingly, we reverse the Examiner’s decision not to adopt the
proposed rejection of claims 22–27 and 29–34 under 35 U.S.C. § 103(a)
over Halteren, Kurtz ’277, and Kaschke.

§ 103 Rejection—Halteren, Kaschke, Kurtz ’277, and Baumhauer
Claims 28 and 35 depend from independent claims 22 and 29. We
reject claims 28 and 35 under 35 U.S.C. § 103(a) over Halteren, Kaschke,
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Kurtz ’277, and Baumhauer for the same reasons provided by Requester.
(Requester Resp. to Office Action 21, filed Aug. 19, 2011.)

§ 103 Rejection—Halteren and Kaschke
Independent claim 1 is broader in scope than claims 22 and 29.
Independent claim 1 also recites limitations similar to those discussed with
respect to claims 22 and 29. We reject claim 1 for the same reasons
discussed with respect to rejection of claims 22 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Halteren, Kaschke, and Kurtz ’277.
Claims 8–18 and 21 depend from independent claim 1. We reject
claims 8–18 and 21 under 35 U.S.C. § 103(a) as unpatentable over Halteren
and Kaschke, for the same reasons provided by Requester. (Request for
Inter Partes Reexamination 11–13, filed June 30, 2010.)

Other § 103 Rejections
We do not reach the rejections of claims 22–35 under 35 U.S.C.
§ 103(a) as unpatentable over various combinations of Halteren, Harris,
Kurtz ’277, Baumhauer, Giasolli, Kurtz ’579, and Kaschke, because it is
unnecessary to reach the propriety of the Examiner’s decision not to reject
these claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009) (not reaching additional obviousness rejections).

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Patent Owner’s Appeal
§103 Rejection—Giasolli and Kaschke
The Examiner found that the conventional conductive lead frame of
Giasolli corresponds to the claimed “substrate.” (RAN 12.) The Examiner
also found that the plastic cap of Giasolli corresponds to the claimed
“cover.” (Id.) We do not agree with the Examiner’s determination.
Independent claim 1 recites “a substrate” and “a cover.” In one
embodiment, the ’616 patent discloses “a substrate 14, an amplifier 16, a
back volume or air cavity 18 which provides a pressure reference for the
transducer 12, and a cover 20,” such that “[t]he substrate 14 is typically
formed of FR-4 material which may be processed in circuit board panel
form.” (Col. 3, ll. 30–44.) The ’616 patent also discloses the following:
This patent is directed to microphone packages. Among
the many benefits of the microphone packages disclosed herein
over microphone packaging utilizing plastic body/lead frames is
the ability to process packages in panel form allowing more units
to be formed per operation and at much lower cost. The typical
lead frame for a similarly functioning package would contain
between 40 and 100 devices connected together. The present
disclosure may have as many as 14,000 devices connected
together (as a panel). Also, the embodiments disclosed herein
require minimal “hard-tooling.” This allows the process to
adjust to custom layout requirements without having to redesign
mold, lead frame, and trim/form tooling.
(Col. 3, ll. 10–22.) The ’616 patent further discloses the following:
Moreover, these embodiments have a better match of
thermal coefficients of expansion with the end user’s PCB since
this part would typically be mounted on FR-4 which is the same
material used by end users. The present designs may also
eliminate the need for wire bonding that is required in plastic
body/lead frame packages. The foot print is typically smaller
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than that would be required for a plastic body/lead frame design
since the leads are formed by plating a through-hole in a circuit
board of which one half will eventually form the pathway to the
solder pad. In a typical plastic body/lead frame design, a gull in
which the leads are disposed, widen the overall foot print.
(Col. 3, ll. 23–34.)
Thus, in comparison to the prior art microphone packaging utilizing
plastic body/lead frames, the disclosed microphone packages of the ’616
patent includes the following advantages: (i) processing packages in panel
form, which permits more units to be formed per operation; (ii) adjusting
custom layout requirements without having to redesign mold, lead frame,
and trim/form tooling; (iii) eliminating the need for wire bonding; and (iv) a
smaller foot print. Because the ’616 patent disparages the prior art
microphone packaging utilizing plastic body/lead frames, under the broadest
reasonable interpretation consistent with the’616 patent, the claimed
“substrate” or “cover” cannot be construed to encompass the prior art
microphone packaging utilizing plastic body/lead frames. See In re Abbott
Diabetes Care Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012)
(“‘[E]lectrochemical sensor’ is properly interpreted to mean a discrete
electrochemical sensor devoid of external connection cables or wires to
connect to a sensor control unit” when “the specification contains only
disparaging remarks with respect to the external cables and wires of the
prior-art sensors” and “every embodiment disclosed in the specification
shows an electrochemical sensor without external cables or wires”).
In a slide entitled “MEMS Packaging Lead Frame,” Giasolli illustrates
a cross-sectional view of a MEMS acoustic sensor, in particular, a “Plastic
Cap” and a “Conventional Conductive Lead Frame.” (P. 40.) However, as
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discussed previously, under the broadest reasonable interpretation consistent
with the ’616 patent, the claim terms “substrate” and cover” are construed to
exclude plastic body/lead frames.
Accordingly, we are persuaded by Patent Owner’s argument that
“Minervini’s claims at the very least suggest (if not require) a configuration
that does not include a lead frame” (PO App. Br. 23) because “the Minervini
specification contains only ‘disparaging remarks’ about plastic body /lead
frame-based designs” and “every embodiment described or illustrated uses a
laminated circuit board as the substrate, rather than a lead frame” (id. at 24).
Accordingly, we reverse the Examiner’s decision to reject claims 1, 8,
10–17, and 21 under 35 U.S.C. § 103(a) as unpatentable over Giasolli and
Kaschke.

§ 103 Rejection—Giasolli, Kaschke, and Mullenborn
Claim 9 depends from independent claim 1. Accordingly, we reverse
the Examiner’s decision to reject dependent claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Giasolli, Kaschke, and Mullenborn for the
same reasons as discussed previously with respect to claim 1.

§ 103 Rejection—Giasolli, Kaschke, and Cho
Claim 18 depends from independent claim 1. Accordingly, we
reverse the Examiner’s decision to reject dependent claim 18 under 35
U.S.C. § 103(a) as unpatentable over Giasolli, Kaschke, and Cho for the
same reasons as discussed previously with respect to claim 1.

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§ 103 Rejection—Giasolli and Harris
We reverse the Examiner’s decision to reject claims 1, 8, 10–17, and
21 under 35 U.S.C. §103(a) as unpatentable over Giasolli and Harris for the
same reasons as discussed previously with respect to the rejection of claim 1
under 35 U.S.C. §103(a) as unpatentable over Giasolli and Kaschke.

§ 103 Rejection—Giasolli, Harris, and Mullenborn or Baumhauer
We reverse the Examiner’s decision to reject claims 9 and 18 under 35
U.S.C. §103(a) as unpatentable over various combinations of Giasolli,
Harris, and Mullenborn or Baumhauer for the same reasons as discussed
previously with respect to the rejection of claim 1 under 35 U.S.C. §103(a)
as unpatentable over Giasolli and Kaschke.

DECISION
We reverse the Examiner’s decision not to reject claims 22–27 and
29–34 under 35 U.S.C. § 103(a) over Halteren, Kurtz ’277, and Kaschke.
We reverse the Examiner’s decision not to reject claims 28 and 35
under 35 U.S.C. § 103(a) over Halteren, Kaschke, Kurtz ’277, and
Baumhauer.
We reverse the Examiner’s decision not to reject claims 1, 8–18, and
21 under 35 U.S.C. § 103(a) over Halteren and Kaschke.
We reverse the Examiner’s decision to reject claims 1, 8, 10–17, and
21 under 35 U.S.C. § 103(a) over Giasolli and Kaschke.
We reverse the Examiner’s decision to reject claim 9 under 35 U.S.C.
§ 103(a) over Giasolli, Kaschke, and Mullenborn.
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We reverse the Examiner’s decision to reject claim 18 under 35
U.S.C. § 103(a) over Giasolli, Kaschke, and Cho.
We reverse the Examiner’s decision to reject claims 1, 8, 10–17, and
21 over Giasolli and Harris.
We reverse the Examiner’s decision to reject claim 9 over Giasolli,
Harris, and Mullenborn.
We reverse the Examiner’s decision to reject claim 18 over Giasolli,
Harris, and Baumhauer.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal of the
Examiner’s decision not to adopt the rejections of: (i) claims 22–27 and 29–
34 under 35 U.S.C. § 103(a) over Halteren, Kurtz ’277, and Kaschke; (ii)
claims 28 and 35 under 35 U.S.C. § 103(a) over Halteren, Kaschke,
Kurtz ’277, and Baumhauer; and (iii) claims 1, 8–18, and 21 under 35
U.S.C. § 103(a) over Halteren and Kaschke constitutes a new ground of
rejection and is hereby designated as such. Section 41.77(b) provides that
“[a] new ground of rejection . . . shall not be considered final for judicial
review.” That section also provides that Patent Owner, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
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same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

REVERSED
37 C.F.R. § 41.77(b)
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PATENT OWNER:

FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109

THIRD PARTY REQUESTER:

Third Party Requester (Reexamination Control 95/001,364)
LADAS & PARRY LLP
224 SOUTH MICHIGAN A VENUE
SUITE 1600
CHICAGO, IL 60604

Third Party Requester (Reexamination Control 90/010,985)
STEVEN G. SAUNDERS
SUNSTEIN KANN MURPHY & TIMBERS LLP
125 SUMMER STREET
BOSTON, MA 02110-1618