Ex Parte Blomberg et alDownload PDFPatent Trials and Appeals BoardMay 24, 201913146319 - (D) (P.T.A.B. May. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/146,319 07/26/2011 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 05/29/2019 FIRST NAMED INVENTOR Martti Blomberg 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3518-1061 3104 EXAMINER PICHLER, MARIN ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 05/29/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTT! BLOMBERG, HANNU KA TTELUS, and RIIKKA PUURUNEN Appeal2017-008723 Application 13/146,319 Technology Center 2800 Before JAMES R. HUGHES, MONICA S. ULLAGADDI, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 45-57, 59-73, 75-82, 84-97, 99, 101, 103, and 105-108, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was waived. We affirm. 1 According to Appellants, the real party in interest is Teknologian Tutkimuskeskus VTT. App. Br. 1. Appeal2017-008723 Application 13/146,319 INVENTION Appellants' invention relates to an electrically tunable Fabry-Perot interferometer, produced with micromechanical (MEMS) technology. Abstract. Claim 45 is illustrative and reads as follows: 45. A method for producing an electrically tunable Fabry-Perot interferometer, comprising: - providing a substrate; - providing a first mirror structure on the substrate; - providing a second, movable mirror structure, the first and second mirror structures comprising first and second mirrors which are substantially parallel; - providing a Fabry-Perot cavity between the first and second mirrors, by providing a sacrificial layer on the first mirror structure, and removing at least part of the sacrificial layer after providing the second mirror structure; - providing electrodes for electrical control of a distance between the mirrors, and at least one of the electrodes is electrically floating; - providing contacts for the electrodes; and - providing a mirror control circuit that comprises a first fixed electrode and a second fixed electrode, configured so that a capacitance between the at least one floating electrode and the first fixed electrode is a changing capacitance, and the capacitance between the floating electrode and the second fixed electrode is a fixed capacitance, and the fixed and changing capacitances are connected in series and are configured so that when an AC voltage applied between the contacts, the electrodes form a control voltage across the capacitance formed from said fixed and changing capacitances control a distance between the first mirror structure and the second movable mirror structure, wherein polymer material is applied as the sacrificial layer, and an electrically semi-insulating layer is provided in the second movable mirror structure, and said capacitance formed from said fixed and changing capacitances result in said floating electrode having a floating potential of an electrode which is common to an electrode of said changing capacitance and an electrode of said fixed capacitance. 2 Appeal2017-008723 Application 13/146,319 REJECTIONS Claims 87, 92, 96, 103, and 108 stand rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4-5. Claims 45-57, 59-73, 75-82, 84-97, 99, 101, 103, and 105-108 stand rejected under pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Final Act. 5-9. Claims 45, 46, 50-52, 54-57, 60-62, 66, 67, 70-73, 76-82, 87-91, 93-95, 97, 99-101, and 103 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Tayebati et al. (US 2003/0012231 Al, published Jan. 16, 2003) ("Tayebati") and Jourdain et al. (US 6,078,395, issued June 20, 2000) ("Jourdain"). Final Act. 9-26. Claims 47, 48, 63, 64, and 84 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Tayebati, Jourdain, and Leung et al. (US 6,712,480 Bl, issued Mar. 30, 2004) ("Leung"). Final Act. 26-27. Claims 49, 59, 75, and 86 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Tayebati, Jourdain, and Antonszewski (J. Antonszewski, et al., Materials and Processes for MEMS- Based Infrared Microspectrometer Integrated on HgCdTe Detector, IEEE Journal of Selected Topics in Quantum Electronics, 14, 1031-1040, 07- 08/2008). Final Act. 27-29. Claims 53, 68, and 69 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Tayebati, Jourdain, and 3 Appeal2017-008723 Application 13/146,319 Tran (A. T. T. D. Tran, Surface Micromachined Fabry-Perot Tunable Filter, IEEE Photonics Tech. Letters, 8, 393-395, 03/1996). Final Act. 29. Claims 65 and 85 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Tayebati, Jourdain, and Tai et al. (US 2005/0017177 Al, published Jan. 27, 2005) ("Tai"). Final Act. 30-31. Claims 105-108 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Tayebati, Jourdain, and Zavracky (US 6,381,022 Bl, issued Apr. 30, 2002). Final Act. 31-32. ANALYSIS Rejection of Claims 87, 92, 96, 103, and 108 under § 112, First Paragraph The Examiner rejected claims 87, 92, 96, 103, and 108 under 35 U.S.C. § 112, first paragraph, for lack of written description. Final Act. 4. The Examiner explained that claim 87 recites the limitation "an AC voltage is applied between first and second contacts to first and third electrodes." See id. The Examiner noted Appellants' Figures 5a and 5b depict three electrodes of which one is the floating electrode, but do not depict AC voltage "applied between" the first and third electrodes, as claim 87 requires. Id. at 4-5. According to the Examiner, the claim limitation "voltage is applied" requires a connection to a particular element. Appellants contend the Examiner erred because an artisan of ordinary skill would know from Figure 5b that "the AC is applied throughout the capacitor coupled circuit." App. Br. 15. According to Appellants, the Specification describes that an AC voltage is applied between the first 51 Oa and second 51 Ob contacts to the first 506 and third 550 electrodes to form a control voltage across the first capacitance for controlling the distance 4 Appeal2017-008723 Application 13/146,319 between the first 51 and second 52 parts. Reply Br. 3 ( citing Spec. p. 11, line 32-p. 12, line 8). We are not persuaded that the Examiner erred. The portion of the Specification cited by Appellants describes that the voltage between the electrodes 506 and 515 determines the distance between the mirrors 51 and 52, and that the voltage can be controlled by controlling the amplitude Vac of the AC signal applied between the contacts 510a and 510b. Spec. 12. Nowhere have Appellants identified a description of AC voltage "applied between" the first and third electrodes, as recited in claim 87. Moreover, Appellants have not persuasively rebutted the Examiner's finding that the AC or capacitive coupling described in the Specification differs from the application of AC voltage between the first and third electrodes, as recited in claim 87. See Ans. 6. Furthermore, Appellants have not persuaded us that the Examiner's interpretation of the limitation "voltage is applied" is overly broad, unreasonable, or inconsistent with the Specification.2 Thus, we agree with the Examiner's broad, but reasonable, interpretation of "voltage is applied." For these reasons, we agree with the Examiner that the portions of the Specification cited by Appellants would not have conveyed to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Accordingly, we affirm the Examiner's rejection of independent claim 87 under 35 U.S.C. § 112, first paragraph, for lack of written description. 2 We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 5 Appeal2017-008723 Application 13/146,319 We also sustain the Examiner's rejection of dependent claims 92, 96, 103, and 108, not argued separately, under 35 U.S.C. § 112, first paragraph. Rejection of Claims 45-57, 59-73, 75---82, 84-97, 99, 101, 103, and 105-108 under§ 112, Second Paragraph The Examiner rejected claims 45-57, 59-73, 75-82, 84-97, 99, 101, 103, and 105-108 under 35 U.S.C. § 112, second paragraph, for indefiniteness. Final Act. 5. With regard to claim 45, the Examiner determined the limitation "so that when an AC voltage applied between the electrodes forms a control voltage across the capacitance formed from said fixed and changing capacitances connected in series for controlling a distance between the first and second mirror structures" is indefinite. Id. The Examiner found that, given the absence of a clear nexus between the method of making and the method of using the interferometer, it is "confusing how this phrase limitation regarding a method of using the tunable Fabry-Perot interferometer, should be interpreted, and how it further limits a method of producing and the structure of the Fabry-Perot interferometer .... " Id. at 5-6. The Examiner interpreted the identified limitation broadly, so that a method of producing the Fabry-Perot interferometer that includes the steps of providing the electrodes and contact to which a voltage can be applied, satisfies the limitation. Id. at 6. Appellants contend the Examiner erred because "the claims clearly set forth functional limitations, which are due patentable weight even when present in a product claim." App. Br. 1 7. Appellants further argue that, here, the functional claim language provides an indication of what the structure (electrodes) does upon application of an AC voltage between the contacts. Reply Br. 5. 6 Appeal2017-008723 Application 13/146,319 We are not persuaded that the Examiner erred. "A patent applicant is free to recite features of an apparatus either structurally or functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210,212 (CCPA 1971) ("there is nothing intrinsically wrong with the use of [ functional language] in drafting patent claims"). In order to be accorded patentable weight, however, functional language in an apparatus claim must limit the claim in terms of structure rather than function. In re Schreiber, 128 F.3d at 1477-78; MPEP § 2114 (Ninth Ed., Rev. 08.2017). It has long been held that "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). In cases in which functional language adds a structural limitation to an apparatus claim, it does so because the language describes something about the structure of the apparatus rather than merely listing its intended or preferred uses. See, e.g., K--2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999). Here, the relevant limitation in claim 45 reads: providing a mirror control circuit that comprises a first fixed electrode and a second fixed electrode, configured so that a capacitance between the at least one floating electrode and the first fixed electrode is a changing capacitance, and the capacitance between the floating electrode and the second fixed electrode is a fixed capacitance, and the fixed and changing capacitances are connected in series and are configured so that when an AC voltage applied between the contacts, the electrodes form a control voltage across the capacitance formed from said fixed and changing capacitances control a distance between the first mirror structure and the second movable mirror structure, ... ( emphasis added). 7 Appeal2017-008723 Application 13/146,319 The disputed portion of the limitation, shown in italics above, concerns electrodes, when an AC voltage is applied, forming a control voltage to control a distance between mirror structures. We agree with the Examiner that, here, it is unclear how and to what extent the functional language further limits the method of producing, and the structure of, the Fabry-Perot interferometer ( claim 45), the Fabry-Perot interferometer structure ( claim 60), the intermediate product of the Fabry-Perot interferometer ( claim 7 6), or the micromechanical component electrode arrangement structure, without a clear nexus between the method of using such structures and the method and the structure functionality of the Fabry- Perot interferometer being produced, the intermediate product, or the micromechanical component electrode arrangement. See Ans. 7. For these reasons, we sustain the Examiner's§ 112, second paragraph, rejection of independent claim 45, as well as independent claims 60 and 76, and dependent claims 46-57, 59, 61-73, 75, 77-82, 84-97, 99, 101, 103, and 105-108, not argued separately. Rejection of Claims 45, 46, 50---52, 54-57, 60---62, 66, 67, 70---73, 76---82, 87-91, 93-95, 97, 99-101, and 103 under 35 U.S.C. § 103(a) Appellants contend the Examiner erred in rejecting the claims identified above for obviousness because the cited portions of Tayebati do not teach or suggest removal of the sacrificial layer after second mirror production. App. Br. 20. We are not persuaded that the Examiner erred. The Examiner found that Tayebati teaches that providing the cavity comprises providing a sacrificial layer on the first mirror structure (Tayebati ,-J,-J 21, 88; element 30), at least part of the sacrificial layer is removed after providing the second mirror structure (Tayebati ,-J 89), and the sequential removal of the sacrificial 8 Appeal2017-008723 Application 13/146,319 layer (Tayebati Figs. 3E, 4G and 6A-6C) after the top distributed Bragg reflector (12) is formed (Tayabati ,i,i 94-96; Figs. 3E-F). Final Act. 10; Ans. 8-9. Appellants have not persuasively rebutted the Examiner's findings. See App. Br. 20. For example, in the Reply Brief, Appellants did not address the Examiner's further explanations in the Answer. Thus, we are not persuaded that the Examiner erred in finding Tayebati teaches or suggests removal of the sacrificial layer after second mirror production. Appellants next contend Jourdain does not teach or suggest a variable capacitance and a fixed capacitance, as claim 45 requires, because Jourdain refers to two capacitors in series. App. Br. 21. We are not persuaded that the Examiner erred. Referring to Figures 3 and 4 of Jourdain, the Examiner found: the structure of Jourdain comprises capacitance Cl on the left side formed by bottom electrode plate 3 8 and top electrode plate 24, and capacitance C 1 on the right side of the device formed by bottom electrode plate 40 and top electrode plate 24. The top electrode 24 is common to both left and right C 1 capacitances and therefore the two are connected in series, as clearly depicted in the schematic of Fig. 4. Both capacitance structures C 1 on left and right side have parts with fixed (i.e. constant) capacitance, because the distance between the electrodes e.g. 38 and 24 is constant due to inserted studs and stops e.g. 50, 46 ( or 48, 52 on the right side), as well as variable capacitance parts since the distance between the electrodes e.g. 38 and 24 in e.g. central area with not studs or stops changes due to applied voltage as a result of attractive electrical Coulomb force. Specifically Fig. 5 clearly depicts that the central zone 54 flexes and thereby changes the distance in the central zone when the voltage is applied. Therefore the structure of Jourdain intrinsically comprises the claimed structure of the fixed capacitance formed between electrodes 3 8 9 Appeal2017-008723 Application 13/146,319 and 24 over studs and stops 50, 46, that is connected in series with the floating top electrode 24 to the variable capacitance formed in the free central region between electrodes 40 and 24. Ans. 11. Appellants have not persuasively rebutted the Examiner's findings. Appellants state in a conclusory manner that "the left part and the right part of Cl cannot be simultaneously variable and constant," but offer insufficient objective evidence or persuasive argument to support that position. See Reply Br. 8. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Thus, we are not persuaded that the Examiner erred in finding Jourdain teaches or suggests a variable capacitance and a fixed capacitance. Appellants next contend Tayebati teaches a curved distributed Bragg reflector ("DBR") structure, while the claimed structure is planar. App. Br. 23. We are not persuaded of Examiner error because, as the Examiner points out, even if the claims could be construed to require a planar mirror, Tayebati teaches that the mirror structures (i.e. DBR structure) may have planar configuration. Ans. 13 ( citing Tayebati ,-J 23). Thus, we are not persuaded that the Examiner erred in finding that Tayebati teaches or suggests "first and second mirrors which are substantially parallel," as recited in claim 45, for example. Appellants further contend Tayebati does not teach a third electrode, as required by claim 45. App. Br. 23, 25. 10 Appeal2017-008723 Application 13/146,319 We are not persuaded of Examiner error because Appellants attack Tayebati separately, when the Examiner relied on the combination of Tayebati and Jourdain as teaching the third, floating electrode. See Final Act. 12. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Thus, we are not persuaded that the Examiner erred in finding that the combination of Tayebati and Jourdain teaches or suggests, "providing electrodes for electrical control of a distance between the mirrors, and at least one of the electrodes is electrically floating," as recited in claim 45. Appellants further contend Tayebati does not teach the limitation "when the AC voltage is applied between the contacts" because there is no mention of AC voltage in Tayebati. App. Br. 26. Appellants' arguments are not persuasive. The Examiner found that alternate currents (AC) are necessarily present in the tunable vertical cavity of Tayebati, and explained why. See Ans. 14. Appellants have not persuasively rebutted the Examiner's findings. See id. For example, in the Reply Brief, Appellants did not address the Examiner's further explanations in the Answer. Thus, we are not persuaded that the Examiner erred in finding Tayebati teaches or suggests that AC voltage is applied between the contacts, as claim 45 requires. 11 Appeal2017-008723 Application 13/146,319 For these reasons, we are not persuaded the Examiner erred in finding that the combined teachings of Tayebati and Jourdain teach or suggest the disputed limitations of claim 45. Appellants next contend that the Examiner erred because modifying Tayebati to include the floating electrode taught by Jourdain "would change the principle of operation of Tayebati, requiring substantial modification to the structure of Tayebati." Reply Br. 8. Additionally, Appellants argue, "it is unclear as to how the Office would modify the structure of Tayebati to incorporate the additional electrode." Id. at 8-9. We are not persuaded that the Examiner erred. Appellants' argument is conclusory in that it does not describe the modifications to Tayebati's structure or explain how Tayebati's principle of operation would change. Moreover, it is well settled that "a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. See Keller, 642 F.2d at 425. Thus, we are not persuaded that the Examiner erred in combining the teachings of Tayebati and Jourdain in the manner proposed by the Examiner. Appellants next contend that the Examiner erred in combining Tayebati and Jourdain because applying AC voltage between the contacts would render Tayebati inoperable for its intended purpose. App. Br. 27. In particular, Appellants argue that doing what the Examiner proposed would result in arbitrary mirror locations. Id. 12 Appeal2017-008723 Application 13/146,319 We are not persuaded that the Examiner erred. Again, Appellants' contention is conclusory, and not supported by persuasive argument or objective evidence. Appellants' argument is also based on an actual, physical substitution of elements, which is not the test for obviousness. See Keller, 642 F.2d at 425. For these reasons, we are not persuaded the Examiner erred in combining the teachings of Tayebati and Jourdain in the manner proposed by the Examiner. Accordingly, we sustain the Examiner's§ 103(a) rejection of independent claim 45, and the Examiner's§ 103(a) rejection of independent claims 60, 76, and 87, which recite similar limitations and are not argued separately with particularity. We also sustain the Examiner's§ 103(a) rejection of dependent claims 46, 50-52, 54-57, 61, 62, 66, 67, 70-73, 77- 82, 88-91, 93-95, 97, 99-101, and 103, not argued separately with particularity. Rejection of Claims 47, 48, 63, 64, and 84 under 35 U.S.C. § 103(a) In rejecting claims 47, 48, 63, 64, and 84, the Examiner found that Leung teaches the substrate is a wafer on which several interferometer chips are formed, whereby the interferometer chip is cut out from the wafer, and that at least part of the sacrificial layer is removed after the interferometer chip has been cut out from the wafer. 3 Final Act. 26-27. 3 In so finding, the Examiner explained that, even though product-by-process device claims are limited by and defined by the process, the determination of patentability is based on the product itself and does not depend on its method of production. Final Act. 26-27 (citing In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985)); Ans. 17. The Examiner, however, explained that full patentable weight was given to all product and production steps in rejected claims 47, 48, 63, 64, and 84. Ans. 17. 13 Appeal2017-008723 Application 13/146,319 Appellants contend the Examiner erred because Leung is non- analogous art. App. Br. 27. Appellants rely on the primary classifications of Tayebati and Jourdain in making this argument. Id. We are not persuaded of Examiner error. Whether art is analogous is a question of whether the reference is analogous to the claimed invention (i.e., either being from the same field of endeavor as the claimed invention or reasonably pertinent to the problem faced by the inventor), not whether the prior art references are analogous to each other. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see also Ans. 16. Appellants do not address whether Leung is within the same field of endeavor as the claimed invention or is otherwise reasonably pertinent to the problem faced by Appellants. See App. Br. 27. We note, however, that Leung is directed to optical MEM devices and methods for making MEM devices that have one or more movable micro-structures configured for modulating light. Leung Abst.; see also Ans. 16. Appellants have not persuaded us that Leung' s MEM devices for light modulation are non- analogous with the microelectromechanically tunable Fabry-Perot filter device of the claimed invention. Indeed, Appellants acknowledge that Leung "pertains to the formation of MEM structures that can be used for light modulation." App. Br. 32. Appellants argue, however, that the comb structure of Leung Figure 8 "appears to be some type of diffraction grating, a technology that is non-analogous to the Fabry-Perot interferometer of the present invention." App. Br. 32 (citing In re Klein, 647 F.3d 1343 (Fed. Cir. 2011) ( containers in a bird feeder non-analogous to containers for bolts and screws)). Appellants' argument is conclusory because Appellants present insufficient persuasive argument or objective evidence to support it. 14 Appeal2017-008723 Application 13/146,319 For these reasons, we are not persuaded the Examiner erred, and we sustain the Examiner's§ 103(a) rejection of claims 47, 48, 63, 64, and 84, not argued separately with particularity. Rejection of Claims 49, 59, 75 and 86 under 35 U.S.C. § 103(a) In rejecting claims 49, 59, 75, and 86, the Examiner found Antonszewski teaches that an interferometer chip (i.e. filter) is encapsulated or encapsulation, where at least part of the sacrificial layer is removed after encapsulating of the interferometer chip. Final Act. 27-28. Appellants contend the cited teachings of Antonszewski are insufficient to address the deficiencies of Tayebati and Jourdain, discussed in the context of claims 45 and 87, above. We are not persuaded of error because we do not agree with Appellants that the Examiner erred in finding that Tayebati and Jourdain teach or suggest the disputed limitations of claims 45 and 87, for the reasons discussed above. Accordingly, we sustain the Examiner's§ 103(a) rejection of claims 49, 59, 75, and 86. Rejection of Claims 53, 68, and 69 under 35 U.S.C. § 103(a) In rejecting claims 53, 68, and 69, the Examiner found Tran teaches that the support for the second movable mirror is at an edge area of the second movable mirror and that the support is provided by remaining polymer layer between the layers of the first and second mirror layers, at the edges of the initially formed polymer layer and at the edges of the cavity of the interferometer. Final Act. 29. Appellants contend the Examiner erred because Tran teaches multiple polymer layers, which are not recited in Appellants' claims. App. Br. 34- 35. Appellants refer to this as a "fundamental difference between Tran and 15 Appeal2017-008723 Application 13/146,319 the present invention." Id. at 35. Appellants also contend that "the perforated structure of Tran would be incapable of yielding the capacitance properties of the present invention." Id. In particular, Appellants argue, "utilizing the technology of Tran would change the principle of operation and render it unsuitable for its intended purpose." Id. at 36. We are not persuaded that the Examiner erred. It is well settled that "a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner concluded it would have been obvious to an artisan of ordinary skill to apply the teachings of Tran to the teachings of Tayebati and Jourdain by incorporating parts of the sacrificial polyimide layer at the edges of the Fabry-Perot cavity sandwiched between the front and back mirrors in order to provide a simpler process involving low temperature and low surface stress for micromachining tunable Fabry-Perot filter devices. Final Act. 29. Thus, we are not persuaded by Appellants' "bodily incorporation" arguments regarding the multiple layers and perforated structure of Tran. Accordingly, we sustain the Examiner's§ 103(a) rejection of claims 53, 68, and 69, not argued separately. Rejection of Claims 65 and 85 under 35 U.S.C. § 103(a) In rejecting claims 65 and 85, the Examiner found Tran teaches that the interferometer comprises a package and an interferometer chip. Final Act. 30. 16 Appeal2017-008723 Application 13/146,319 Appellants contend the Examiner erred in rejecting claim 65 because "there appears to be no teaching or inference of performing these steps when the interferometer chip has been inside the packaging," as claim 65 requires. App. Br. 37. Appellants also argue the Examiner erred in rejecting claim 85 because there is no teaching in Tai of enclosing the intermediate product. Id. at 37-38. We are not persuaded that the Examiner erred. The Examiner explained that claims 65 and 85 "are device and intermediate product claims, not manufacturing sequential process steps, and are therefore treated to the extent of the structure( s) that they impart on the device or the intermediate product." Id. at 20-21. Thus, the Examiner did not give patentable weight to the method limitation of claim 65 "at least part of the sacrificial layer has been removed when the interferometer chip has been inside the packaging." Id. at 21. With regard to claim 85, the Examiner found the intermediate product is taught in Tayebati, but Tai also clearly discloses that the radiation sensing tunable device can be an intermediate product of a larger system or device such as multispectral and/or hyperspectral imaging (MS1/HSI) system. Ans. 22 ( citing Tai ,-J 55). Appellants have not persuasively rebutted the Examiner's factual findings and claim interpretation. In particular, Appellants did not address in the Reply Brief the Examiner's further explanations in the Answer. For these reasons, we are not persuaded the Examiner erred in rejecting claims 65 and 85. Accordingly, we sustain the Examiner's§ 103(a) rejection of claims 65 and 85. 17 Appeal2017-008723 Application 13/146,319 Rejection of Claims 105-108 under 35 U.S.C. § 103(a) In rejecting claims 105-108, the Examiner found Zavracky teaches measuring a distance between mirrors, and that the distance between the mirrors is measured with a capacitance measurement. Final Act. 32. Appellants contend the Examiner erred because Zavracky "teaches a 'single capacitor system,"' while the present invention utilizes dual capacitors and is thus fundamentally different from the technology of Zavracky." App. Br. 39. We are not persuaded by Appellants' argument because Appellants have not persuasively rebutted the Examiner's finding that "there is no fundamental difference in structures or technology between a single capacitor system and two serially connected capacitors forming the single capacitor system." Ans. 22. Moreover, we agree with the Examiner that Appellants have "not pointed out or attempted to explain in any manner why and how the capacitive measurement of the distance between two mirrors cannot be applied to the dual capacitance of Tayebati and Jourdain combination." See id. For these reasons, we are not persuaded that the Examiner erred in rejecting claims 105-108. Accordingly, we sustain the Examiner's§ 103(a) rejection of claims 105-108, not argued separately. DECISION We affirm the decision of the Examiner rejecting claims 45-57, 59- 73, 75-82, 84-97,99, 101, 103,and 105-108. 18 Appeal2017-008723 Application 13/146,319 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 19 Copy with citationCopy as parenthetical citation