Ex Parte Christel et al

Board of Patent Appeals and Interferences

Jul 11, 2008

10286239 (B.P.A.I. Jul. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEE A. CHRISTEL
and THEODORE J. VERMEULEN
____________

Appeal 2008-0427
Application 10/286,2391
Technology Center 2800
____________

Decided: July 11, 2008
____________

Before BRADLEY R. GARRIS, Administrative Patent Judge, FRED E.
MCKELVEY, Senior Administrative Patent Judge, and ALLEN R.
MACDONALD, Administrative Patent Judge.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-35.2 We have jurisdiction under 35 U.S.C. § 6.

1 Application filed October 31, 2002, for Reissue of U. S. Patent No.
6,140,143 (the ‘143 patent), granted October 31, 2000, based on Application
Serial No. 07/833,417 (the ‘417 application), filed February 10, 1992.
2 The Final Rejection under the first paragraph of 35 U.S.C. § 112 has been
withdrawn by the Examiner (Ans. 24).
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We AFFIRM.
STATEMENT OF THE CASE
The ‘143 patent issued with claims 1-10, which correspond to
appealed reissue claims 1-10, directed to a process (or method) for forming
silicon material having a boss section and a flexure section. Appellants seek
reissue of this patent in order to obtain patent protection for reissue claims
11-35, which are directed to a device comprising a boss section and a flexure
section.
Representative independent process (or method) claims 1 and 10 and
representative independent device claims 11 and 22 read as follows:
1. A process for forming silicon material having a boss section and a
flexure section, said boss section thicker than said flexure section, said
process comprising the steps of:

providing a substrate of one type doped silicon material; diffusing
another type dopant material into said substrate so as to provide another type
doped silicon material at a depth (x-y) from a surface of said one type doped
silicon material, said diffusing located only in the regions of the boss
section, where x is the boss section thickness and y is the flexure section
thickness;

epitaxially growing a layer of said another type doped silicon on said
substrate to said flexure section thickness y over the surface of said
substrate; and

etching away one type doped silicon material with a one type doped
silicon etchant leaving said boss section having a thickness x and said
flexure section having a thickness y.

10. A method of chemical machining of silicon material with a boss
section joined by a flexure section from a substrate of boron doped silicon
material having a resistivity of from 4 to 6 ohms-cm, said boss section
thicker than said flexure section, said method comprising the steps of:
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(1) providing a mask of silicon dioxide on said substrate over said
flexure section;

(2) diffusing phosphorus dopant material into said substrate so as to
provide a phosphorus doped silicon material at a depth (x-y) from a surface
of the substrate, said diffusing being provided only in the regions of the boss
section, where x is the boss section thickness and y is the flexure section
thickness, said diffusing step including the steps of:

implantation of phosphorus dopant ions in said substrate; and

annealing said substrate so as to eliminate crystal lattice defects
and to at least partially diffuse said phosphorus dopant ions;

(3) epitaxially growing a layer of phosphorus doped silicon on said
substrate to said flexure section thickness y over the surface of the boron
doped silicon substrate and the areas of diffusion phosphorus doped silicon;
and

(4) etching away boron doped silicon material with a potassium
hydroxide etchant leaving said boss section having a thickness x and said
flexure section having a thickness y.

11. A device including a silicon substrate defining a cavity and
including a flexure section and a boss section adjacent the cavity, the
improvement comprising:

the boss section including an initial boss structure doped with diffused
n-type dopant and an n-type epitaxially grown layer having a substantially
uniform epitaxial layer thickness disposed in part on the initial boss
structure; and

the flexure section including a portion of the n-type epitaxially grown
layer not disposed on the initial boss structure and having the substantially
uniform epitaxial layer thickness.

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22. A device including a flexure section and a boss section,
comprising a silicon material structure having a comparatively thicker boss
section doped with diffused n-type dopant and including an n-type
epitaxially grown layer, and a comparatively thinner, epitaxially grown,
n-type layer flexure section.

The prior art set forth below is relied upon by the Examiner as
evidence of unpatentability:
Rehn 4,320,664 Mar. 23, 1982
Black 4,463,336 Jul. 31, 1984
Shimizu 4,588,472 May 31, 1986
Aine 4,783,237 Nov. 8, 1988
Weinberg 5,060,039 Oct. 22, 1991
Greiff 5,129,983 Jul. 14, 1992

Sze, VLSI Technology, McGraw-Hill Book Co., 32-33 (1983).

Huster, "Vertically Structured Silicon Membranes by Electrochemical
Etching," Sensors and Actuators, A21-A23, 899-903 (1990).

Claims 11-35 are rejected under 35 U.S.C. § 251 as lacking a defect
correctable by reissue for a number of reasons including improper recapture
of surrendered subject matter (Ans. 3-5).
Claims 1-6, 8, 11, 12, 14-28, and 30-35 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Shimizu (Ans. 5-6).
Under 35 U.S.C. § 103(a): claim 10 is rejected as being unpatentable
over Shimizu in view of Sze (Ans. 10-12); claims 7, 9, 18, 19, 29, 32, 33,
and 35 are rejected as being unpatentable over Shimizu in view of Sze and
Black or Aine (Ans. 12-13); and claim 13 is rejected as being unpatentable
over Shimizu in view of Weinberg (Ans. 13).
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Claims 11-35 are rejected under 35 U.S.C. § 102(b) as being
anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
unpatentable over, Huster (Ans. 6-7).
Claims 11, 12, 14-17, 20-28, 30, and 31 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Rehn (Ans. 8).
Claims 1-6, 8, 11, 12, and 14-35 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Aine (Ans. 8-9).
Under 35 U.S.C. § 103(a): claim 10 is rejected as being unpatentable
over Aine in view of Sze (Ans. 13-15); and claims 7, 9, and 13 are rejected
as being unpatentable over Aine in view of Sze and Weinberg (Ans. 15-16.
Under 35 U.S.C. § 102(e) claims 1-4 are rejected as being anticipated
by Greiff (Ans. 9-10).
Under 35 U.S.C. § 103(a): claims 10-12 and 14-35 are rejected as
being unpatentable over Greiff in view of Aine and Sze (Ans. 16-18); claims
5-9 are rejected as being unpatentable over Greiff in view of Sze and Aine
(Ans. 18); and claim 13 is rejected as being unpatentable over Greiff in view
of Aine and Sze and Weinberg (Ans. 18-19).

THE SECTION 251 REJECTION OF CLAIMS 11-35 BASED ON
RECAPTURE

Appellants have not separately argued any of the individual claims
under rejection. Therefore, we select independent claim 22 to represent
these rejected claims.
ISSUE
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Have Appellants established that the Examiner erred in rejecting
claims 11-35 under § 251 based on recapture?

FINDINGS OF FACT
1. During prosecution of the original ‘417 application, Appellants
appealed the Examiner's decision rejecting process claims 1-10 as well as
product-by-process claims 11-18 and received a decision dated September
27, 1999. This decision reversed the Examiner's rejections but included a
new ground of rejection against product-by-process claims 11-18 under 35
U.S.C. § 102(b) as being anticipated by or alternatively under 35 U.S.C. §
103(a) as being obvious over the above-noted Huster reference (Decision 1,
10).
2. Because Appellants failed to respond to the new ground of
rejection within two months from the decision date, product-by-process
claims 11-18 were canceled via an Examiner's Amendment mailed March 9,
2000 (Examiner's Amendment 2). The Examiner’s Amendment included a
statement that, if the cancellation of claims 11-18 was unacceptable to
Appellants, an amendment should be filed as provided by 37 C.F.R. § 1.312
no later than the payment of the issue fee (id.).
3. No such § 1.312 amendment was filed and the issue fee was timely
paid whereupon the '143 patent issued on October 31, 2000.
4. This reissue application was filed on October 31, 2002 and
contains device claims 11-35 of which claims 22 and 31 are the broadest.
5. On page 22 of the Answer, the Examiner makes the undisputed
finding reproduced below wherein reissue device claims 22 and 31 are
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compared with and determined to be broader than canceled, original-
application, product-by-process claim 11:

6. Appellants admit that "Claims 11-35 are broadened with respect to
the claims of the [‘143] patent" (Br. 27).

PRINCIPLES OF LAW
Under the recapture rule, a reissue applicant is precluded from
regaining subject matter that had been surrendered in order to obtain
allowance of the patent claims. North Am. Container, Inc. v. Plastipak Pkg.,
Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). The recapture rule is applied as
a three step process:
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(1) first, we determine whether, and in what respect, the reissue
claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue
claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially
narrowed in other respects, so that the claims may not have been enlarged,
and hence, avoid the recapture rule. Id.

ANALYSIS
Concerning step (1) of the recapture rule analysis, Appellants admit
that the reissue claims are broader in scope than the ‘143 patent claims (FF
6).
As for step (2), Appellants surrendered the subject matter of the ‘417
application, product-by-process claims 11-18 by not responding to the
Board's new ground of rejection thereof (FF1) and by not responding to the
Examiner's Amendment canceling these claims (FF2, 3).
Moreover, Appellants do not dispute the Examiner's finding that
multiple aspects of representative reissue device claims 22 and 31 are
broader than the subject matter surrendered in canceled, ‘417 application
claim 11 (FF4, 5). Therefore, it is our determination that the broader aspects
of reissue claims 11-35 relate to subject matter surrendered in the original
prosecution.
Relevant to step (3) is Appellants' argument that reissue claims 11-35
"include narrowing limitations over the subject matter canceled during
prosecution and therefore do not capture matter surrendered during
prosecution [of the ‘417 application]" (Br. 27).
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However, as correctly stated by the Examiner, "Appellants . . . fail to
point out limitations [in reissue claims 11-35] that are narrower than the
surrendered claims" (Ans. 21). Significantly, this statement has not been
contested by Appellants on the record of this appeal. It follows that
Appellants have not established on this record that reissue claims 11-35 have
been materially narrowed so as to avoid the recapture rule.
Further concerning the reissue of recapture, Appellants argue that "the
present claims are not the claimed subject matter for which claims were
canceled to obtain the original patent [because] the original canceled claims
were directed to a product by process and the present Claims 11-35 are
directed to a device" (Br. 25). This argument is unpersuasive for several
reasons.
First, Appellants are incorrect in asserting that canceled product-by-
process claims 11-18 of the original ‘417 application technologically differ
from reissue device claims 11-35. In each case, the claims are directed to an
apparatus or article of manufacture. Second, the nomenclature by which
claimed inventions are categorized is not an aspect of the above discussed
analytical process for assessing application of the recapture rule. It is the
scope of claimed inventions, not their categorization, which determines
whether surrendered subject matter has crept into a reissue claim. See
Ex parte Bradshaw, 2007 W.L. 2138943, *7 (BPAI 2007).

CONCLUSION
On this record, Appellants have failed to show that the Examiner erred
in rejecting claims 11-35 based on recapture under 35 U.S.C. § 251.
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Therefore, we sustain the § 251 rejection of claims 11-35 based on
recapture.
THE OTHER SECTION 251 REJECTIONS
The Examiner also has rejected claims 11-35 under 35 U.S.C. § 251
based on "[l]ack of defect in the original patent due to the failure of filing a
divisional application prior to issuance of original patent" (Ans. 3). This
rejection is premised on the Examiner's belief that the Examiner's
Amendment canceling newly rejected claims 11-18 in the original ‘417
application constituted "an election/restriction requirement for failure to
response [sic] to the new ground of rejection" (Ans. 4). As correctly argued
by Appellants (Br. 21), the Examiner's premise is factually erroneous. There
was no election or restriction requirement involving claims 11-18 in the
prosecution of the original application, and therefore Appellants were under
no obligation of any kind to file a divisional application directed to these
claims.
For this reason, we do not sustain the § 251 rejection of claims 11-35
based on "[l]ack of defect in the original patent due to the failure of filing a
divisional application" (Ans. 3).
In addition, the Examiner has rejected claims 11-35 under 35 U.S.C.
§ 251 because "[t]he reissue claims must be for the same invention as being
the invention in the original patent" (Ans. 3). As explained by the Examiner,
the ‘143 patent claims 1-10 are directed to a process whereas reissue claims
11-35 are directed to a statutorily distinct invention (i.e., a device) (Ans. 24).
Contrary to the Examiner's belief, there is no requirement that reissue claims
11-35 must be for the same invention as patent claims 1-10. It is true the
statute recites that, under proper circumstances, "the Commissioner shall . . .
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reissue the patent for the invention disclosed in the original patent."
35 U.S.C. § 251 ¶ 1 (1998). However, this recitation involves the issue of
whether the original patent disclosure provides written description and
enablement under the first paragraph of 35 U.S.C. § 112 for the invention
defined by the reissue claims. See In re Amos, 953 F.2d 613, 618 (Fed. Cir.
1991). On this record, the Examiner has not even alleged much less
established that reissue claims 11-35 lack support under the first paragraph
of § 112.
It follows that we also do not sustain the § 251 rejection of claims
11-35 based on the Examiner's erroneous belief that "[t]he reissue claims
must be for the same invention as being the invention in the original patent"
(Ans. 3).

THE SECTION 102 REJECTION OF CLAIMS 1-6, 8, 11, 12,
14-28, AND 30-35 BASED ON SHIMIZU

Appellants have separately argued only the independent claims under
rejection which are claims 1, 2, 11, 22, and 31. As a result, the rejected
dependent claims will stand or fall with their parent independent claims.

ISSUE
Have Appellants shown the § 102 rejection based on Shimizu to be
erroneous?

FINDINGS OF FACT
1. Shimizu discloses a process for forming a semiconductor having a
diaphragm (Abstract) (cf. this diaphragm with the claimed flexure section).
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The process comprises providing a substrate of p-doped silicon material and
diffusing a dopant, which may be either p-type of n-type, into the substrate
in order to provide a region 12, 12a having a thickness of about 100 microns
(Figs. 1-4; col. 2, ll. 27-63, col. 3, ll. 38-44) (cf. region 12a with the claimed
boss section).
2. An n-type Si region 15 is epitaxially grown to a thickness of 25 to
30 microns over the upper surface of the substrate (Figs. 5-8; col. 3, ll. 45-
49), and this region 15 becomes the desired diaphragm by etching the
substrate to form a recess 22 bounded by the non-etched diffused region 12a
(Figs. 9-11; col. 4, l. 65 - col. 5, l. 28). The diaphragm has a thickness of 25
to 30 microns which is substantially equal to the thickness of the epitaxially
grown region 15 (col. 5, ll. 26-28).
3. In order to form an even more controlled recess or diaphragm,
impurities can be introduced into both principal planes of the substrate to
form region 12 (Fig. 15; col. 6, ll. 20-30).

PRINCIPLES OF LAW
A claim is anticipated only if each and every element set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference. Verdegaal Brothers, Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
During examination, claims should be given their broadest reasonable
interpretation consistent with the specification and should be read in light of
the specification as they would be interpreted by a person of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
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ANALYSIS
Appellants argue Shimizu does not disclose the diffusing step of
claims 1 and 2 wherein another type, namely an n-type, dopant material is
diffused into patentee's p-type doped silicon substrate and wherein the
diffusing is located only in the region of the boss section in order to thereby
form the boss section (Br. 30-31). This argument is unpersuasive.
Shimizu expressly teaches diffusing an n-type (or alternatively a p-
type) dopant material into region 12 in order to thereby form region 12a
which corresponds to the here claimed boss section (FF1).
Appellants further argue that "[Shimizu's] diffusion region 12 [which
corresponds to the claimed boss section] is formed on a first principal plane
of substrate 11 and region 15 [which corresponds to the claimed flexure
section] is epitaxially grown on a second principal plane of substrate 11 such
that region 15 and region 12 are not adjacent" (Br. 30; see also Br. 31). This
argument is unpersuasive for several reasons.
First, neither claim 1 nor claim 2 recites that the boss section and
flexure section are adjacent. Second, and in any event, region 12, 12a and
region 15 of Shimizu are depicted in Figures 5-10 as close to (albeit spaced
from) one another and therefore fall within the broad definition of "adjacent"
(i.e., "close to"; see Webster's II New Riverside University Dictionary
(1984)). Third, and regardless of the first two reasons, Shimizu's Figure 15
embodiment includes a region 12 on both the first and second principal
planes of substrate 11 (FF3) which necessarily would dispose region 12, 12a
and region 15 adjacent to one another in accordance with the Examiner's
finding responsive to this argument (Ans. 28). Concerning this latter point,
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we emphasize that Appellants have not contested the Examiner's finding
regarding the Figure 15 embodiment of Shimizu.
As for device claim 11, Appellants argue that Shimizu does not
disclose an initial boss structure doped with diffused n-type dopant, that the
epitaxial layer thickness shown in Figure 5 is not substantially uniform, and
that this epitaxial layer is not disposed on the initial boss structure (Br. 32).
However, as previously explained, Shimizu expressly discloses that
region 12 (i.e., the claimed initial boss structure) may be diffused with either
p-type or n-type dopant (FF1). Moreover, the epitaxial layer thickness
shown in Figure 5 of Shimizu is properly considered to be substantially
uniform because, as correctly indicated by the Examiner (Br. 34-35) and not
disputed by Appellants, the claim term "substantially" (though undefined in
the Specification) possesses the ordinary meaning "largely but not wholly
that which is specified" (Webster's Ninth New Collegiate Dictionary (9th ed.
1983)) and therefore encompasses the degree of uniformity depicted in
Figure 5 of patentee's drawing. Finally, the claim 11 language which
requires an epitaxially grown layer "disposed" on the initial boss structure,
when given its broadest reasonable interpretation consistent with the
Specification, encompasses Shimizu's disposition wherein the epitaxially
grown layer 15 is disposed indirectly on region 12a (i.e., the initial boss
structure) via the intermediate region 11 (Fig. 5). See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d at 1364.
Regarding claims 22 and 31, Appellants argue that Shimizu does not
satisfy the claim requirement for a comparative thinner, epitaxially grown,
n-type layer flexure section (Br. 33-34). This is incorrect.
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Patentee's n-type epitaxially grown region 15, which forms a
diaphragm corresponding to the claimed flexure section, has a thickness of
25 to 30 microns (FF2). In contrast, region 12, 12a, which corresponds to
the claimed boss section, has a thickness of 100 microns (FF1). In follows
that Shimizu's region 15 (i.e., the flexure region) is comparatively thinner
than region 12, 12a (i.e., the boss section).

CONCLUSION
For the above stated reasons, Appellants have failed to show error in
the Examiner's finding that each and every element set forth in separately
argued claims 1, 2, 11, 22, and 31 is found in Shimizu. See Verdegaal
Brothers, 814 F.2d at 631.
We sustain, therefore, the § 102 rejection of claims 1-6, 8, 11, 12, 14-
28, and 30-35 as being anticipated by Shimizu.

THE SECTION 103 REJECTIONS BASED ON SHIMIZU, SZE, BLACK,
AND/OR AINE
The only arguments advanced by Appellants against these rejections
are those determined above to be unpersuasive concerning the § 102
rejection based on Shimizu (Br. 51-56).
Accordingly, we summarily sustain the § 103 rejection of claim 10
over Shimizu in view of Sze and the § 103 rejection of claims 7, 9, 18, 19,
29, 32, 33, and 35 over Shimizu, Sze, and Black or Aine.

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THE SECTION 103 REJECTION OF CLAIM 13 BASED ON
SHIMIZU AND WEINBERG
In light of Weinberg's teachings, the Examiner concludes that it would
have been obvious for one with ordinary skill in this art to provide Shimizu's
device with a second substrate opposite the regions 12, 12a, and 15 (i.e., the
boss and flexure sections) so as to provide protection for the device (Ans.
13).

ISSUE
Have Appellants established that the improvement defined by rejected
claim 13 is more than the predictable use of prior art elements according to
their established functions?

FINDINGS OF FACT
1. Weinberg discloses an accelerometer comprising a substrate 30
bonded to a body or substrate 12, thereby defining a chamber which includes
cavity 16, epitaxial layer 18 and flexures 22 (Fig. 1; col. 2, ll. 8-64).
2. Appellants admit that it was known in the prior art to provide a
device such as an accelerometer with a lower substrate 12 bonded to an
upper substrate 10 which contains boss sections 20 and flexure sections 18
(the '143 patent:Fig. 1 (PRIOR ART); col. 1, ll. 44-65) as required by claim
13.

PRINCIPLES OF LAW
When the question is whether a combination of prior art elements is
obvious, a court must ask whether the improvement is more than the
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predictable use of prior art elements according to their established functions.
KSR Int'l Co., v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007).
An applicant cannot defeat an obviousness rejection by asserting that
the cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. In re Reuning, 2008 WL 1836711,
*3 (Fed. Cir. 2008). See also Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1570 (Fed. Cir. 1988) (A statement that something is prior
art is binding on an applicant for determinations of anticipation and
obviousness) and In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes).

ANALYSIS
Appellants argue that the Examiner's proposed modification of
Shimizu would not have been obvious because Weinberg's substrate 30 is
bonded above substrate 12 "such that the second substrate is not opposite the
boss and flexure sections but would be adjacent to it" (Br. 57). This
argument lacks convincing merit.
Regardless of whether Weinberg's substrate 30 is opposite or adjacent
the boss and flexure sections, the fact remains that Weinberg teaches
providing substrates 12 and 30 on either side of such sections (FF1) to
thereby define a chamber of the type required by the rejected claim. This
teaching would have suggested to an artisan providing Shimizu's device with
a second substrate opposite the flexure and boss sections, thereby defining
the required chamber and providing protection to the device as proposed by
the Examiner. The resulting combination would yield no more than the
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predictable use of prior art elements according to their established functions,
and Appellants do not argue otherwise. This supports an obviousness
conclusion. KSR, 127 S. Ct. at 1740.
Additionally, it is significant that the very feature of claim 13 which
Appellants argue renders the claim patentable has been admitted by
Appellants to be known in the prior art (FF2). A patentability argument
directed to a claim feature which is acknowledged to be known in the prior
art cannot defeat an obviousness rejection. In re Reuning, 2008 WL
1836711 at *3. Such an argument is contradicted and therefore vitiated by
Appellants' own admission even though the Examiner has not used the
admission as evidence in rejecting the claimed invention.

CONCLUSION
For the above stated reasons, we sustain the § 103 rejection of claim
13 as being unpatentable of Shimizu in view of Weinberg.

THE SECTION 102(b)/SECTION 103(a) REJECTION OF CLAIMS 11-35
BASED ON HUSTER

Only the independent claims (i.e., claims 11, 22, and 31) involved in
this rejection have been separately argued by Appellants. For this reason,
the remaining rejected claims will stand or fall with the claims from which
they depend.

ISSUE
The Examiner recognizes that Huster's device or product is
manufactured by a process different from the one used by Appellants to
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manufacture the device or product defined by the rejected claims (Ans. 6-7,
32-39). The rejection under consideration is based on the Examiner's
determination that the ultimate products of Huster and the rejected claims
are structurally indistinguishable (id.).
Therefore, the issue raised by this rejection is whether Appellants
have established that the devices or products defined by the independent
claims under rejection are novel and nonobvious relative to the device or
product of Huster.

FINDINGS OF FACT
1. Huster discloses a device comprising a pin-junction formed by
diffusion and/or ion implantation, rather than epitaxial growth, having a
thinner membrane (cf. the claimed flexure section) suspended on a thicker
rim (cf. the claimed boss section) (899 cols. 1-2, 900 Fig. 2).
2. After transition from the thick rim to the thin membrane, the thin
membrane reaches a constant thickness of 6 microns (901 last full sentence).

PRINCIPLES OF LAW
Once a product is disclosed in the prior art, future claims to that same
product are precluded even if the product is claimed as made by a new
process. SmithKline Beecham Corp. v. Apotex, 439 F.3d 1312, 1315 (Fed.
Cir. 2006); In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). To overcome
a prima facie case of unpatentability for a product-by-process claim, an
applicant carries the burden of proving that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
Thorpe, 777 F.2d at 698.
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ANALYSIS
Appellants emphasize that Huster's device is formed using a diffusion
process rather than an epitaxial process (Br. 35) and argue that Huster
neither describes nor suggests an epitaxially grown layer having a
substantially uniform epitaxial layer thickness as required by claim 11 (id.).
It is true that Huster's membrane is formed by a diffusion (or ion
implantation) process rather than an epitaxial process (FF1). Nevertheless,
on this record, Appellants have not established—as was their burden in this
case—that the layer which comprises the claim 11 flexure section is
distinguishable from Huster's membrane even though these structures were
formed by different processes. That is, the process recitation in claim 11
that the layer was epitaxially grown does not, by itself, distinguish this layer
from the membrane of Huster. See SmithKline Beecham, 439 F.3d at 1315
and Thorpe, 777 F.2d at 697.
Moreover, Appellants have provided no support for their belief that
Huster's membrane does not satisfy the claim 11 requirement that the layer
thickness be substantially uniform. On the other hand, this belief is contrary
to Huster's teaching that the membrane reaches a constant thickness of 6
microns (FF2).
Appellants further argue that "Huster describes that the vertical
membrane structure is rigidly suspended and thus [the membrane] can not
fairly be considered a flexure section" (Br. 37).
We do not perceive and Appellants do not explain why the rigid
suspension of Huster's membrane somehow prevents the membrane from
satisfying the claimed flexure section limitation. On this record, the
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membrane appears to be structurally identical to, and therefore capable of
performing the functions of, the claimed flexure section. Absent from this
record is any proof by Appellants in support of their burden to show
otherwise. See Thorpe, 777 F.2d at 698.
Regarding claims 22 and 31, Appellants additionally argue that
Huster's membrane does not satisfy the "comparatively thinner"
requirements of these claims (Br. 39).
This argument is without discernable merit. Huster explicitly
describes and shows the membrane (cf. the claimed flexure section) as
thinner and the rim (cf. the claimed boss section) as thicker (FF1).
CONCLUSION
Appellants have failed to establish that the independent claims under
rejection define a device which is structurally novel and nonobvious over the
device of Huster.
Accordingly, we sustain the § 102(b)/§ 103(a) rejection of device
claims 11-35 over Huster.

THE SECTION 102(B) REJECTION OF CLAIMS 11, 12, 14-17, 20-28, 30,
AND 31 BASED ON REHN
Appellants separately argue only the independent claims 11, 22, and
31. The remaining claims on appeal will stand or fall in accordance with
their dependency from these independent claims.

ISSUE
Have Appellants established that the Examiner's finding of
anticipation is erroneous?
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FINDINGS OF FACT
1. Rehn discloses a semiconductor pressure sensor comprising a
diaphragm 110 (cf. the claimed flexure section) mounted on an n-type
semiconductor substrate 301 (cf. the claimed boss section) which forms
clamp ring 120 (Fig. 3; Abstract, para. bridging cols. 2-3, col. 4, ll. 3-34).
2. The diaphragm is formed by a p-type layer 302 which is epitaxially
grown on semiconductor substrate 301 and an n-type layer 303 which is
epitaxially grown on layer 302, and these layers together form the
diaphragm whose depth equals the thickness of these layers (Fig. 3; col. 4, ll.
3-16).
3. Rehn's diaphragm 110 is depicted as having a substantially
uniform thickness and as being comparatively thinner than the
comparatively thicker substrate 301 (Fig. 3).

PRINCIPLES OF LAW
See the Principles listed previously under the heading "THE
SECTION 102 REJECTION . . . BASED ON SHIMIZU."

ANALYSIS
With respect to claim 11, Appellants argue that Rehn does not
describe the claim 11 feature of a boss section including an initial boss
structure doped with diffused n-type dopant and an n-type epitaxially grown
layer having a substantially uniform epitaxial layer thickness disposed in
part on the initial boss structure (Br. 41).
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This unembellished argument has no convincing merit. The claim 11
requirement "the boss section including an initial boss structure" is satisfied
by Rehn's substrate 301 (FF1). Moreover, because substrate 301 is of the
n-type (FF1), the claim requirement "doped with diffused n-type dopant"
likewise is satisfied. When given its broadest reasonable interpretation
consistent with the Specification, the claim 11 limitation "an n-type
epitaxially grown layer having a substantially uniform epitaxial layer
thickness disposed in part on the initial boss structure" is satisfied by n-type
epitaxially grown layer 303 since this layer is indirectly disposed in part on
the substrate 301 (i.e., the initial boss structure) (FF2) and is depicted as
having a substantially uniform thickness (FF3). See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d at 1364.
As for claims 22 and 31, Appellants reiterate the unembellished
argument that Rehn does not describe a boss section (Br. 42). Again, this
argument fails to identify any distinction between the claimed boss section
and substrate 301 of the Rehn device.

CONCLUSION
Appellants have failed to establish error in the Examiner's finding that
each and every element set forth in independent claims 11, 22, and 31 is
found in Rehn. See Verdegaal Brothers, 814 F.2d at 631.
It follows that we sustain the § 102 rejection of claims 11, 12, 14-17,
20-28, 30, and 31 as being anticipated by Rehn.

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THE SECTION 102(B) REJECTION OF CLAIMS 1-6, 8, 11, 12, AND
14-35 BASED ON AINE
For this rejection, only independent claims 1, 2, 11, 22, and 31 have
been separately argued by Appellants. As a consequence, the remaining
claims under rejection will stand or fall in accordance with their dependency
from these independent claims.

ISSUE
Have Appellants established error in the Examiner's finding that the
above-noted independent claims are anticipated by Aine?

FINDINGS OF FACT
1. Aine discloses a process for forming a device such as a transducer
having a cantilever structure (Abstract) which comprises providing a
substrate or p-type doped silicon material in the form of P epi layer 72 on
which is epitaxially grown N epi layer 73 (Fig. 12; col. 9, ll. 56-68).
2. An N + boss 54 and mass 55 diffusion 75 is then made through the
N epi layer and into the P epi layer (col. 10, ll. 1-2).
3. The N + diffusion 75 has the pattern as shown at 74 in Figure 3
(col. 10, ll. 4-5), and Figure 3 depicts pattern 74 as located only in the
regions of boss 54 and mass 55.
4. During an etching operation, a suitable etchant is employed to
obtain an anisotropic etch of the P epi layer 72 and to undercut the N +
diffusion mass 55 so as to result in a cantilevered N epi layer 73 on the
surface of mass 55 (Fig. 12; col. 10, ll. 15-39).
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6. Figure 12 depicts N epi layer 73 (cf. the claimed flexure section) as
substantially uniform and comparatively thin and depicts mass 55 (cf. the
claimed boss section) as comparatively thick.

PRINCIPLES OF LAW
See the Principles listed previously under the heading "THE
SECTION 102 REJECTION . . . BASED ON SHIMIZU."

ANALYSIS
Appellants argue that Aine does not describe the step common to
claims 1 and 2 which includes diffusing n-type dopant material into p-type
doped substrate wherein the diffusing is provided only in the regions of the
boss section (Br. 44-45). We can not agree.
The p-type doped substrate limitation of these claims is met by Aine's
P epi layer 72 (FF1) which is diffused with an N + boss 54 and mass 55
diffusion 75 (FF2). This diffusing step of Aine's process satisfies the claim
step of diffusing an n-type dopant material into a p-type doped substrate.
Furthermore, the requirement in claims 1 and 2 that the diffusing is located
only in the regions of the boss section is satisfied by Aine's teaching that
diffusion 75 has a pattern 74 which is depicted as located only in the regions
of boss 54 and mass 55 (FF3).
Appellants also argue that Aine does not describe the etching step
required by claims 1 and 2 (Br. 44-45).
However, this etching step limitation is met by the teaching in Aine
that P epi layer 72 is anisotropically etched by a suitable etchant to undercut
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N + diffusion mass 55 and to thereby ultimately yield N epi layer 73 on the
surface of mass 55 (FF4). The resultant N epi layer 73 and mass 55 read on
the flexure section and boss section respectively of claims 1 and 2.
Appellants reiterate these arguments against claims 11, 22, and 31
(Br. 45-47) which continue to be unpersuasive for the reasons discussed
above. Though not articulated with reasonable specificity, Appellants may
believe that Aine's device does not possess a substantially uniform epitaxial
layer thickness as required by claim 11 or a comparatively thicker boss
section and a comparatively thinner flexure section as required by claims 22
and 31 (id.). However, such a belief is contradicted by the Figure 12
disclosure of Aine (FF5).

CONCLUSION
Appellants have not shown error in the Examiner's finding that each
and every element set forth in the independent claims under rejection is
found in Aine. See Verdegaal Brothers, 814 F.2d at 631.
We sustain, therefore, the § 102 rejection of claims 1-6, 8, 11, 12, and
14-35 as being anticipated by Aine.

THE SECTION 103 REJECTION OVER AINE IN VIEW OF SZE

ISSUE
In addition to the unsuccessful arguments discussed above with
respect to the § 102 rejection based on Aine, Appellants argue that "[n]either
Aine nor Sze, considered alone or in combination, describes or suggests
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providing a mask of silicon dioxide on the substrate over the flexure section"
(Br. 58).
Accordingly, the issue relevant to this rejection is whether Appellants
have established error in the Examiner's unpatentability determination
regarding the claim 10 step "providing a mask of silicon dioxide on said
substrate over said flexure section."

FINDINGS OF FACT
1. Aine generally teaches forming a slot mask pattern (Figure 3; col.
4, ll. 17-20) whereby cantilever beam portions 51 are formed during an
anisotropic etchant operation (col. 5, ll. 54-66), and specifically teaches
forming a relatively thick layer of silicon dioxide 63 on an N epi layer
preparatory to an EDP etchant operation (col. 7, ll. 10-16).

PRINCIPLES OF LAW
See the Principles listed previously under the heading "THE
SECTION 103 REJECTION . . . BASED ON SHIMIZU AND
WEINBERG."

ANALYSIS
Appellants' afore-quoted argument is not well taken. Aine teaches
forming a slot mask pattern generally and a silicon dioxide layer specifically
preparatory to an etchant operation using an etchant such as EDP (FF1).
These teachings would have suggested similarly forming a silicon dioxide
layer or mask on the N epi layer 73 (cf. the claimed flexure section) of
Aine's previously discussed Figure 12 embodiment. Such a provision would
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have been obvious to an artisan because the result would have been no more
than the predictable use of prior art elements according to their established
functions. KSR, 127 S. Ct. at 1740.

CONCLUSION
Appellants have failed to show error in the Examiner's unpatentability
determination concerning the claim 10 step "providing a mask of silicon
dioxide on said substrate over said flexure section."

THE SECTION 103 REJECTION BASED ON AINE IN VIEW OF SZE
AND WEINBERG

Appellants have separately argued claim 13, but not claims 7 and 9, in
contesting this rejection.
This separate argument regarding claim 13 presents the same or
analogous Issue, Findings of Fact, Principles of Law, Analysis, and
Conclusion as presented earlier under the heading "THE SECTION 103
REJECTION . . . BASED ON SHIMIZU AND WEINBERG." Therefore,
we refer to this section for a detailed exposition of these matters, and sustain
the § 103 rejection of claims 7, 9, and 13 as being unpatentable over Aine in
view of Sze and Weinberg for reasons analogous to those discussed above.

THE SECTION 102 AND SECTION 103 REJECTIONS OF PROCESS
CLAIMS 1-10 AND DEVICE CLAIMS 11-35 BASED ON GREIFF

Each of independent process claims 1, 2, and 10 requires the step of
epitaxially growing a layer of doped (e.g., n-type) silicon on the substrate to
the flexure section thickness y. Appellants argue the Examiner has failed to
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establish that this step is anticipatorily described by Greiff with respect to
claims 1 and 2 (Br. 44-45) or would have been obvious with respect to claim
10 (Br. 64). We agree.
The Examiner finds that Greiff discloses "epitaxially growing a layer
48 of the another type (p + for regions 50/52/54, fig. 3A, col. 3, lines 55-60)
doped silicon on the substrate to the flexure section thickness y over the
surface of the substrate" (Ans. 10, 52). The Examiner's finding is not
supported by the evidence relied upon by the Examiner and therefore, on this
record, is erroneous. The doped silicon regions 50, 52, 54 are formed by
diffusion, not epitaxial growth (col. 3, ll. 56-63). Furthermore, while
Greiff's layer 48 is epitaxially grown, this layer is not a doped silicon (col. 3,
ll. 54-56).
For these reasons, the Examiner's finding of anticipation with respect
to claims 1 and 2 is incorrect. The Examiner's obviousness conclusion
regarding claim 10 also is incorrect because the additionally applied
references have not been relied upon to cure the deficiency of Greiff (Ans.
16-18, 61-66).
As for the device claims, each of the independent claims 11, 22, and
31 requires a boss section with diffused n-type dopant and a flexure section
comprising an n-type layer. In contrast, and as recognized by the Examiner
(Ans. 17, 63), Greiff uses a p-type dopant in the regions which correspond to
the claimed boss and flexure sections (col. 3, ll. 47-63). It is Appellants'
position that the Examiner has failed to established a prima facie case of
obviousness for modifying Greiff in such a manner as to result in a device
satisfying the aforementioned requirements of claims 11, 22, and 31 (Br. 65-
66, 69-71). We agree.
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In an attempt to satisfy these device claim requirements, the Examiner
relies on Aine's teaching of "using N-type boss section 55 and N-type
epitaxial layer 85" (Ans. 17) and concludes that, in light of this teaching, it
would have been obvious modify the device of Greiff by "using N-type boss
section and N-type epitaxial layer because N-type and P-type layer[s] are
interchangeable in the semiconductor art" (Ans. 18). The flaw in this
obviousness conclusion arises from the Examiner's incorrect finding that
"Greiff teaches . . . using . . . P-type epitaxial layer" (Ans. 17). In fact,
Greiff forms flexible linkages 52, 54 (which perform a flexure section
function) via p + diffusions (Fig. 3B; col. 3, ll. 59-63) rather than via
epitaxial growth. Therefore, the evidence does not support a holding that it
would have been obvious to substitute an n-type epitaxially grown layer of
the type taught by Aine for a p-type epitaxially grown layer in the Greiff
device, in accordance with the Examiner's proposed modification, due to the
fact that the Greiff device does not contain a p-type epitaxially grown layer.
For these reasons, the Examiner has failed to establish a prima facie
case of obviousness for combining Greiff and Aine so as to produce a device
which satisfies the above discussed requirements of independent claims 11,
22, and 31. Moreover, this failure is not rectified by the additionally applied
references to Sze and Weinberg since these additional references have not
been relied upon by the Examiner for satisfying the claim requirements
under review.

CONCLUSION
In light of the foregoing, we cannot sustain:
(1) the § 102 rejection of claims 1-4 as being anticipated by Greiff;
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(2) the § 103 rejection of claims 5-9 as being unpatentable over
Greiff in view of Sze and Aine;
(3) the § 103 rejection of claims 10-12 and 14-35 as being
unpatentable over Greiff in view of Aine and Sze; or
(4) the § 103 rejection of claim 13 as being unpatentable over Greiff
in view of Aine and Sze and further in view of Weinberg.

ORDER
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

cam

PATRICK W. RASCHE
ARMSTRONG TEASDALE LLP
ONE METROPOLITAN SQUARE
SUITE 2600
SAINT LOUIS MO 63102
31