Ex Parte Contopanagos et al

Patent Trial and Appeal Board

Apr 25, 2017

14085128 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
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.
14/085,128 11/20/2013 Harry CONTOPANAGOS 3875.858REI0 5412
49579 7590 04/27/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
e-office @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY CONTOPANAGOS and CHRISTOS KOMNINAKIS
Appeal 2017-0029841
Application 14/085,128
Technology Center 3900
Before ROBERT E. NAPPI, SCOTT E. BAIN, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1^41, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Broadcom
Corporation. (App. Br. 4.)
Appeal 2017-002984
Application 14/085,128
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention “relates generally to integrated circuits
and more particularly to components that comprise an integrated circuit.”
(US 6,709,977 B2 (“Spec.”), 1:6-8.) Claim 1 is illustrative, and is
reproduced below (with minor reformatting):
1. A method for manufacturing an integrated circuit
comprises:
creating a layer; and
creating, on and within the layer, an electrical
element having a geometric shape that exceeds prescribed
integrated circuit manufacture limits, wherein the
electrical element includes at least one non-conducting
region that negligibly effects electrical characteristics of
the electrical element and provides adequate non­
conducting spacing in accordance with the prescribed
integrated circuit manufacture limits.
Rejection on Appeal
Claims 1—41 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the Applicants regard as the invention. (See Final
Office Action (mailed February 9, 2016) (“Final Act.”) 8-9.)2
2 The Examiner withdrew the prior art rejections (Final Act. 9 12) in the
Answer (Ans. 3).
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Application 14/085,128
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions.
The Examiner finds the claims indefinite because the following terms
are indefinite:
• “in accordance with the prescribed integrated circuit
manufacture limits;”
• “negligibly [ejffects the electrical characteristics of the
electrical element;” and
• “provides adequate non-conducting spacing.”
(Final Act. 8-9.)
“in accordance with the prescribed integrated circuit manufacture limits ”
The Examiner finds the term indefinite “because it is unclear what the
4prescribed integrated circuit manufacture limits'1 [and, therefore,] one of
ordinary skill in the art cannot ascertain whether those limits have been
exceeded.” (Final Act. 8-9.) Appellants contend that a person of ordinary
skill in the art “would know the ‘prescribed integrated circuit manufacturing
limits’ for a particular foundry, and as such, would know whether these
limits are exceeded.” (App. Br. 10; Reply 2.) Appellants also point to
column 2, lines 58 to 62 of the Specification for an example of
“manufacturing limits.” (App. Br. 10.)
Appellants have not persuaded us of Examiner error. Section 112,
second paragraph, requires that “[t]he specification . . . conclude with one or
more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.” “As the statutory
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Application 14/085,128
language of ‘particularity]’ and ‘distinctness]’ indicates, claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (alterations in
original);3 see also In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970) (“the
essence of [the] requirement [under 35 U.S.C. § 112, second paragraph] is
that the language of the claims must make it clear what subject matter they
encompass.”). Here, according to Appellants, it does not matter that the
manufacturing limits can differ from foundry to foundry and change over
time even in the same foundry as long as a person of ordinary skill in the art
working in a particular foundry would know what the term means. (Reply
10-11.) Even assuming arguendo that Appellants’ contention, which is not
supported by the evidence, is correct, there is still no objective measure as to
what are the “prescribed integrated circuit manufacturing limits.” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that mere attorney
argument that is unsupported by factual evidence is entitled to little
probative value); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, even the example in the Specification cited by Appellants for
support that the Specification provides examples of “manufacturing limits”
3 Our reviewing court has held that when the USPTO has initially issued a
well-grounded rejection that identifies ways in which the language in a claim
is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant fails to
provide a satisfactory response, the USPTO can properly reject the claim as
failing to meet the statutory requirement that the claims be definite. See In
re Packard, 751 F.3d at 1313—14. The court explained a satisfactory
response can take the form of modification of the language identified as
unclear, a separate definition of the unclear language, or, in appropriate
circumstances, “persuasive explanation for the record of why the language at
issue is not actually unclear.” Id. at 1311.
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Application 14/085,128
is vague and ambiguous: “For example,... the width of the electrical
element may be at least 50 microns when the electrical element 12 is used
for an inductor.” (App. Br. 10 (citing Spec. 2:58-62), original emphasis
omitted, underline added.) In this example, when an electrical element is
used for an inductor, the width of the electrical element may be at least 50
microns but it also need not be. In other words, according to the
Specification, the manufacturing limit for the width of an electrical element
that is used for an inductor can be anything.
“negligibly effects electrical characteristics of the electrical element”
The Examiner finds the term indefinite “because it depends on the
application of the integrated circuit” as “the effect of the non-conducting
region for one application may be negligible whereas for another application
the affect may be appreciable.” (Final Act. 9.) Appellants contend
Examiner error because “read in light of the [Specification, a POSA would
understand the claimed ‘non-conducting region . . . that negligibly effects
electrical characteristics of the electrical elemenf is based on the electrical
element, not the application of the integrated circuit.” (App. Br. 12-13.)
Appellants further contend that “a person of ordinary skill in the art would
understand the claim features ‘negligibly affects the electrical
characteristics of the electrical elemenf to mean having an effect that is ‘of
so little consequence as to warrant little or no attention.’” {Id. at 13.)
Appellants, however, have not persuaded us of Examiner error and we
adopt as our own the findings and reasons, for this issue, set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief. (Ans. 7-10.) However, we highlight and address specific
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Application 14/085,128
findings and arguments for emphasis as follows. First, even assuming
arguendo that the electrical characteristics of the electrical elemenf is
based on the electrical element, [and] not the application of the integrated
circuit,” (App. Br. 12) we agree with the Examiner’s findings that the effect
on the non-conducting region would be different depending upon the
electrical element. (Ans. 8-9.) For example, “the effect of a non-conducting
region of an electrical element in an inductor may be negligible whereas the
effect of the same non-conducting region in an electrical element of a
capacitor may be appreciable,” therefore, one of ordinary skill in the art
would not be able to ascertain the scope of the term at issue. {Id. at 9,
emphasis added.) We are also not persuaded by Appellants’ further
contention that “in the ordinary course of their practice, a [person of
ordinary skill in the art] would have the knowledge to make a determination
as to whether or not the non-conducting region ‘negligibly affects' the
electrical characteristics of the electrical element” (Reply 7) because
Appellants’ assertion in this regard is mere attorney argument and a
conclusory statement, which is unsupported by evidence in the record. In re
Geisler, 116 F.3d at 1470; In re De Blauwe, 736 F.2d at 705.
Second, even assuming arguendo that Appellants’ construction of the
term “negligibly” is correct, i.e., “of so little consequence as to warrant little
or no attention” (App. Br. 13), the term would still be indefinite because it is
unclear where the line is drawn separating something of “little consequence
as to warrant little or no attention” versus something more than that.
Furthermore, as discussed above, the line will be different depending on the
electrical element. We are, therefore, not persuaded by Appellants’ attorney
argument that “a POSA would have the knowledge to make a determination
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Application 14/085,128
as to whether or not the non-conducting region ‘negligibly affects'1 the
electrical characteristics of the electrical element” because this contention is
not supported by the evidence in the record.
“provides adequate non-conducting spacing ”
The Examiner finds the term indefinite “because the [Specification
does not provide a test/description as to how one of ordinary skill in the art
determines whether the non-conducting space is adequate [and] a review of
the prior art reveals little, if any, guidance as to determine the adequacy of
the nonconducting space.” (Final Act. 9.) Appellants present arguments
similar to the “in accordance with the prescribed integrated circuit
manufacture limits” term discussed above. (App. Br. 14—16; Reply 8-11.)
Therefore, based on the discussions above, Appellants have similarly not
persuaded us of Examiner error.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1 and thus, we sustain the 35 U.S.C. § 112, paragraph 2
rejection of claim 1. Appellants do not make any separate, substantive
patentability arguments regarding independent claims 12 and 24, and
dependent claims 2—11, 13—23, and 25—41, but instead rely solely on their
arguments with respect to claim 1. (App. Br. 9-16.) Therefore, we also
sustain the 35 U.S.C. § 103(a) rejections of claims 2-41.
DECISION
We affirm the decision of the Examiner to reject claims 1^41.
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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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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