Ex Parte Daamen et al

Patent Trial and Appeal Board

Feb 22, 2017

13471609 (P.T.A.B. Feb. 22, 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.
13/471,609 05/15/2012 Roel Daamen 090922-0380 6045
31824 7590 02/24/2017
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
YEMELYANOV, DMITRIY
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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):
mweipdocket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROEL DAAMEN, CASPER JUFFERMANS,
JOSEPHUS FRANCISCUS ANTONIUS MARIA GUELEN, and
ROBERTUS ANTONIUS MARIA WOLTERS
Appeal 2015-006669
Application 13/471,609
Technology Center 2800
Before JAMES C. HOUSEL, GEORGE C. BEST, and BRIAN D. RANGE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 5, 6, and 8 of Application
13/471,609 as anticipated under 35 U.S.C. § 102(e); rejected claims 1, 2, 5,
6, and 8 under 35 U.S.C. § 103(a) as obvious; and rejected claim 1 under
35 U.S.C. § 112, 2 as indefinite. Final Act. (September 30, 2014).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 NXP B.V. is identified as the real party in interest. Appeal Br. 1.
Appeal 2015-006669
Application 13/471,609
BACKGROUND
One common type of integrated circuit (IC) comprises a metallization
stack that connects a plurality of circuit elements and a sensor. Spec. 1.
Many of the various types of sensors—e.g., moisture sensors, CO2 sensors,
O2 sensors,—have to be in communicative contact with the environment. Id.
at 1-2. This increases the risk that the IC will be exposed to moisture and
malfunction. Id. at 2. The ’609 Application describes an IC comprising a
cost-effective sensor which is protected from moisture penetrating the
metallization stack from the sensor. Id. at 3.
Claim 1—the only independent claim on appeal—is representative of
the ’609 Application’s claims and is reproduced below from the Claims
Appendix to the Appeal Brief:
1. An integrated circuit comprising:
a substrate carrying a plurality of circuit elements;
a metallization stack interconnecting said plurality of
circuit elements, said metallization stack comprising a patterned
upper metallization layer comprising at least one sensor
electrode portion and a bond pad portion;
a passivation stack covering the metallization stack, said
passivation stack comprising a first trench exposing the at least
one sensor electrode portion and a second trench exposing the
bond pad portion, wherein said first trench is filled with a
sensor active material; and
a moisture barrier film between the metallization stack
and the passivation stack, wherein the moisture barrier film is a
chemical vapor deposited (CVD) film having high conformality
and high resistance to cracking.
Appeal Br. 13.
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Application 13/471,609
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 1 is rejected as indefinite pursuant to 35 U.S.C. § 112, 2.
Final Act. 2.
2. Claims 1, 5, 6, and 8 are rejected under 35 U.S.C. § 102(e) as
anticipated by Merz ’9122 as evidenced by Wang.3 Final Act. 3.
3. Claims 1, 2, 5, 6, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ponomarev4 and Merz ’211,5
as evidenced by Matsuzawa.6 Final Act. 6.
4. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Merz ’912 and Ponomarev. Final Act. 10.
DISCUSSION
I. Indefiniteness
Rejection 1. Claim 1 requires, in relevant part, “a moisture barrier
film between the metallization stack and the passivation stack, wherein the
moisture barrier film is a chemical vapor deposited (CVD) film having high
conformality and high resistance to cracking.” The Examiner concluded that
this provision renders claim 1 indefinite. Final Act. 2. In particular, the
Examiner determined that the limitation requiring the moisture barrier film
2 US 2011/0296912 Al, published December 8, 2011.
3 US 6,167,834 Bl, issued January 2, 2001.
4 US 2011/0018097 Al, published January 27, 2011.
5 US 2011/0012211 Al, published January 20, 2011.
6 US 2006/0064873 Al, published March 30, 2006.
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Application 13/471,609
to have “high conformality and high resistance to cracking” was unclear.
The Examiner stated:
It is unclear how high should “high conformality” be for the
claim language to be met or how high should “resistance to
cracking” be for the claim language to be met? Examiner
further notes that the specification does not provide a standard
for ascertaining the requisite degree, and one of ordinary skill in
the art would not be reasonably apprised of the scope of the
invention.
Id.', see also Advisory Act. 2-3 (December 4, 2014).
Appellants respond that the Examiner is mistaking claim breadth for
indefiniteness and that a person of ordinary skill in the art would understand
what is claimed when the claim language is interpreted in light of the ’609
Application’s Specification. Appeal Br. 3.
We disagree, and we, therefore, affirm the Examiner’s rejection of
claim 1 as indefinite.
The use of relative terms does not automatically render a patent claim
indefinite. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359
(Fed. Cir. 2012). The Federal Circuit has approved of the use of terms such
as “about,” “substantially,” or “approximately.” See, e.g., Deere & Co. v.
Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012); Ecolab, Inc. v.
Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001). In those cases, the
relative term is used to provide some “wiggle room” around a readily
ascertainable limit, such as a strict numerical limit. E.g., Deere & Co., 703
F.3d at 1359 (concluding “substantially planar” was definite in the context
of the patent at issue); Ecolab, 264 F.3d at 1366-67 (concluding
“substantially uniform” was definite in the context of the patent at issue); cf.
Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217-18 (Fed. Cir.
1995) (discussing the use of “about” in the context of an infringement
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Application 13/471,609
determination). In this case, however, claim l’s language, viewed in light of
the ’609 Application’s Specification does not provide a readily ascertainable
baseline for the relative comparison called for by the use of the terms “high
conformality” and “high resistance to cracking.” In particular, a person of
ordinary skill in the art would not know whether the baseline for comparison
is the average conformality and resistance to cracking of a film deposited by
any deposition method, the conformality and resistance to cracking of films
deposited by methods other than CVD, or the average conformality and
resistance to cracking of CVD films in general.
Nor does the explanation proffered by Appellants in their Reply Brief
suffice to render claim 1 definite. In their Reply Brief, Appellants state their
interpretation of the claim language:
Appellant respectfully submits that one of ordinary skill
in the art understands the claimed “a chemical vapor deposited
(CVD) film having high conformality and high resistance to
cracking” as a CVD film inherently featuring higher
conformality and higher resistance to cracking than other types
of films. Therefore, “high conformality and high resistance to
cracking ” is understood by one of ordinary skill in the art as
such degree of conformality and resistance to cracking that is
commonly achieved by a CVD film. In particular, by specifying
a CVD film, one of ordinary skill in the art directly and clearly
obtains information about the necessary and sufficient degree of
conformality and resistance to cracking according to the
integrated circuit of claim 1. Consequently, beyond the
knowledge of one of ordinary skill in the art, an explicit
standard for ascertaining the requisite degree is not necessary in
order to understand the scope of claimed integrated circuit.
Reply Br. 3 (emphasis added).
If we were to accept Appellants’ explanation, claim 1 would still be
drafted in a way that creates problems. Appellants’ proffered claim
construction makes the phrase “having high conformality and high resistance
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Application 13/471,609
to cracking” redundant. As we have explained, redundancy can also create
indefiniteness. See, e.g., Ex parte Fina Tech., Inc., No. 2013-006005, 2015
WL 1938856 (PTAB April 20, 2015) (available at http://bit.ly/21ko8j9). The
problem arises because “[a]ll words in a claim must be considered in judging
the patentability of that claim against the prior art.” In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970); see also In re Wilder, 429 F.2d 447, 450 (CCPA
1970) (“[Ejvery limitation positively recited in a claim must be given effect
in order to determine what subject matter that claim defines.”); In re Miller,
441 F.2d 689, 694 (CCPA 1971).
In view of the foregoing, we affirm the rejection of claim 1 under
35 U.S.C. § 112, Tj 2 as indefinite.
II. Prior Art Rejections
In many cases, our affirmance of an indefmiteness rejection of the
only independent claim on appeal would end our analysis because
addressing prior art rejections under § 102 and § 103 would require undue
and improper speculation. See In reAoyama, 656 F.3d 1293, 1298-99 (Fed.
Cir. 2011); In re Steele, 305 F.2d 859, 862 (CCPA 1962). In this case,
however, for the sake of judicial efficiency we will exercise our discretion to
reach the prior art rejections despite the indefmiteness of claim 1. See Ex
parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Tanksley, 26
USPQ2d 1384, 1387 (BPAI 1991).
Rejection 2. The Examiner rejected claims 1, 5, 6, and 8 as
anticipated by Merz ’912 as evidenced by Wang. Final Act. 3. Appellants
present substantive arguments for reversal of this rejection with respect to
claim 1 only. Appeal Br. 5-6. Claims 5, 6, and 8 are alleged to be
patentable solely based upon their dependence from an allowable base claim.
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Id. at 7. Accordingly, we limit our discussion to claim 1. Claims 5, 6, and 8
will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants argue that the rejection of claim 1 should be reversed
because Merz ’912 does not describe an IC comprising a moisture barrier
film deposited by CVD techniques. Appeal Br. 5-6; Reply Br. 4-5. In
particular, Appellants argue that the Examiner erred by concluding that the
phrase “chemical vapor deposited (CVD) film” was a product-by-process
limitation. See Appeal Br. 5 (citing Final Act. 4); Reply Br. 4 (citing
Answer 3). Appellants argue that rather than being a product by process
limitation, a person having ordinary skill in the art would have understood
claim l’s reference to “a chemical vapor deposited (CVD) film” as referring
to a specific thing. Appeal Br. 5.
Because of this error, Appellants argue, the Examiner failed “to
provide any evidence that films produced by such ‘other [deposition
methods]’ result in a film being identical to a CVD film.” Reply Br. 4.
Appellants further argue that “processes for depositing a thin film differing
from CVD inevitably result in films having different properties than a CVD
film, which commonly can be a reason for choosing a process differing from
CVD.” Id. (emphasis added).
We are not persuaded by Appellants’ argument for reversal of the
rejection of claim 1 for two reasons. First, we agree with the Examiner that
the phrase “chemical vapor deposited (CVD) film” is a product-by-process
limitation. We conclude that a person having ordinary skill in the art at the
time of the invention would have understood this phrase to mean a film that
has been deposited by a CVD process.
Second, assuming arguendo that the Examiner erred by concluding
that a “chemical vapor deposited (CVD) film” is a product-by-process
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Application 13/471,609
limitation, that error would have been harmless. If this phrase is not a
product-by-process limitation, its ordinary meaning would be “a film having
the properties of a film deposited by a CVD process.” If we had adopted
this claim interpretation, the Examiner could still require Appellants to
demonstrate that the film described in Merz ’912 differed from the claimed
CVD film. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“However,
when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”); In re King, 801 F.2d 1324, 1327 (Fed. Cir.
1986). The Examiner’s ability to impose this requirement on a patent
applicant is appropriate because the PTO lacks the resources to perform the
requisite testing in-house.
In view of the foregoing, we affirm the Examiner’s rejection of claim
1 as anticipated by Merz ’912. Because we have affirmed the rejection of
claim 1, we also affirm the rejection of claims 5, 6, and 8 as anticipated by
Merz ’912.
Rejection 3. The Examiner rejected claims 1, 2, 5, 6, and 8 as
unpatentable over the combination of Ponomarev and Merz ’211 as
evidenced by Matsuzawa. Final Act. 6.
Appellants present substantive argument for reversal of this rejection
only with respect to claim 1. Appeal Br. 8-10. Dependent claims 2, 5, 6,
and 8 are alleged to be patentable solely by basis of their dependence from
an allowable base claim. Id. at 10. We, therefore, limit our discussion to
claim 1; claims 2, 5, 6, and 8 will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that the rejection of claim 1 as unpatentable over the
combination of Ponomarev and Merz ’211 as evidenced by Matsuzawa
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Application 13/471,609
should be reversed because it relies upon an erroneous factual finding. In
particular, Appellants argue that Ponomarev does not describe a moisture
barrier film. Appeal Br. 9.
In rejecting claim 1, the Examiner found that Ponomarev describes an
IC comprising a moisture barrier film (32) between a sensor active material
(40) and a metallization stack (20). Final Act. 6 (discussing Ponomarev Fig.
4; 42). Appellants argue that “the Examiner has taken this excerpt from
paragraph [0042] out of context, ignoring Ponomarev’s teaching of both
acquiring water and then retaining that water.” Appeal Br. 9.
We reproduce ^ 42 below:
If required, the IC may further comprise a liquid barrier
layer for protecting the metallization stack 20 and the circuit
elements in the substrate 10 from liquid exposure, and in
particular from water exposure. FIG. 4 shows an embodiment
in which a liquid barrier layer 32 is present in between the
metal portions 30. Such a barrier layer may be formed over the
metallization stack 20 and subsequently patterned to form the
holes in which the metal portions 30 are formed, after which the
metal portions 30 may be formed in these patterned holes. In an
alternative embodiment (not shown), the liquid barrier layer 32
extends over the metallization stack 20 such that the metal
portions 30 are formed on top of the water barrier layer 32. In
this embodiment, the water barrier layer 32 should have a high
enough dielectric constant in case the measurement circuit 50 is
formed in the substrate 10 to facilitate a conductive
communication between the metallization stack 20 and the
metal portions 30 and to prevent interference with a capacitance
measurement of the liquid immersion sensor formed by the
metal portions 30 and the portion of the liquid retention layer
40 separating these metal portions. Non-limiting examples of
suitable materials for the water barrier layer 32 in this
embodiment include silicon oxide, silicon nitride, silicon
carbide and tantalum pentoxide materials.
Ponomarev ^ 42.
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As can be seen, Ponomarev’s ^ 42 discloses a moisture barrier layer.
We, therefore, are not persuaded by Appellants’ argument7 and affirm the
rejection of claim 1. Thus, we also affirm the rejection of claims 2, 5, 6, and
8.
Rejection 4. The Examiner rejected claim 2 as unpatentable over the
combination of Merz’912 and Ponomarev. Final Act. 10. Appellants’sole
argument for reversal of this rejection is the dependence of claim 2 from an
allowable base claim, i.e., claim 1. See Appeal Br. 11. Because we have
affirmed the rejection of claim 1 as anticipated by Merz ’912, we also affirm
the rejection of claim 2 as unpatentable over the combination of Merz ’912
and Ponomarev.
CONCLUSION
For the reasons set forth above, we (1) affirm the rejection of claim 1
as indefinite under 35 U.S.C. § 112, 2, (2) affirm the rejection of claims 1,
5, 6, and 8 as anticipated by Merz ’912, (3) affirm the rejection of claims 1,
2, 5, 6, and 8 as unpatentable over the combination of Ponomarev and Merz
7 In the Reply Brief, Appellants argue for the first time that there are
“several differences[] between the integrated circuit of claim 1 and
Ponomarev[] that have not been appreciated by the Office.” These
arguments could have been, but were not presented in Appellants’ Appeal
Brief. Under regulations governing appeals to the Board, a new argument
not timely presented in the Appeal Brief will not be considered when filed in
a Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative); 37 C.F.R. §§ 41.37; 41.41.
Because the record contains no such showing, we will not consider the new
arguments in the Reply Brief.
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Application 13/471,609
’211 as evidenced by Matsuzawa, and (4) affirm the rejection of claim 2 as
unpatentable over the combination of Merz ’912 and Ponomarev.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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