Ex Parte Dove et al

Board of Patent Appeals and Interferences

Apr 21, 2008

10761972 (B.P.A.I. Apr. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEWIS R. DOVE and JOHN F. CASEY
____________

Appeal 2007-4370
Application 10/761,972
Technology Center 2800
____________

Decided: April 21, 2008
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and KEVIN F.
TURNER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appeal 2007-4370
Application 10/761,972

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-3, 5, 8, 12, 13, and 17. Claims 4, 6,
7, 9-11, 14-16, and 18-20 have been objected to for being dependent upon
rejected claims, but otherwise allowable if rewritten in independent form to
include all the limitations of their base claim and any intervening claims.
We have jurisdiction under 35 U.S.C. § 6(b).
Appellants invented a microwave conductor circuit arrangement and
its method of making. According to Appellants, first and second mounds of
dielectric respectively encapsulate first and second conductors where a third
dielectric fills a valley between the first and second mounds of dielectric,
and encapsulates a third conductor. (Spec. 2). An understanding of the
invention can be derived from a reading of independent claims 1 and 8,
which are reproduced as follows:
1. Apparatus, comprising:

a) first and second mounds of dielectric, respectively
encapsulating first and second conductors;

b) a third dielectric, filling a valley between the first and
second mounds of dielectric, and encapsulating a third
conductor; and

c) a first ground shield deposited on at least sides of the first
and second mounds of dielectric, abutting the third dielectric.

8. A method for forming shielded transmission lines,
comprising:

a) depositing first and second lower mounds of dielectric on a
first ground shield;

2
Appeal 2007-4370
Application 10/761,972

b) depositing conductors on the first and second lower mounds
of
dielectric;

c) depositing first and second upper mounds of dielectric on
the first and second lower mounds of dielectric;

d) depositing a second ground shield over the first and second
upper and lower mounds of dielectric;

e) depositing a third lower dielectric in a valley between the
first and second upper and lower mounds of dielectric;

f) depositing a conductor on the third lower dielectric;

g) depositing a third upper dielectric on the third lower
dielectric; and

h) depositing a third ground shield over the third upper
dielectric.

The Examiner relies on the following prior art references:
Leeb US 5,317,292 May 31, 1994
Matsubayashi US 5,426,399 Jun. 20, 1995
Dove US 6,457,979 B1 Oct. 1, 2002

The rejections as presented by the Examiner are as follows:
Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Leeb or Matsubayashi.
Claims 8, 12, 13, and 17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Leeb.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leeb and Dove.
3
Appeal 2007-4370
Application 10/761,972

Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.
We affirm-in-part.

ISSUES
1. Under 35 U.S.C. § 102(b), with respect to the appealed claims
1-3, do Leeb and Matsubayashi each anticipate the claimed subject matter by
teaching all of the claimed limitations?
2. Under 35 U.S.C. § 102(b), with respect to the appealed claims
8, 12, 13, and 17, does Leeb anticipate the claimed subject matter by
teaching all of the claimed limitations?
3. Under 35 U.S.C. § 103(a), with respect to the appealed claim 5,
would the ordinarily skilled artisan have found it obvious to modify Leeb or
Mastubayashi with Dove to render the claimed invention unpatentable?

PRINCIPLES OF LAW
1. Anticipation
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).

4
Appeal 2007-4370
Application 10/761,972

2. Obviousness
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” See In
re Young, 927 F.2d 588, 591 (Fed. Cir. 1991), (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)), and In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir.
2006).
The Examiner can satisfy this burden by showing “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
1. 35 U.S.C. § 102 Rejection of claims 1-3
Appellants disagree with the Examiner’s findings in Leeb and
Matsubayashi with respect to the limitation of “a third dielectric, filling a
valley between the first and second mounds of dielectric, and encapsulating
a third conductor,” as recited in claim 1 (App. Br. 11). Appellants further
argue that the third dielectric of Leeb and Matsubayashi “disposed in a
valley adjacent” first and second dielectric mounds is different from the
claimed third dielectric mound “filling a valley between” the first and second
mounds (App. Br. 10).
The Examiner characterizes the space between the raised sloping
walls of the first and second transmission lines in either Leeb or
Matsubayashi as a “valley” (Ans. 6) and asserts that the transmission line
placed in such a space would be “filling” the “valley” (Ans. 7). The
Examiner further argues that the claimed “filling the valley” reads on the
5
Appeal 2007-4370
Application 10/761,972

transmission line positioned in the space between the two transmission lines
in Leeb or Matsubayashi since the claim does not specify the extent to which
the valley is to be filled (id.).
We agree with the Examiner that the broadest reasonable
interpretation of claim 1 does not require that the space between the first and
the second mounds be completely filled. Therefore, the placement of the
middle transmission line in Leeb or Matsybayashi takes up some space and
does fill the “valley” or the space between the first and second mounds. See
Figure 10 of Leeb and Figure 1 of Matsubayashi.
Appellants’ argument regarding the sequence or the timing of
dielectric layer formation in Leeb or Matsubayashi (App. Br. 11; Reply Br.
2) is also misplaced since claim 1 recites an apparatus in which the sequence
or timing of the processing of dielectric layers is not specified in its final
structure. In fact, the recited terms “filling” and “deposited” merely define
the relative position of the third dielectric and the first ground shield, and are
not related to the timing of their formation.
Under the facts we have here and the arguments presented by the
Examiner and Appellants as discussed above, we have concluded that a
prima facie case of anticipation has been established. Accordingly, we
sustain the 35 U.S.C. § 102(b) rejection of claim 1, as well as claims 2 and 3
which have not been argued separately, as anticipated by Leeb or
Matsubayashi.
2. 35 U.S.C. § 102 Rejection of claims 8, 12, 13, and 17
Appellants contend that Leeb does not disclose the recited steps in
claims 8 and 13, which imply a specific order for performing the claimed
steps (App. Br. 12). Appellants point out that claim 8 requires depositing a
6
Appeal 2007-4370
Application 10/761,972

“third lower dielectric” in “a valley between the first and second upper and
lower mounds of dielectric,” which requires depositing the first and second
mounds before the third dielectric is formed (id.). Similarly, Appellants
argue that claim 13 requires depositing the ground shields as “ground shield
walls” and “ground shield caps” in two different parts (id.).
The Examiner responds by arguing that since the recited method steps
in claims 8 and 13 do not specify any particular order to be followed in the
claimed steps of formation, they are met by the laminating method of Leeb
(Ans. 8). Additionally, the Examiner asserts that a formation of multiple
mounds at the same time and depositing the ground shields over at least a
portion of the lower mounds in Leeb meet the claimed limitations of claims
8 and 13 (id.).
A review of Leeb reveals that in the only processing method used in
forming the dielectric mounds, the first dielectric substrate 1 is deposited for
all the mounds (col. 3, ll. 32-35) and later the dielectric substrate 5 is
simultaneously deposited for all the mounds (col. 3, ll. 49-53). The two
dielectric substrates that are formed and etched at the same time to form
multiple mounds, as argued by Appellants (App. Br. 12; reply Br. 2-3), do
not allow a third dielectric to be formed in a valley which is not yet formed.
Similarly, we do not agree with the Examiner that forming a blanket ground
shield in Leeb meets the specific steps of depositing different sections of the
ground shield on the walls of only the first and the second mounds and the
caps over the first, second, and the third mounds, as recited in claim 13.
Therefore, as we find no teachings in Leeb that meet the recited
method steps of claims 8 and 13, we agree with Appellants that Leeb cannot
anticipate the claimed subject matter. Therefore, we do not sustain the 35
7
Appeal 2007-4370
Application 10/761,972

U.S.C. § 102(b) rejection of claims 8 and 13 over Leeb, as well as claims 12
and 17 dependent thereon.

3. 35 U.S.C. § 103 Rejection of claim 5
With respect to the rejection of claim 5, we note that the Examiner
further relies on Dove for teaching ceramic dielectrics (Ans. 5). However,
the Examiner’s 35 U.S.C. § 103(a) rejection of claim 5 is sustained since
Appellants’ arguments in response (App. Br. 13) reiterate the contention that
Leeb and Matsubayashi do not teach all of the recited limitations of claim 1,
which arguments we found to be unpersuasive as discussed supra, and state
that Dove does not teach what is missing in these two references.

CONCLUSION
On the record before us, Appellants have failed to show that the
Examiner has erred in rejecting claims 1-3 and 5. However, we found error
in the Examiner’s rejection of claims 8, 12, 13, and 17. In view of our
analysis above, the decision of the Examiner rejecting claims 1-3 and 5 is
affirmed, but reversed with respect to claims 8, 12, 13, and 17.
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-IN-PART

8
Appeal 2007-4370
Application 10/761,972

gvw

AGILENT TECHNOLOGIES, INC.
Legal Department, DL429
Intellectual Property Administration
P.O. Box 7599
Loveland, CO 80537-0599
9