Ex Parte EDWARDS et al

Patent Trial and Appeal Board

Oct 16, 2018

12201679 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/201,679 08/29/2008
23494 7590 10/18/2018
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MIS 3999
DALLAS, TX 75265
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
HENRY LITZMANN EDWARDS
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.
TI-65205 9877
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY LITZMANN EDWARDS and
TATHAGATA CHATTERJEE
Appeal2017-011456
Application 12/201,679
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 19, 22-25, and 28. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
1 In this Opinion, we refer to the Specification filed August 29, 2008
("Spec."), the Final Office Action dated April 20, 2016 ("Final Act."), the
Appeal Brief filed March 20, 2017 ("Appeal Br."), the Examiner's Answer
dated July 13, 2017 ("Ans."), the Reply Brief filed September 13, 2017
("Reply Br."), and the Declaration of Henry Litzmann Edwards, Ph.D.,
dated March 7, 2014 ("Edwards Deel.").
2 The real party in interest is identified as Texas Instruments Incorporated.
Appeal Br. 2.
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Application 12/201,679
The invention relates to thermoelectric devices in integrated circuits.
Spec. ,r 1. According to the Specification, integrated circuits frequently
generate heat during operation, which raises the temperatures of internal
components. Id. ,r 2. The Specification further states that thermoelectric
coolers mounted on IC packages consume too much power to be useful and
often fail to provide sufficient cooling. Id. Claim 19 is illustrative ( disputed
limitations italicized):
19. A process of forming a nanoscale thermoelectric
device in an integrated circuit, comprising the steps of:
forming a thermoelectric device in a substrate
comprising silicon, including forming a p-well;
forming an n-well proximate to said p-well;
forming a first p-type active area in said p-well;
forming a first n-type active area in said n-well;
forming a first vertical metal connection on said first p-
type active area;
forming a second vertical metal connection on said first
n-type active area[;]
forming a central metal terminal on said first vertical
metal connection and on said second vertical metal connection,
such that said central metal terminal is electrically connected to
said first p-type active area and to said first n-type active area;
forming a second p-type active area in said p-well;
forming a second n-type active area in said n-well;
forming a third vertical metal connection on said second
p-type active area;
forming a fourth vertical metal connection on said second
n-type active area[;]
forming a first electrode on said third vertical metal
connection, such that said first electrode is electrically
connected to said second p-type active area; and
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Application 12/201,679
forming a second electrode on said fourth vertical metal
connection, such that said second electrode is electrically
connected to said second n-type active area,
wherein said first and second p-type active areas, and
said first and second n-type active areas are less than 300
nanometers wide.
Appeal Br. 14 (Claims Appendix). Claims 22-25 and 28 each depend from
claim 19. Id. at 14--16 (Claims Appendix).
The Examiner maintains (Ans. 2-19) the following rejections under
35 U.S.C. § 103 (Final Act. 3-20):
1. Claims 19, 25, and 28 over Inbe3 in view of Strnad. 4
2. Claims 22 and 23 over Inbe in view of Strnad, DeSteese, 5 and
Bass. 6
3. Claims 19 and 24 over Inbe in view of Strnad and Tang. 7
OPINION
The Examiner determines that claims 19, 22-25, and 28 would have
been obvious to one of ordinary skill in the art at the time of the invention
for the reasons stated on pages 3-20 of the Final Office Action. Appellants
argue the patentability of independent claim 19 and rely on those same
arguments for the dependent claims. Appeal Br. 5-13. Therefore, we select
claim 19 as representative; claims 22-25 and 28 will stand or fall with claim
19 based upon the lack of arguments directed to the individual claims and
the subsidiary rejections. 37 C.F.R. § 4I.37(c)(l)(iv).
3 Inbe, US 6,774,450 B2, issued Aug. 10, 2004.
4 Strnad, US 6,476,508 Bl, issued Nov. 5, 2002.
5 DeSteese et al., US 2008/0173537 Al, pub. July 24, 2008.
6 Bass et al., US 6,207,887 Bl, issued Mar. 27, 2001.
7 Tang et al., US 2009/0014807 Al, pub. Jan. 15, 2009.
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Application 12/201,679
Appellants do not dispute the Examiner's findings and analysis
regarding the cited prior art. Appeal Br. 5. The sole issue in this appeal is
whether the Edwards Declaration provides sufficient evidence of unexpected
results to overcome the obviousness rejections. Id. at 5, 7. According to
Appellants, the Edwards Declaration shows "'an unexpected behavior occurs
when the dimensions of the [Thermoelectric Generator] fall below 300 nm'
(i.e., the claimed Nanoscale Feature)." Appeal Br. 5 (quoting Edwards Deel.
,r 19). Appellants direct us to paragraphs 18-20 of the Edwards Declaration
which refer to Figure 7 of the Edwards Paper8 as showing "the generated
power ... approximately triples as the thermopile width is reduced from
240nm to 80nm." Id. at 8-9 (quoting Edwards Deel. ,r 20) (emphasis
omitted).
Based on this evidence, Appellants make three arguments: (1) the
evidence is commensurate with the scope of the claimed range of "less than
300nm" because that is what the Edwards Declaration states and the
Edwards Paper is merely an illustrative example, (2) the evidence is
commensurate with the scope of the claimed "substrate comprising silicon"
because both the Edwards Declaration and the Edwards Paper are not
inconsistent with the description of the substrate in the Specification as
"typically single crystal silicon, but possibly with regions of silicon-
germanium," and (3) the explanation for the behavior in the Edwards
Declaration does not "detract from the evidence presented by the Edwards
8 Hal Edwards, Jeff Debord, Toan Tran, Dave Freeman, and Ken Maggio,
Performance Metrics for Thermoelectric Energy Harvesting Studied Using a
Novel Planar 65 nm Silicon CMOS-Based Thermopile, Proceedings of the
IEEE Sensors Conference (Nov. 3---6, 2013).
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Application 12/201,679
Declaration" that unexpected behavior occurs when the dimensions of the
TE fall below 300nm. Id. at 9--12.
The Examiner responds that ( 1) the evidence relied upon provides a
range of 80 to 240 nm that is not commensurate in scope with "less than 300
nanometers" recited in claim 19, (2) claim 19 is not limited to silicon
material because it is an open ended claim reciting "comprising silicon," and
(3) the results provided in the Edwards paper are not unexpected because
they appear to be based on the known phenomena of phonon sidewall
scattering or phonon Brillouin zone folding. Ans. 21-23.
In the Reply Brief, Appellants contend that the Edwards Declaration
does not simply state that unexpected behavior occurs when the dimensions
of the TE fall below 300 nm, but presents evidence that unexpected behavior
occurs commensurate with claim 19. Reply Br. 4. Regarding the silicon
substrate, Appellants contend that the Edwards Declaration is consistent
with the Specification. Id. at 4--5. As to whether the results are unexpected
if they are explained by known phenomena such as phonon sidewall
scattering or phonon Brillouin zone folding, Appellants quote paragraphs 19
and 21 of the Edwards Declaration and assert that the explanation does not
detract from the evidence provided. Id. at 5---6.
After reviewing the positions and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
Appellants characterize Figure 7 of the Edwards Paper as "merely an
example illustrating [the statement in the Edwards Declaration] that
'unexpected behavior occurs when the dimensions of the TE fall below
300nm."' Appeal Br. 10. However, the Edwards Declaration provides no
explanation or support for concluding that Figure 7 in the Edwards Paper
describes the portions of the range between O and 300 nm outside of 80 to
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240 nm, i.e., the full scope of the claimed range of "less than 300
nanometers wide." The x-axis of Figure 7 starts at 80nm and ends at 240nm,
therefore, Figure 7 itself provides no information about the ranges between
0-80nm and 240-300nm nor the criticality of 300nm that Appellants claim.
Aside from the conclusory statement in the Edwards Declaration, Appellants
do not direct us to any evidence in this record to show that the Edwards
Declaration "is not limited to a nanoscale range of 80-240nm used in the
example described in the Edwards Paper." Id. Therefore, we are not
persuaded that the Examiner erred in determining that Appellants' objective
evidence of non-obviousness does not support the full scope of the range for
the width of the first and second p-type active areas and first and second n-
type active areas as recited in claim 19.
In assessing the probative value of declaratory evidence, one must
consider the nature of the matter sought to be established as well as the
strength of the opposing evidence. In re Oelrich, 579 F.2d 86, 91 (CCPA
1978). Although opinion testimony must be considered and generally is
entitled to some weight, a lack of objective support for expert opinion "may
render the testimony of little probative value in a validity determination."
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,294
(Fed. Cir. 1985). This holds true in patentability determinations as well. See
In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support
rendered an affidavit of little probative value in overcoming obviousness
rejection). The Examiner correctly finds that Figure 7 in the Edwards Paper
provides a range of 80-240nm, the Examiner correctly finds that 80-240nm
is not commensurate with the claimed range of less than 300nm, and the
Examiner correctly finds that the Edwards Paper reports that the results in
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Figure 7 are due to "increased sidewall scattering, reducing its thermal
conductivity as was studied in Si nanowires." Ans. 21.
Dr. Edwards's qualifications (Edwards Deel. ,r 2) do not entitle
conclusory testimony to such probative weight that it would overshadow the
weight of the other evidence; there is no requirement that a fact finder credit
unexplained testimony of an expert. Rohm and Haas Co. v. Bro tech Corp.,
127 F.3d 1089, 1092 (Fed. Cir. 1997). Paragraph 19 of the Edwards
Declaration allegedly shows "an unexpected behavior occurs when the
dimensions of the TE fall below 300nm" (Reply Br. 3, 4, 5, all quoting
Edwards Deel. ,r 19), but, when compared to Figure 7 and the description of
Figure 7 in the Edwards Paper, neither the full range of 0-300nm nor the
behavior as unexpected is supported as pointed out by the Examiner.
Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
sufficient to rebut a primafacie case of obviousness." Kao Corp. v.
Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be
considered on its own facts."). However, a party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). "[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants argue that even though the Edwards Declaration provides
an explanation for the asserted unexpected behavior, that does not detract
from the evidence presented in the Edwards Declaration that the claimed
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active areas are less than 300 nanometers wide is unexpected behavior.
Appeal Br. 11-12 (citing Edwards Deel. ,r,r 21-24). The difficulty with
Appellants' argument is that the Edwards Paper itself explains that the
behavior shown in the Figure ("the generated power improves with thinner
thermopile width despite having more perimeter") is due to the "thermopile
itself is improved by the increased sidewall scattering, reducing its thermal
conductivity as was studied in Si nanowires." Edwards Paper (description
under Figure 7); Ans. 21. Appellants fail to establish that this behavior in Si
nano wires was not known at the time of invention. See generally Appeal
Br.; Reply Br.; Edwards Deel. To the extent that Appellants seek to argue in
the Reply Brief that the behavior is expected in the field of nanotechnology,
but not expected in the field of thermopile design, by quoting paragraph 21
of the Edwards Declaration with emphasis that the explanation comes from
nanotechnology (Reply Br. 6), this argument is not persuasive because
neither Appellants nor the Edwards Declaration explains why one skilled in
the art of thermopile design would not look to nanotechnology, particularly
when dimensions in the range of 0-300 nm are involved.
Similarly, Appellants' argument (Appeal Br. 10) that the Examiner
erred in concluding that the evidence presented is not commensurate with
the scope of claim 19 because it is limited to silicon substrates is also
unpersuasive of error because it fails to explain the gap between the range of
substrate materials claimed and the substrate material described in the
Edwards Paper. According to Appellants, neither the Edwards Declaration
nor the Edwards Paper are "inconsistent with the description in the
Specification that the claimed 'substrate' can be 'typically single crystal
silicon, but possibly with regions of silicon-germanium (Si-Ge) in a top
region of the substrate."' Id. at 11 ( citing Spec. ,r 18). Appellants' position
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regarding consistency with the Specification does not address this gap, but
merely acknowledges that "substrate comprising silicon" is inclusive of the
material used in the Edwards Paper.
In sum, after weighing all of the evidence cited in this Appeal,
including Appellants' objective evidence, we find the preponderance of the
evidence supports the Examiner's rejection of claim 19 under 35 U.S.C.
§ 103.
CONCLUSION
We affirm all of the Examiner's rejections of claims 19, 22-25, and
28.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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