Ex Parte Gabara et alDownload PDFPatent Trial and Appeal BoardDec 5, 201495001628 (P.T.A.B. Dec. 5, 2014) Copy Citation MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 95/001,628 05/20/2011 7,429,899 EXAMINER NDQ Special Reexam Group 1000 Louisiana Street, Fifty-Third Floor Houston, TX 77002 Deb, Anjan ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/08/2014 PAPER 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ XILINX, INC. Requester v. INTELLECTUAL VENTURES MANAGEMENT Patent Owner and Appellant ________________ Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 Technology Center 3900 ________________ Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Patent Owner appeals the Examiner’s decision to reject claims 1-95. PO App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134 and 315. Claims 1-95 are rejected on various grounds. See RAN 8-106. We affirm. Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 2 STATEMENT OF THE CASE This proceeding arose from a request by Xilinx, Inc. for an inter partes reexamination of Patent 7,429,899 B2, titled “Reduced Eddy Current Loss in LC Tank Circuits” (the “’899 patent”). The ’899 patent describes “decreas[ing] the parasitic resistance of an inductor by placing several inductors in parallel.” Abstract. Claim 17, which is reproduced below, is illustrative: 17. An apparatus comprising: one or more metal layers; a plurality of metallic connections; an eddy current loss; a plurality of metallic conductors formed in at least one of the metal layers where each metallic conductor has a corresponding first lead and a corresponding second lead; the corresponding first leads of the metallic conductors are connected together using the first metallic connection; and the corresponding second leads of the metallic conductors are connected together using the second metallic connection wherein at least one metallic conductor contains at least one cross- under. SELECTED REFERENCES The Examiner relies on the following references as evidence of unpatentability: i. US 6,661,325 B2; issued Dec. 9, 2003 (“Suh”). ii. US 5,966,063; issued Oct. 12, 1999 (“Sato”). iii. US 6,867,677 B2; issued Mar. 15, 2005 (“Nielson”). Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 3 iv. US 5,396,195; issued Mar. 7, 1995 (“Gabara ’195”). ANALYSIS THE WRITTEN DESCRIPTION REJECTION OF CLAIMS 47-95 The Examiner finds that claims 47-95 fail to comply with the written description requirement. RAN 86-87, 105-106. New claim 47 recites “wherein the at least one cross-under enables a first metallic conductor to cross under a second metallic conductor, the at least one cross-under being positioned to substantially equalize resistance values of the first and second metallic conductors.” For support, Patent Owner cites the ’899 patent, col. 20, ll. 32-44, and Fig. 26. The ’899 patent, col. 20, ll. 32-44 (emphasis added) states In the upper right corner [of Fig. 26], the three coils route around one another. This is where metal vias are used to bridge the current from the upper metal layer to a lower metal layer to cross under the obstructing coil and use vias [sic] to redirect the current back to the upper metal layer. This structure is called a cross-under and redirects the current 26-8 down and under[. Cross-under] 26-5 is used to continue the current flow 26-8 under the coil 26-3 and back to the coil 26-2. The middle coil 26-3 crosses under the coil 26-4 using the cross-under 26-6. Finally, the last coil 26-4 crosses under coil 26-2 using the cross-under 26-7. Note that each coil only has one cross-under in its entire path insuring that all the coils have a similar characteristic; for example, the resistance term in each coil is equalized. Regarding claim 47, the Examiner explains “the ’899 specification fails to disclose which positions on a conductor are better than others for equalizing resistance of the conductors, nor does it teach how one of ordinary skill in the art would select one position on a conductor from Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 4 another for placing a cross-under.” RAN 86. The Examiner further explains “column 20 teaches, at most, that if each coil has one cross-under in its path, resistance in each coil can be equalized.” RAN 86. The Examiner further explains “Fig. 26 does not explain how to select a position for a cross-under to equalize resistance val[u]es.” RAN 106. Patent Owner argues that “the Examiner adopted the written description rejection of Claims 47-95 based on TPR’s attorney argument alone.” PO App. Br. 15. Patent Owner argues “FIG. 26 of the originally filed ’899 Patent shows an embodiment in which only one cross-under (26-5) is needed when only two metallic conductors (26-2 and 26-3) are provided. In other words, two cross-unders (26-6 and 26-7) may be omitted when the third metallic conductor (26-4[]) is not present.” PO App. Br. 16; see also Declaration of David C. Jiles, Ph.D, August 13, 2012, ¶¶ 23-32; PO Reb. Br. 5-6. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “And while the description requirement does not demand any particular form of disclosure, or that the specification recite[s] the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352 (internal citations omitted). We agree with the Examiner and Third Party Requester, and adopt as our own Third Party Requester’s further elaboration: Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 5 [T]he sole thing the patentee asserted about the three cross- unders shown in Figure 26 was that it was important to just have one cross-under per coil because the cross-unders were more resistive than the remainder of the coils. Col. 20, lines 41- 44. The patentee said nothing about the positioning of the cross- unders: instead, the patentee chose to focus on the cross-under quantity. 3PR Resp. Br. 4; see also Second Declaration of Linda Milor, Ph.D, September 11, 2012, ¶¶ 15-18. The ’899 patent (col. 20, ll. 32-44) describes equalizing the resistance term in each coil by locating a single cross-under in each coil. At best, the cited part of the Specification describes equalizing the resistance term in each coil by locating the same number of cross-unders in each coil. The Specification does not, however, disclose one cross-under being positioned to substantially equalize resistance values of first and second metallic conductors. There is no written description to support equalizing resistance values being a result of the position of one cross-under. Regarding Patent Owner’s argument (i) that the rejection is based on attorney argument alone, we find this argument unavailing because the Second Declaration of Linda Milor, Ph.D, September 11, 2012, ¶¶ 15-18 supports the Examiner’s position. Regarding Patent Owner’s argument (ii) that only one cross-under is needed when only two metallic conductors are provided, we also find this argument unavailing because the ’899 patent (col. 20, ll. 41-44) describes equalizing the resistance term in each coil by locating one cross-under in each coil. Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 6 We have reviewed Patent Owner’s arguments and evidence, including the Declaration of David C. Jiles, Ph.D, August 13, 2012, ¶¶ 23-32, and are not persuaded of any error in the Examiner’s position. We, therefore, agree with the Examiner that the Specification fails to disclose (claim 47) “wherein the at least one cross-under enables a first metallic conductor to cross under a second metallic conductor, the at least one cross-under being positioned to substantially equalize resistance values of the first and second metallic conductors.” We, therefore, sustain the rejection under 35 U.S.C. § 112, 1st paragraph, of claim 47, as well as claims 48-95, which are not argued separately with particularity. THE ANTICIPATION REJECTION OF CLAIMS 17-26 BY SUH The Examiner finds that Suh describes all limitations of claims 17-26. RAN 8-13, 91-94. Regarding claim 17, the Examiner finds “Suh teaches [a] plurality of metallic connections (vias) 530 [in Fig. 5].” RAN 8. The Examiner maps Suh’s metal lines 510 and 520 [in Figs. 5 and 6] to the recited plurality of metallic conductors formed in at least one of the metal layers. RAN 9. The Examiner further finds Suh describes “wherein at least one metallic conductor contains at least one cross-under 511 shown in Fig. 6.” RAN 10. Regarding Fig. 26 of the ’899 patent, the Examiner explains “Fig. 26 provides an example of a cross-under, but there is no other teaching regarding the meets [sic] and bounds of the term cross-under as it is used in the ’899 patent.” RAN 88. The Examiner further explains “Suh disclosed Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 7 vias that are metallic connections, the metal lines 510 and 520 are metallic conductors, portions of metal lines 510, 520 proximate vias 530 are leads, and portions of line 510 are cross-unders as shown in [] Fig. 6.” RAN 92. Patent Owner presents the following principal arguments: i. Contrary to established case law and Board precedent, “[t]he record clearly reflects that TPR and the Examiner read Suh’s vias 530 on both the claimed ‘cross-under’ and the claimed ‘connection.’” PO App. Br. 17; see also PO Reb Br. 6-8. ii. [A] proper construction of [(claim 17) “a plurality of metallic conductors formed in at least one of the metal layers”] is if there are one or more metal layers (as the claim recites), then “at least one” of the metal layers has “a plurality of metallic conductors” formed in it. PO App. Br. 19; see also PO Reb. Br. 8. We are not persuaded of any error in the Examiner’s findings. Regarding Patent Owner’s argument (i), we find this argument unpersuasive because the Examiner does not map Suh’s vias 530 on both the recited cross-under and the recited connection. The Examiner maps Suh’s vias 530 to the recited metallic connections. RAN 8. The Examiner maps Suh’s lower metal line portion 511 to the recited cross-under. RAN 10. As the Examiner also explains, and we agree, Patent Owner’s Fig. 26 provides an example of a cross-under, but is not limiting. RAN 88. Therefore, we find Suh’s metal line portion 511 being a cross-under, and Suh’s via 530 being a connection, is consistent with Appellant’s Specification. Regarding Patent Owner’s argument (ii), we find this argument unpersuasive because the broad claim language does not require a plurality Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 8 of metallic conductors in a single metal layer. Claim 17 recites “a plurality of metallic conductors formed in at least one of the metal layers.” Suh (Fig. 6) describes a plurality of metallic conductors (Suh’s metal lines 510 and 520 shown in Fig. 6) formed in at least one of the metal layers (Suh’s two metal layers show in Fig. 6). We, therefore, sustain the anticipation rejection of claim 17 based on Suh, as well as the rejection of claims 18-26, which are not argued separately with particularity. THE OBVIOUSNESS REJECTION OF CLAIMS 27 AND 28 OVER SUH AND SATO The Examiner finds that Suh and Sato teach all limitations of claims 27 and 28. RAN 62, 97. Patent Owner argues that Sato does not cure the purported deficiencies of Suh. PO App. Br. 37-38, PO Reb. Br. 16-17. We find these arguments unpersuasive for reasons discussed above with respect to claim 17, from which claims 27 and 28 depend. We, therefore, sustain the obviousness rejection of claims 27 and 28 based on Suh and Sato. THE OBVIOUSNESS REJECTION OF CLAIMS 1-16 AND 38-46 OVER SATO AND NIELSON The Examiner finds Sato and Nielson teach all limitations of claims 1- 16 and 38-46. RAN 13-29, 93-94. Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 9 Regarding claim 1, the Examiner finds Sato describes all limitations of claim 1, except for the recited at least one cross-under, for which the Examiner relies on Nielson. RAN 14-17. The Examiner reasons it would have been obvious for one of ordinary skill in the art to use a cross-under as taught by Nielsen in the inductor structure of Sato in order to facilitate a crowded arrangement of conductive lines on a substrate. Moreover, such a modification is a combination of “prior art elements according to known methods to yield predictable results” [see MPEP 2143]. RAN 16. The Examiner further explains [a] person of ordinary skill in the art having the embodiments of Sato and Nielson would have understood that there are multiple ways to connect two inductors to get a desired result in a given application. Some applications may call for a same sense winding, whereas other applications may call for opposite sense windings, and choosing a particular winding sense that is suitable for a particular application would have been well within the abilities of a person of ordinary skill in the art. RAN 93-94 (citing Second Declaration of Linda Milor, Ph.D, September 11, 2012, ¶¶ 7-10). The Examiner further explains The rejection proposes to use an inductor which has multiple conductors as taught by Sato and the inductor placed in series with another inductor as taught by Nielsen and use a cross- under to facilitate a crowded arrangement as taught by Nielsen. Therefore the prior art combination clearly provides a motivation to make the proposed modification to use a cross- under to facilitate a crowded arrangement. RAN 94. Patent Owner presents the following principal arguments: Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 10 i. The Examiner incorrectly determined the level of ordinary skill in the art because the level must include knowledge of magnetics, and not only knowledge of analog integrated circuits. PO App. Br. 21-22; see also Declaration of David C. Jiles, Ph.D, August 13, 2012, ¶¶ 14, 39-41 (“magnetic design is a key issue of this re-examination”); PO Reb. Br. 9. ii. The Examiner applies improper hindsight reconstruction. PO App. Br. 22-26; see also PO Reb. Br. 10. “The Sato patent describes inductors in series with same sense spiral windings which reinforce the magnetic flux, whereas Nielson describes inductors in series with opposite sense spiral windings which produce opposing magnetic fluxes.” PO App. Br. 24; see also Declaration of David C. Jiles, Ph.D, August 13, 2012, ¶ 56. “Sato’s device uses TFT technology having substantially wider and deeper cross-unders tha[n] Nielson’s device, which is directed to VLSI technology.” PO App. Br. 25; see also Declaration of Richard M. Greene, September 29, 2011, ¶¶ 25-26 (“Prior to 2005, one of ordinary skill in the art using TFT technology would vertically stack single layer inductors because TFT technology at that time did not enable two layer TFT inductors having cross- unders”). iii. Sato and Nielson teach away from their proposed combination. PO App. Br. 26-28; see also Declaration of David C. Jiles, Ph.D, August 13, 2012, ¶ 58 (“redesigning Sato’s spiral coils based on the teachings of Nielson will lead to an undesirable reduction of the magnetic flux linkage”); Declaration of Richard M. Greene, September 29, 2011, ¶ 23 (“SATO ET AL. describe a desire to miniaturize a magnetic device”); PO Reb. Br. 10-11. Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 11 iv. The Examiner’s combination would render Sato’s device inoperable for its intended purpose of increasing mutual inductance. PO App. Br. 28-29; PO Reb. Br. 11. We are not persuaded of Examiner error. Contrary to Patent Owner’s argument (i), the recited structures in the claim are at least one metallic conductor and at least one cross-under; further details of the cross-under or of the magnetic design are not recited in the claim. With such broad claim language, we see no error in the Examiner’s findings and reasons. Contrary to Patent Owner’s argument (ii), we agree with and adopt as our own Third Party Requester’s explanation that “a person of ordinary skill in the art would have recognized the wide applicability of the Nielson cross- unders to other types of planar inductors.” 3PR Resp. Br. 9 (citing Second Declaration of Linda Milor, Ph.D, September 11, 2012, ¶ 5). Further, we agree with and adopt as our own Third Party Requester’s explanation that “one of ordinary skill would not view Sato as being directed to TFT only nor would one of ordinary skill view Nielson as being directed to VLSI only.” 3PR Resp. Br. 10 (citing First Declaration of Linda Milor, Ph.D, October 26, 2011, ¶ 11). Contrary to Patent Owner’s arguments (iii) and (iv), although Sato and Nielson teach different winding arrangements, the Examiner relies on Nielson for the teaching of a cross-under and not for any winding arrangement particulars. RAN 16. We agree with and adopt as our own Third Party Requester’s explanation that one of ordinary skill in the art would not have been confused by the different windings of Sato and Nielson with regard to Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 12 importing the mere concept of a “cross-under” into Sato as required by claim 1 (Milor’s 2 nd Dec., ¶7). In addition, one of ordinary skill would recognize how to modify Nielson to obtain same sense windings. (Milor’s 2 nd Dec., ¶8). 3PR Resp. Br. 10. Further, to the extent Sato desires to miniaturize a magnetic device, this does not discredit the use of cross-unders. Thus, we are unpersuaded of any error in the Examiner’s findings and reasons. We, therefore, sustain the obviousness rejection of claim 1 based on Sato and Nielson, as well as claims 2-16 and 38-46, which are not argued separately with particularity. THE OBVIOUSNESS REJECTION OF CLAIMS 29-37 OVER GABARA ’195, SATO, AND NIELSON The Examiner finds Gabara ’195, Sato, and Nielson teach all limitations of claims 29-37. RAN 77-79, 102. The Examiner relies on Gabara ’195 and Sato for all recited limitations, except for the at least one cross-under, for which the Examiner relies on Nielson. RAN 77-79. The Examiner reasons it would have been obvious for one of ordinary skill in the art to use a cross-under as taught by Nielsen in the combination of Gabara ’195 and Sato in order to facilitate a crowded arrangement of conductive lines on a substrate. Moreover, such a modification is a combination of “prior art elements according to known methods to yield predictable results” [see MPEP 2143]. RAN 79. Patent Owner presents the following principal arguments: Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 13 i. The Examiner incorrectly determined the level of ordinary skill in the art. PO App. Br. 39-40; see also PO Reb. Br. 17. ii. Gabara ’195 as modified by Sato and Nielson does not support a cross-under as recited in claims 29 and 34. PO App. Br. 40-42; see also PO Reb. Br. 17-18. “[N]o factual evidence of record exists in this proceeding to support this proposed combination, such as citations to Sato, Nielson, or Kim.” PO App Br. 42. We are not persuaded of Examiner error. Contrary to Patent Owner’s argument (i), the recited structures in independent claims 29 and 34 include “at least one cross-under”; further details of the cross-under or of the magnetic design are not recited in the claims. With such broad claim language, we see no error in the Examiner’s findings and reasons. Contrary to Patent Owner’s argument (ii), we agree with the Examiner (RAN 79) that it would have been obvious for one of ordinary skill in the art to use a cross-under as taught by Nielsen in the combination of Gabara ’195 and Sato. Further, Third Party Requester provided evidence supporting this proposed combination. See Declaration of Linda Milor, Ph.D, September 11, 2012, ¶¶ 5, 7, 8. We, therefore, sustain the obviousness rejection of claims 29 and 34 based on Gabara ’195, Sato, and Nielson, as well as claims 30-33 and 35-37, which are not argued separately with particularity. Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 14 THE REMAINING REJECTIONS Review of alternative prior art bases for rejection to claims which have already been determined to be appropriately rejected over the prior art, is discretionary. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching rejections based on obviousness when claims already rejected as anticipated). Because claims 1-46 have already been determined to be appropriately rejected over the prior art, we exercise our discretion and decline to reach the merits of the remaining rejections of claims 1-46 over the prior art. Because claims 47-95 have been determined to be appropriately rejected under 35 U.S.C. § 112, we exercise our discretion and decline to reach the merits of the remaining rejections of claims 47-95 over the prior art. ORDER The Examiner’s decision rejecting claims 1-95 is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2014-007359 Reexamination Control 95/001,628 Patent 7,429,899 B2 15 alw Patent Owner: NDQ SPECIAL REEXAM GROUP 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 Third Party Requester: David L. McCombs Haynes & Boone, LLP 2323 Victory Avenue Suite 700 Dallas, TX 75219 Copy with citationCopy as parenthetical citation