Ex Parte Gaynor et al

Patent Trials and Appeals Board

Mar 25, 2019

14199146 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/199,146 03/06/2014
69316 7590 03/27/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Michael Gaynor
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.
339427-US-CNT 5789
EXAMINER
BACHNER, ROBERT G
ART UNIT PAPER NUMBER
2898
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL GAYNOR and BRIAN COLLINS
Appeal2017-007558
Application 14/199,146
Technology Center 2800
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
MICHEAL J. STRAUSS, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final Rejection of claims 1-23. An oral hearing was conducted on March
12, 2019. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal2017-007558
Application 14/199, 146
Invention
Embodiments of Appellants' claimed invention on appeal relate to
"the fabrication of semiconductor devices with integrated antennas and
antenna excitation systems." Spec. ,r 2.
Exemplary Claim
1. A package comprising:
an integrated circuit embedded in an electrically
non-conductive moulded material, the moulded material
including at least one moulded groove pattern on at least
one surface of the moulded material, and at least one
electrically conductive track of conductive material
disposed in the moulded groove pattern.
(Emphasis added regarding the contested limitation). 1
Rejections
A. Claims 1, 2, 9--11, 17, 20, and 21-23 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Applicants' Admitted Prior Art (Applicants
specification [0037] and Fig. 1) ("AAPA"), in view of Soler Castany
et al. (U.S. Patent Application Publication No. 2006/0256018 Al;
published Nov. 16, 2006) ("Soler"), and further in view of Dispenza et
al. (U.S. Patent Application Publication No. 2001/0018979 Al;
published Sep. 6, 2001) ("Dispenza"), and Van Swearingen (U.S.
Patent No. 7,607,942 Bl; issued Oct. 27, 2009).
1 Note: "Mould" as used in the Briefs, Claims Appendix, and in this
Decision, is the British spelling for "mold" (USA).
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B. Claims 3-6, 8, 12-16, 18, and 19 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of AAP A, Soler, Dispenza, Van Swearingen, and further
in view of Ansari et al. (U.S. Patent Application Publication No.
2008/0088517 Al; published Apr. 17, 2008) ("Ansari").
C. Claim 7 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of AAP A,
Soler, Dispenza, Van Swearingen, and further in view of Ishimaru et
al. (U.S. Patent Application Publication No. 2005/0045369 Al;
published Mar. 3, 2005) (Ishimaru).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We have reviewed the record, including Appellants' arguments
in the Briefs, Appellants' presentation and responses to questions at the
hearing, the Examiner's obviousness rejections, and the Examiner's
responses to Appellants' arguments. In our analysis below, we highlight and
address specific findings and arguments for emphasis.
Contested Limitation of Independent Claim 1
Appellants contest the Examiner's findings regarding the moulded
groove pattern limitation, as recited in representative independent claim 1:
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Application 14/199, 146
1. A package comprising:
an integrated circuit embedded in an electrically
non-conductive moulded material, the moulded material
including at least one moulded groove pattern on at least
one surface of the moulded material, and at least one
electrically conductive track of conductive material
disposed in the moulded groove pattern.
Claim 1 (Emphasis added regarding the contested limitation).
At the outset, we note the above contested molded groove pattern
limitation is recited in similar form having commensurate scope in
remaining independent claims 17, 20, and 21.
Claim Construction 2
As an initial matter of claim construction, we agree with and accept
Appellants' proffered broad but reasonable interpretation of the claim term
"groove pattern." Claim 1. ("For clarity, the Appellant notes that a
reasonable interpretation of the term 'groove' is, for example, 'a long,
2 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). See Spec. f 21 ("The die or chase
used for this first over-moulding process is provided with a predetermined
pattern of projecting ridges in each module location that cause a
corresponding pattern of grooves to be formed in the resulting over-mould.
This pattern may preferably be arranged to correspond to the conductor
pattern required to form a radio antenna, but it may take any shape and the
method can be adapted for other uses."). See also ,r 32 ("FIG. 7 shows one
group of semiconductor modules each provided with a groove for
subsequent filling with a conductive material.") ( emphasis added).
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Application 14/199, 146
narrow cut or indentation in a surface."') Reply Br. 3 ( citing
Dictionary.com, http://www.dictionary.com/browse/groove, last visited
March 28, 2017). Although the proffered dictionary definition for the term
"groove" is dated three years after Appellants' filing date of March 6, 2014,
we are of the view that the plain meaning of the term "groove" has not
changed in any material way during the passage of three years' time.
Moreover, we conclude Appellants' proffered claim construction is fully
consistent with the Specification. See supra, n.2.
As discussed during the March 12 hearing, each of independent
claims 1, 17, 20, and 21 is directed to an apparatus (i.e., a package, device,
or antenna). Thus, a physical structure is all that is claimed. 3 Therefore, the
method or process by which Appellants' claimed structure is actually
manufactured is immaterial to our analysis.
During the oral hearing, Appellants' representative advanced several
arguments that attempted to distinguish the claimed apparatus based upon
the process by which the apparatus (package, device, antenna) is made. 4 But
we have no product-by-process claims before us on appeal. To the extent
that Appellants might disagree, any such purported distinction is immaterial,
3 Although the features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997).
4 See e.g., Oral Hearing Transcript, page 32, lines. 10-15: Mr. Holzer ("And
I suppose that the temporal concerns that you have maybe make my
argument more difficult, but when I read the term molded groove pattern I
don't view molded groove pattern to be the-I think this is it. The molded
groove pattern to me is an indentation into which something is disposed.").
5
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Application 14/199, 146
because the patentability of a product does not depend on its method of
production. 5
We further emphasize that Appellants' independent apparatus claims
1, 17, 20, and 21 are silent regarding any recited temporal limitations, or any
recited limitations that pertain to specific dimensions, sizes, or range( s) of
dimensions, such as argued by Appellants' representative during the oral
hearing.
Appellants contest the Examiner's findings particularly regarding
Soler. Appellants urge that Figure 1 of Soler:
is not a disclosure of a conductive track in a groove of a
moulded material, but rather is a conductive material "mounted
on" a substrate. There is no disclosure anywhere in Soler-
Castany of any type of grooves on a substrate or even that the
substrate is formed from a moulded material. In rejecting claim
1, the Office relies on another part of the disclosure that is not
reflected in any of the drawings, stating that the system of
Soler-Castany can be made by a two-shot injection process on a
plastic mould. The Office then speculates that a two-shot
injection process discloses or suggests the recited "groove"
elements despite a lack of any disclosure whatsoever of a
groove pattern in Soler-Castany:
In related art, Soler discloses Figs. 1-2, 5-9, 11-23
and [O 111]: including at least one molded pattern
([O 111]) on at least one surface of the molded
5 Cf "[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.
The patentability of a product does not depend on its method of production.
If the product in the product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process." In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985) (citations omitted) (emphasis added).
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material ([O 111 ]), disclosing that the device of
fig 1 can be made by two-shot injection process, a
co-injection process, or an insert molding process
or an MID process. The two-shot process would
provide a first shot of the surface of the molded
material, then a second shot of the antenna 100 in
the track. The track/ groove pattern would be left
by the first die cavity), and at least one electrically
conductive track (100) formed from conductive
material disposed in the pre-existing molded
pattern after removal of the molded material from
the first die cavity ([O 111 ]), in the two-shot
process the molded pattern would be filled in the
second stage after removal from the first die
cavity). Non-Final Office Action, pp. 4--5
( emphasis added).
App. Br. 7-8 (citing Non-Final Act. 4--5).
Appellants further contend:
In the above-quoted passage, the office assumes without
support that disclosure of a two-shot injection process
necessarily discloses or suggests the recited "at least one
moulded groove pattern," "a groove pattern," "a moulded
groove," and "at least one moulded groove pattern." As
such, the Office is inserting its own words ("track/ groove
pattern") into a reference which is entirely silent as to such
structure.
App. Br. 8.
For essentially the same reasons argued by Appellants (App. Br. 7-8),
and based upon our review of the record, we find that to affirm the Examiner
on this record would require us to engage in some degree of speculation.
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We decline to engage in speculation. 6 We note the Soler reference is relied
upon as primary evidence in support of each Rejection A, B, and C.
Regarding the remaining dependent claims rejected under Rejections Band
C, we find the Examiner has not shown how the additionally cited secondary
references ( Ansari and/ or Ishimaru) overcome the deficiencies of at least
Soler.
Therefore, for at least the aforementioned reasons argued by
Appellants (App. Br. 7-8), we are constrained on this record to reverse the
Examiner's§ 103 (a) rejections A, B, and C, of all claims 1-23 before us on
appeal.
CONCLUSION
The Examiner erred in rejecting claims 1-23 under pre-AIA 35 U.S.C.
§ 103(a) over the cited combinations of references.
DECISION
We reverse the Examiner's rejections of claims 1-23 under pre-AIA
35 U.S.C. § 103(a).
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a NEW
GROUND OF REJECTION for Appellants' independent claims 1, 17, 20,
and 21:
6 "A rejection ... must rest on a factual basis." In re Warner, 379 F.2d
1011, 1017 (CCP A 1967). "The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ... resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis." Id.
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Application 14/199, 146
Claim 1 is rejected under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by Berman et al. (US Pat. 6,849,936 B 1; issued Feb. 1, 2005)
("Berman").
Claims 1, 17, 20, and 21 are cumulatively (or alternatively) rejected
under pre-AIA 35 U.S.C. § 103(a) as being obvious over Berman.
In the event of further prosecution before the Examiner, we leave it to
the Examiner to consider Berman, alone, or in combination with additional
references, regarding the remaining claims before us on appeal.
The detailed statements of rejection are set forth below:
New Grounds of Rejection under§ 102(b) and/or §103(a)
We reproduce Figure 1 of Berman below, depicting the structure of a
molded integrated circuit (IC) package 10: 7
7 See Berman, col. 2, 1. 65: "molded IC package." We emphasize that such
molded IC packages are formed from a non-conducting material, because a
conductive package material would function as a RF shield, rendering
antenna 20 inoperable for its intended purpose. See Berman, Figure 1.
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14
/
FIG. 1
18
/
/
Figure 1 of Berman is reproduced above, depicting antenna 20.
Figure 1 of Berman depicts the structure of a molded integrated
circuit package 10, with an integrated circuit 18 embedded in an electrically
non-conductive moulded material, the moulded material including at least
one moulded groove pattern on at least one surface of the moulded material
(see Berman col. 6, 11. 63-67: "If an antenna is placed on a substrate, the
substrate may be cut with dimensions [that] permit the substrate to fit within
the dimensions of the package lid and the substrate may be mounted to the
lid of IC package 10 using epoxy or other known adhesive.").
As discussed during the March 12 hearing, we find a non-conducting
epoxy or other similar filling material injected over an antenna wire or
antenna conducting trace having a finite vertical displacement above the flat
substrate within an IC package would inherently result in a molded "groove"
10
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or corresponding groove impression in the above-filling epoxy material, as a
result of the physical vertical and horizontal displacement of the antenna
wire or conducting trace into the above-filling epoxy or other filling
material. 8
We find this process would result in a structure ( as depicted in
Berman's Figure 1) that anticipates the claimed structure of "at least one
moulded groove pattern on at least one swface of the moulded material."
Claim 1.
We also find Berman discloses the "at least one electrically
conductive track of conductive material disposed in the moulded groove
pattern" (Claim 1 ), depicted as antenna 20 with a terminating end 24 and a
coupling end 28. See Berman, col. 6, 11. 19--29, Fig. 1.
In the alternative, we find Berman teaches the use of a damascene
process to form trenches or depressions (i.e., "grooves") in the floor of the
IC package that results in the manufacture of an anticipating structure, as
depicted in Berman's Figure 1:
8 See supra n.7; see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
("Where ... the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product."); In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) ("[W]hen the
prior art evidence reasonably allows the PTO to conclude that a claimed
feature is present in the prior art, the evidence 'compels such a conclusion if
the applicant produces no evidence or argument to rebut it."' ( quoting In re
Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990))). Therefore, the burden
shifts to Appellants to show that the structure and composition found in the
reference differs materially from the structure and composition of the
structure recited in Appellants' claim. See Best, 562 F.2d at 1255.
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Antenna 20 may be placed in interior region 22 of IC
package 10 by using a damascene process to form trenches
in the floor of IC package. Alternatively, the trenches or
depressions may be formed with a write process using an
electronic beam or a draw process using a laser.
Metal is then deposited in the trenches and excess metal may be
removed by chemical-mechanical polishing (CMP). The
deposition of conductive material in the antenna traces to form
the antenna pattern may be performed by evaporation,
sputtering, or other known deposition methods.
Berman col. 6, 11. 30-39.
For the aforementioned reasons, we find the structure of Berman, as
depicted in Figure 1 and described in column 6, anticipates at least the
structure of Appellants' apparatus claim 1 :
1. A package comprising:
an integrated circuit embedded in an electrically
non-conductive moulded material, the moulded material
including at least one moulded groove pattern on at least
one surface of the moulded material, and at least one
electrically conductive track of conductive material
disposed in the moulded groove pattern.
We emphasize that anticipation does not require an ipsissimis verb is
test. Cf In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo
N. V. v. US. Int'! Trade Comm'n, 808 F.2d 1471, 1479 n. 11 (Fed. Cir.
1986)). "An anticipatory reference ... need not duplicate word for word
what is in the claims." Standard Havens Prods. v. Gencor Indus., Inc., 953
F.2d 1360, 1369 (Fed. Cir. 1991).
We also note that anticipation is the epitome of obviousness. See In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) ("It is well settled that
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Application 14/199, 146
'anticipation is the epitome of obviousness."') ( quoting Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
Although we find the structure of Berman's Figure 1 anticipates
Appellants' claimed structure ( as recited in claim 1 ), in the event our
reviewing court would disagree, we alternatively find corresponding
substantially equivalent structural elements that teach Appellants' claim 1
structure, arranged as claimed, as found in the structure depicted in
Berman's Figure 1, such that we conclude Berman also renders obvious at
least Appellants' independent claims 1, 17, 20, and 21 under pre-AIA 35
U.S.C. § 103(a).
Consequently, we find a preponderance of the evidence supports a
legal conclusion that independent claims 1, 17, 20, and 21 would have been
rendered obvious over Berman considered alone, or Berman considered in
combination with the knowledge of an artisan (i.e., regarding the non-
conducting package). See supra n.7, regarding the use of non-conducting
material.
Section 41.50(b) provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
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Application 14/199, 146
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner; 9 or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
REVERSED
37 C.F.R. § 4I.50(b)
9 Regarding option (1 ), "Reopen prosecution," and particularly regarding the
requirement to submit an amendment and/or new evidence, please note
MPEP 1214.0l(I): "If the appellant submits an argument without either an
appropriate amendment or new evidence as to any of the claims rejected by
the Board, it will be treated as a request for rehearing under 37 C.F.R.
41.50(b )(2)." If for any reason Appellants desire to reopen prosecution
before the Examiner without submitting an amendment and/or new evidence,
a Request for Continued Examination (RCE) that complies with 37 C.F.R.
§ 114 will remove the application from the jurisdiction of the Board under
37 C.F.R. §41.35, and will reopen prosecution before the Examiner.
14