Ex Parte Gertenbach et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713601861 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 13/601,861 08/31/2012 Johan Lucas Gertenbach 156374D1 / 1376-1827D1 5224 111523 7590 03/02/2017 The Marbury Law Group/Qualcomm 11800 Sunrise Valley Drive, 15th Floor Reston, VA 20191 EXAMINER BAISA, JOSELITO SASIS ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): ptonoticesqc @marburylaw.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHAN LUCAS GERTENBACH and ANTHONY LAWRENCE MCFARTHING Appeal 2016-000369 Application 13/601,861 Technology Center 2800 Before PETER F. KRATZ, JULIA HEANEY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this decision, we refer to Appellants’ Specification filed August 31, 2012 (“Spec.”), the Non-Final Office Action mailed September 25, 2014 (“Non-Final Act.”), the Appeal Brief filed October 16, 2014 (“App. Br.”), the Examiner’s Answer mailed August 6, 2015 (“Ans.”), and the Reply Brief filed October 5, 2015 (“Reply Br.”). 2 Appellants identify the real party in interest as Cambridge Silicon Radio Limited. App. Br. 1. Appeal 2016-000369 Application 13/601,861 The subject matter on appeal relates to inductor structures for use in, for example, low noise amplifiers (LNA). Spec. 1,11 (Field of the Invention). Claim 1, reproduced below to emphasize the key disputed limitations, is illustrative of the claims on appeal. 1. An inductor structure comprising: a plurality of winding turns arranged in a layered structure, the layered structure comprising a substrate layer and a plurality of further layers parallel to the substrate layer; wherein a first winding turn and a second winding turn of the plurality of winding turns are located in a first layer of the plurality of further layers, said first winding turn and said second winding turn being separated by a gap, and a third winding turn of the plurality of winding turns is located in a second layer of the plurality of further layers; said second layer being adjacent to the first layer such that the third winding turn is placed directly above the gap between the first and second windings', and wherein the third winding turn is located between the first and second winding turns. App. Br. 11 (Appendix of Claims on Appeal) (emphasis added). DISCUSSION The Examiner rejected claims 4 and 15 under 35U.S.C. § 112, second paragraph as indefinite. Non-Final Act. 2—3. The Examiner finds that claims 4 and 15 contain contradicting limitations because “[t]he third winding cannot be both directly above the gap and located centrally between the first and second winding.” Id. at 3. 2 Appeal 2016-000369 Application 13/601,861 In response, Appellants direct us to Figure 4c in their application, which is reproduced below. Figure 4c, above, depicts a cross-sectional view of a transformer having two metal layers where the primary windings (marked 1) are in the first metal layer and the secondary winding (marked 2) is in a different metal layer adjacent to the first metal layer. As Appellants point out, Figure 4c shows the secondary winding, marked 2 (corresponding to the third winding turn in claim 1, which claim 4 depends from, and claim 15), is located centrally between two turns of a primary winding, marked 1 (corresponding to the first and second windings in claims 1 and 15). App. Br. 4. In addition, Figure 4c shows the secondary winding turn (2) is placed directly above the gap x between two turns of a primary winding (1). See id.', see also Spec. 15,11. 6—8. Thus, we are persuaded that based on Figure 4c and the corresponding disclosure in Appellants’ Specification, one of ordinary skill in the art would understand that the third winding in claims 4 and 15 can be located both directly above the gap and centrally between the first and second winding. Moreover, one of ordinary skill in the art would understand that the recitation that “the third winding turn is located centrally between the first and second winding turns,” in claims 4 and 15 does not require the first and second windings to 3 Appeal 2016-000369 Application 13/601,861 be in the same horizontal plane as the third winding. Accordingly, we do not sustain the rejection of claims 4 and 15 under 35 U.S.C. § 112, second paragraph. The Examiner maintains the rejection of claims 1—4 and 6—8 under pre-AIA 35 U.S.C. 102(b) as being anticipated by Saito (US 5,548,265, issued Aug. 20, 1996) (“Saito”). Non-Final Act. 4. The Examiner also maintains the rejection of claims 5 and 9—20 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Saito. Id. at 5. We will focus on representative independent claim 1 because it contains the argued limitations that also are present in remaining independent claims 9 and 15. The Examiner finds that Saito’s Figure 7, reproduced below, discloses an inductor structure as in independent claim 1. Id. at 4. FIG. 7 Figure 7, above, depicts critical parts of a thin-film transformer according to the invention described in Saito. Regarding claim 1, the Examiner finds that the inductor structure of Figure 7 includes a plurality of winding turns arranged in a layered structure, the layered structure comprising a substrate layer 106 and a plurality of 4 Appeal 2016-000369 Application 13/601,861 further layers (104, 105) parallel to the substrate layer, where a first winding turn (one of 102a) and a second winding turn (another one of 102a) of the plurality of winding turns are located in a first layer (107a) of the plurality of further layers, the first winding turn and said second winding turn being separated by a gap (S), and where a third winding turn (101a) of the plurality of winding turns is located in a second layer (107b) of the plurality of further layers. Non-Final Act. 4 (citing col. 11,11. 1—50; Figure 7). The Examiner further finds the second layer (107b) in Saito’s Figure 7 is adjacent to the first layer (107 a) such that the third winding turn (101a) is placed directly above the gap layer S between the first and second windings (two 102a turns), and the third winding turn (101a) is located between the first and second winding turns (two 102a turns). Id. Appellants’ argue that Saito does not disclose “a first winding turn and a second winding turn of the plurality of winding turns are located in a first layer of a plurality of further layers, said first winding turn and said second winding turn being separated by a gap, and a third winding turn of the plurality of winding turns is located in a second layer of the plurality of further layers; the second layer being adjacent to the first layer such that the third winding turn is placed directly above the gap between the first and second windings,” as required by claim 1 (emphasis added). App. Br. 5. Appellants argue that the arrangement recited in claim 1 is depicted in Figure 4c of their application, which is shown above. App. Br. 5. Appellants’ Specification teaches that in this arrangement, the edges of the secondary winding (marked 2 in Figure 4c, corresponding to the third winding in claim 1) and the edges of the primary windings (marked 1 in Figure 4c, corresponding to the first and second windings in claim 1) are not 5 Appeal 2016-000369 Application 13/601,861 separated by “any appreciable distance.” Spec. 15,11. 6—12 (stating that “the parallel plate capacitance discussed in relation to figures 4a and 4b is minimised since the edges corresponding to edges a and b (and similarly c and d) in figure 4a are no longer facing each other and are no longer separated by any appreciable distance.”); see also App. Br. 4 (explaining that in Figure 4c in Appellants’ application, “third winding turn 2 is placed directly above the gap x between the first winding turn 1 (left wide) and second winding turn 1 (right side) in that there is no space or gap between the top edges of turns 1 and the bottom edge of turn 2 in the vertical direction.”). According to Appellants, this disclosure in the Specification “clearly discloses that the second winding [(the third winding in claim 1)] is placed directly above the turns of the primary winding [(the first and second windings in claim 1)], without any additional material or layer being added in between.” Reply Br. 7. Appellants’ argument is persuasive of reversible error in the Examiner’s rejections. We agree with Appellants that the broadest reasonable interpretation consistent with the Specification of “the third winding turn is placed directly above the gap between the first and second windings,” as recited in claim 1 requires no additional material or layer in between the third winding and the first and second windings and thus does not encompass the arrangement depicted in Saito’s Figure 7. As shown in Saito’s Figure 7 above, wiring sections 101a (corresponding to the third winding turn in claim 1) and 102a (corresponding to the first and second winding turns in claim 1) are vertically separated from each other by the silicon oxide film 107b. Saito col. 11, 15—28 (disclosing that silicon oxide film (107b) is deposited on the surface of the secondary coil (102), with a 6 Appeal 2016-000369 Application 13/601,861 primary coil (101) in a spiral form is formed on the silicon oxide film (107b)); Figure 7. On this record, the Examiner has not explained why wiring sections 101a and 102a separated from each other by a silicon oxide layer (107b) as in Saito’s Figure 7 should be interpreted as meaning wiring section 101a is placed directly above the gap between two wiring sections 102a, without any additional material or layer being added in between. Accordingly, the Examiner has not carried the burden to establish a prima facie case of anticipation as to independent claim 1. The Examiner’s obviousness rejection of claims 5 and 9—20 rely on the same erroneous finding discussed above with respect to claim 1. See Non-Final Act. 5—8. Accordingly, the Examiner has not carried the burden to establish a prima facie case of obviousness as to independent claims 9 and 15. In view of the foregoing, we do not sustain the rejection of claims 1—4 and 6—8 under 35 U.S.C. § 102(b) over Saito or the rejection of claims 5 and 9—20 under 35 U.S.C. § 103(a) over Saito. DECISION For the above reasons, the Examiner’s rejection of claims 1—20. REVERSED 7 Copy with citationCopy as parenthetical citation