Ex Parte Graham et alDownload PDFPatent Trial and Appeal BoardAug 23, 201813969840 (P.T.A.B. Aug. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/969,840 08/19/2013 10800 7590 08/23/2018 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 FIRST NAMED INVENTOR Andrew Graham 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. 1576-0964 8722 EXAMINER MUSE, ISMAIL A ART UNIT PAPER NUMBER 2819 MAIL DATE DELIVERY MODE 08/23/2018 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW GRAHAM, ANDO FEYH, and BERNHARD GEHL Appeal2017-009616 Application 13/969, 840 1 Technology Center 2800 Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the Examiner's rejection under 35 U.S.C. § 102(b) of claims 1, 2, 4--8, 10-15, and 17, as well as the rejections under 35 U.S.C. § 103(a) of claims 9, 18, and 19. 2 We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 Appellant is the Applicant, Robert Bosch GmbH, and is stated to be the real party in interest. App. Br. 2. 2 The Examiner withdrew the rejection of claims 3 and 16 under § 102(b ), and the rejection of claim 20 under§ 103(a). Ans. 3. Appeal2017-009616 Application 13/969,840 BACKGROUND The subject matter on appeal relates to a MEMS sensor, a method of forming such a MEMS sensor, as well as system comprising a MEMS sensor. Claims 1, 10, 19. App. Br. 21, 23, 25-26. Figure 2 of the application is illustrative and is reproduced below: 100 \ 104 132 108 FIG. 2 106 Figure 2 depicts a MEMS sensor 100 which includes a device layer 102 and cap layer 106 separated by oxide layer 104 and cavity 116. Spec. ,r,r 24--25. Layer 102 contains a fixed inner electrode 108 and a fixed outer electrode 112, while cap layer 106 contains movable inner electrode 128 and movable outer electrode 132. Id. ,r,r 25-26. Independent claim 1 is representative, is copied from the Claims Appendix of the Appeal Brief, and appears below (with key limitations italicized, and bracketed labels to elements shown in Figure 2 of the application added): 1. A MEMS sensor comprising: a substrate layer [102]; a first fixed electrode [ 108] defined in the substrate layer; a second fixed electrode [ 112]; 2 Appeal2017-009616 Application 13/969,840 a cavity [ 116] defined above the first fixed electrode; a membrane [140] extending over the cavity [116] and supported by the substrate layer [102]; a first movable electrode [128] defined in the membrane and located substantially directly above the first fixed electrode [ 108]; and a second movable electrode [132] defined at least partially within the membrane and located at least partially directly above the cavity [116] and the second fixed electrode [112], wherein no portion of the second movable electrode [132] is located directly above the first fixed electrode [ 108]. App. Br. 21. REFERENCES The Examiner relies on the following references as evidence of unpatentability: Suzuki Hirota US 2002/0178828 Al US 2008/0211302 Al REJECTIONS ON APPEAL December 5, 2002 September 4, 2008 The Examiner maintains the following rejections on appeal: I. Claims 1, 2, 4--8, 10-15, and 17 under 35 U.S.C. § I02(b) as anticipated by Suzuki; II. Claims 9 and 18 under 35 U.S.C. § 103(a) as unpatentable over Suzuki; and III. Claim 19 under 35 U.S.C. § I03(a) as unpatentable over Suzuki in view of Hirota. OPINION We reverse each of the Rejections I-III. In rejecting independent claim 1, the Examiner finds that Suzuki anticipates because Suzuki, in Figure 4, discloses a MEMS sensor meeting 3 Appeal2017-009616 Application 13/969,840 the claimed limitations. Final Act. 2-3. Suzuki's Figure 4 is illustrated below: \ \ ) ' I I 132b , 152b 142b I \ ! 122b ---188 - ~-180 152b \ 1J2b 142b Suzuki's Figure 4 "is a cross-sectional view along a [line] 4-4 in Fig. 2." Suzuki ,r 20. For context, Suzuki's Figure 2 is illustrated below: 126a 110 180 \ l4 )5 \~ r---1~~~-4r--~-I~~~~~~~/ 144a 124a ~ 154a--~--- 194 -- 156b 154b -,\ 126~~ 3 r r. I I 11 146b ~---- --[J)~L / ,, t I ' I 144b / 124b l 194 192 -194 -152a 4 ...-- 142a --132a _ ___.---136b ~~ 3 ",· 134b Appeal2017-009616 Application 13/969,840 Suzuki's Figure 2 depicts "a plan view of [a] capacitive pressure sensor," having three cross-sectional viewpoint lines: line 3-3 running in a horizontal direction, line 4--4 in a vertical direction, and line 5-5 running diagonally. Suzuki ,r,r 18-21. Suzuki's Figure 3 - also relevant to this appeal- is depicted below: 124b 122b 152b 132b ) 142b 134b Suzuki's Figure 3 is a cross-sectional view along horizontal line 3-3 of Suzuki's Figure 2. Suzuki ,r 19. Thus, Figures 2, 3 and 4 of Suzuki are all different views of the same sensor - Figure 2 representing a "plan view" and Figures 3 and 4 representing distinct "cross-sectional" views along different axes. Relevant to the disposition of this appeal, the Examiner maps the claimed "first fixed electrode" to Suzuki's element 122b and the claimed "second movable electrode" to Suzuki's element 152a. Relying on Suzuki's Figure 4, the Examiner finds that "no portion [ ofJ the second movable electrode (152a) is located directly above the first fixed electrode (122b- See Fig. 4)." Final Act. 3. The Examiner alternatively relies on Suzuki's Figure 3 and notes that, because there is a cavity 182 which separates elements 152a and 122b, element 152a is not "directly above" element 122b. Final Act. 11. The Examiner reasons that, because several dictionary 5 Appeal2017-009616 Application 13/969,840 definitions of the term "directly" require "immediate physical contact," "without intervening space," and "without anything coming in between," Suzuki's element 152a is not "directly above" element 122b. Ans. 4. Appellant contends that the rejection is in error because Suzuki's sensor fails to meet the claimed limitation requiring "no portion of the second movable electrode is located directly above the first fixed electrode." App. Br. 6-13. Specifically, Appellant contends that Suzuki's Figure 3 evinces that at least a portion of Suzuki's element 152a is located directly above element 122b. Id. at 6-7. Appellant contends that the Examiner's reliance on certain dictionary definitions of "directly" runs contrary to the use of the phrase "directly above" in the Specification, and would exclude a preferred embodiment. App. Br. 10-13; Reply Br. 2-7. We are persuaded that Appellant has identified reversible error. The Examiner's position that Suzuki's Figure 4 anticipates the sensor recited in claim 1 falls short because Figure 4 is but one perspective view of the sensor set forth in Suzuki's Figure 2. As aptly pointed out by Appellant (App. Br. 6-7), Figure 3 - a different cross-sectional view of the Figure 2 sensor- unequivocally shows that at least a portion of element 152a (i.e., "the second movable electrode") is indeed located "directly above" element 122b (i.e., "the first fixed electrode"). We are furthermore not persuaded by the Examiner's alternative interpretation of the phrase "directly above." Final Act. 11; Ans. 4. During examination, "the PTO must give claims their broadest reasonable construction consistent with the specification." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added). Here, as Appellant correctly notes (App. Br. 10-13; Reply Br. 2-7), the Examiner's reliance on certain dictionary definitions of "directly" is 6 Appeal2017-009616 Application 13/969,840 inconsistent with the use of this term in the Specification. While the use of extrinsic dictionary definitions are appropriate in some circumstances, such extrinsic evidence should not be relied upon to the exclusion of intrinsic evidence, e.g., the Specification itself. Rather, "[ s ]uch intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). To be sure, "the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. In fact, it has been held that "[i]n most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence." Vitronics, 90 F.3d at 1583. In this case, the Examiner improperly supplanted Appellant's intrinsic use of the phrase "directly above" throughout the Specification by instead relying on various extrinsic dictionary definitions of the term "directly" in order to construe the disputed phrase. Final Act. 11; Ans. 4. In so doing, the Examiner adopted a claim construction that runs afoul of Appellant's use of "directly above," and excludes a preferred embodiment from the scope of the claims. As Appellant correctly points out (App. Br. 11; Reply Br. 4, 6), "[s]uch an interpretation is rarely, if ever, correct." Vitronics, 90 F.3d at 1583. Because each of the rejections before us relies on an erroneous finding that Suzuki discloses the recited relationship between the second movable and first fixed electrodes, and because this relationship appears in each of the independent claims 1, 10, and 19, we reverse the rejections. 7 Appeal2017-009616 Application 13/969,840 DECISION Rejections I-III are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation