Ex Parte GreywallDownload PDFPatent Trial and Appeal BoardApr 16, 201412144191 (P.T.A.B. Apr. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/144,191 06/23/2008 Dennis S. Greywall Greywall 56 1029 46850 7590 04/17/2014 MENDELSOHN, DRUCKER, & DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 312 PHILADELPHIA, PA 19102 EXAMINER TRAN, THANH Y ART UNIT PAPER NUMBER 2829 MAIL DATE DELIVERY MODE 04/17/2014 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte DENNIS S. GREYWALL ______________ Appeal 2011-012778 Application 12/144,191 Technology Center 2800 _______________ Before CHARLES F. WARREN, CATHERINE Q. TIMM and JEFFREY T. SMITH, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicant appeals to the Board under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 14-29: under 35 U.S.C. § 102(e), claims 14-21, 23 and 25-28 over Milanovic (US 7,295,726 B1); and under 35 U.S.C. § 103(a), claims 22 and 24 over Milanovic. App. Br. 2-3; Ans. 3, 8. We have jurisdiction. 35 U.S.C. § 6(b). We affirm the decision of the Primary Examiner. Claim 14, with reference to Specification Figures 5A, 5D, 6k(i) and 6K(ii), illustrates Appellant’s invention of an integrated micro- electromechanical system (MEMS) device, and is representative of the claims on appeal: Appeal 2011-012778 Application 12/144,191 2 14. An integrated device (500), comprising: a multi-layer wafer (520) having a first side and second side; a first structure (544) formed in a first layer (506) of the wafer, said first structure having a first outline pattern; and a second structure (546) formed in a second layer (514) of the wafer, said second structure having a second outline pattern, wherein: the wafer (520) has an opening (522) in the first side, which exposes the first (544) and second (546) structures, said opening (522) having a third pattern, wherein the third pattern (522) substantially encloses the first (544) and second (546) outline patterns; the second layer (514) has a greater offset distance from the first side than the first layer (506); the second outline pattern (546) substantially encloses the first outline pattern (544). App. Br. 7 (Claims App’x) (numerals and emphasis supplied). Spec. 7:10 to 11:2. See Supp. App. Br. 2 Appellant argues the first ground of rejection based on claim 14, and relies on the same arguments with respect to the other ground. App. Br. 3, 6. Thus, we decide this appeal based on claim 14. 37 C.F.R. § 41.37(c)(1)(vii). OPINION We are of the opinion Appellant’s arguments do not establish that the evidence in the totality of the record weighs in favor of the non-anticipation of the claimed integrated device encompassed by claims 14. In this respect, we are in agreement with the Examiner’s analysis of the evidence in Milanovic, the findings of fact and the response to Appellant’s arguments stated in the Answer, to which we add the following for emphasis. Ans. 3-4, 9-14; App. Br. 4-6; Reply Br. 2. Appeal 2011-012778 Application 12/144,191 3 We agree with the Examiner that the limitation “the second outline pattern substantially encloses the first outline pattern” in claim 14 (emphasis supplied), argued by Appellant, does not require that the “second outline pattern” completely “encloses the first pattern” as Appellant contends. Ans. 10-13; App. Br. 3-4; Reply Br. 2. Indeed, as the Examiner points out, the term “substantially” coupled with the term “encloses” plainly “means: ‘not completely enclosed.”’ Ans. 11. See, e.g., York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996) (“In this case, the patent discloses no novel use of claim words. Ordinarily, therefore, ‘substantially’ means ‘considerable in . . . extent,’ American Heritage Dictionary Second College Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is specified,’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed. 1983).”). We find the Examiner’s interpretation of “substantially encloses” is supported by Specification Figures 5A and 6K(i) wherein the outline pattern of first (544) and second (546) combdrive structures are shown as interdigitated. Cf. App. Br. 5 (Milanovic’s “comb- drive structures 817 and 819 are interdigitated, e.g., as evident from Milanovic’s Fig. 2A”). On this record, we further agree with the Examiner’s finding that Milanovic inherently describes to one skilled in the art that the outline pattern of second combdrive structure 817 “substantially encloses” the outline pattern of first combdrive structure 819 as illustrated in Milanovic’s Figures 7(b) and 8B. Ans. 4-5, 9-11. Indeed, as Appellant admits (App. Br. 5), one skilled in the art would recognize from Milanovic’s disclosure that comb-drive structures 817 and 819 are interdigitated, which arrangement meets “the second outline pattern substantially encloses the first outline Appeal 2011-012778 Application 12/144,191 4 pattern” limitation in claim 14 (emphasis supplied). See, e.g., In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” (citation omitted)). Accordingly, we affirm the rejection of claims 14-21, 23 and 25-28 over Milanovic under 35 U.S.C. § 102(e), and thus also affirm the rejection of claims 22 and 24 over Milanovic under 35 U.S.C. § 103(a). App. Br. 6. The Primary Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cam Copy with citationCopy as parenthetical citation