Ex Parte Greywall

Patent Trials and Appeals Board

Apr 16, 2014

12144191 - (D) (P.T.A.B. Apr. 16, 2014)

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

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