Ex Parte Merz et al

Patent Trial and Appeal Board

Sep 19, 2016

12962460 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/962,460 12/07/2010
31824 7590 09/21/2016
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Matthias Merz
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.
090922-0378 1953
EXAMINER
TERRELL, EMILY C
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS MERZ, ROEL DAAMEN,
AURELIE HUMBERT, and YOURI VICTOROVITCH PONOMAREV
Appeal2015-007408
Application 12/962,460
Technology Center 2600
Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and
NORMAN H. BEAMER, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2015-007408
Application 12/962,460
STATEMENT OF THE CASE
Appellants' invention generally relates to "an integrated circuit
comprising an electrode arrangement for detecting the presence of a liquid."
Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. An integrated circuit comprising:
an electrode arrangement configured to detect presence of
a liquid, said electrode arrangement comprising a first electrode
and a second electrode, wherein, prior to exposure of the
electrode arrangement to said liquid, a surface of at least one of
the first electrode and second electrode is at least partially
covered by a compound that is soluble in the liquid, wherein the
electrical properties of the electrode arrangement are dependent
on the amount of the compound covering said surface; and
a substrate including a plurality of circuit elements and a
metallization stack covering said substrate for providing
interconnections between the circuit elements, wherein a
metallization layer of said stack comprises at least one of the first
electrode and the second electrode, said compound covering the
at least one electrode region of said metallization layer.
THE REJECTIONS
The Examiner rejected claims 1, 5-8, and 10-121 under 35 U.S.C.
§ 103(a) as unpatentable over Benzel et al. (US 7,193,290 B2; Mar. 20,
2007) and Bloore et al. (US 4,565,455; Jan. 21, 1986). Final Act. 3-7.2
1 We note that the Examiner does not include claim 7 within the list of
rejected claims, but the Examiner finds that the combination of Benzel and
Bloore teaches the limitations of claim 7. Final Act. 5.
2 Throughout this opinion, we also refer to ( 1) the Final Action mailed
October 2, 2014 ("Final Act."); (2) the Appeal Brief filed March 24, 2015
("App. Br."); (3) the Examiner's Answer mailed June 4, 2015 ("Ans."); and
(4) the Reply Brief filed August 4, 2015 ("Reply Br.").
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Application 12/962,460
The Examiner rejected claims 2, 3, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Benzel, Bloore, and Gokhfeld. (US 6,073,480; pub. June
13, 2000). Final Act. 7-9.
The Examiner rejected claims 4, 14, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Benzel, Bloore, and Uhlig (US 3,200,388; pub. Aug.
10, 1965). Final Act. 9-11.
The Examiner rejected claims 1, 10, 13, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Benzel and Remsburg (US 5,959,535; pub.
Sept. 28, 1999). Final Act. 11-16.
ANALYSIS
THE OBVIOUSNESS REJECTION BASED ON BENZEL AND BLOORE
Claims 1, 5--8, and 10--12
Based on the record before us, we are not persuaded the Examiner
erred in rejecting claims 1, 5-8, and 10-12 as unpatentable over Benzel and
Bloore.
Appellants contend that Benzel and Bloore combined fail to teach
"prior to exposure of the electrode arrangement to said liquid, a surface of at
least one of the first electrode and second electrode is at least partially
covered by a compound that is soluble in the liquid," as recited in claim 1.
See App. Br. 5---6; see also claim 10 (App. Br. 14--15) (reciting "covering a
surface of at least one of the first electrode and second electrode with a
compound that is soluble in the liquid"). Appellants assert that, rather than
detecting a liquid, Bloore detects a temperature range by using "a substance
that is 'molten and conducting at a temperature above the transition
temperature range.'" App. Br. 5 (citing Bloore, col. 6, 11. 35-37).
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Application 12/962,460
According to Appellants, "Bloore fails to disclose dissolving [various] salts.
Instead, ... Bloore discloses 'melting' of the salt to sense temperature.
Thus, Bloore' s teachings are not germane to solubility of the salts."
App. Br. 5; see also Reply Br 5.
The Examiner, however, points out that claim 1 does not require the
exposure or dissolving of the soluble compound in liquid, but only that the
soluble compound must cover part of an electrode. Ans. 6. Notably, claim 1
is an apparatus claim directed to an integrated circuit. While the claim 1
language "an electrode arrangement configured to detect presence of a
liquid" and "prior to exposure of the electrode arrangement to said liquid"
may require the apparatus to be capable of detecting the liquid and that the
intended use or purpose of the device is to be exposed to liquid, the claim
limitations do not require actual exposure to liquid. See also claim 10 (App.
Br. 14--15) (reciting a method of manufacturing an integrated circuit lacking
any step of exposing the integrated circuit to liquid). 3
As the Examiner explains, Bloore teaches dissolving a compound to
detect a particular condition, e.g. transition into a temperature range. Ans. 6.
The Examiner finds, and Appellants do not dispute, that the salts or salt
mixtures disclosed in Bloore are well known as soluble in aqueous solutions.
Ans. 6. As such, we agree with the Examiner that Bloore discloses the
recited "compound that is soluble in the liquid."
Appellants also argue that "[ o ]ne of ordinary skill in the art would not
have been motivated by Bloore to modify Benzel as suggested by the
Examiner." App. Br. 5. Namely, "Appellant[s] respectfully submit[] that
3 We also note that Benzel teaches that, in at least one embodiment, the
sensor may be "for a liquid medium." Benzel, col. 1, 11. 40-43.
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Application 12/962,460
Bloore's teachings are inapplicable to Benzel because Bloore's teaching are
directed to melting rather than solubility." App. Br. 6; see also Reply Br. 3-
4.
The Examiner reasons that a skilled artisan would modify Benzel in
view of Bloore
in order to provide a "sensor which is operative to cut off or
reduce the heating effect of a heat producing device when the
sensor detects a temperature at or above a predetermined
temperature, and which may be operative to restore the heating
effect of the heat producing device when the sensor detects a
temperature below the predetermined temperature (Column 1
lines 7-13)."
Final Act. 4. In other words, it would have been readily apparent to a skilled
artisan to modify Benzel to include a soluble compound, as taught by
Bloore, to provide the ability to additionally detect a temperature at or above
a predetermined temperature. In short, the Examiner's proposed heat
detection enhancement predictably uses prior art elements according to their
established functions-an obvious improvement. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Moreover, Bloore more generally teaches detecting a condition by
dissolving salts or salt mixtures, which were also well known to be soluble
in liquid. See, e.g., Bloore, col. 6, 11. 41--48; col. 7, 11. 7-20. Benzel
describes the desire to detect a liquid medium. Benzel, col. 1, 11. 40--44. It
would have been obvious at the time of the invention, then, to modify
Benzel to detect a condition, i.e. the presence of liquid, through using
dissolving salts or salt mixtures, as taught by Bloore. Such a combination
merely uses a known technique, detection through use of soluble
compounds, to improve a similar device, liquid detection sensor, in the same
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Application 12/962,460
way and, thus, would be obvious to a skilled artisan at the time of the
invention. See Benzel, col. 1, 11. 40-44 (noting that if a technique has been
used to improve one device, and an ordinarily skilled artisan would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill);
see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
Finally, Appellants assert that Benzel teaches away from the
combination with Bloore (Reply Br. 3) and contend that Benzel fails to teach
a metallization stack as claimed. Reply Br. 5---6. This argument, however,
was raised for the first time in the Reply Brief and is, therefore, waived as
untimely. Compare Reply Br. 3, 5---6 with App. Br. 4---6. See also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.").
Accordingly, for the reasons discussed above and by the Examiner,
we sustain the rejection of claim 1, as well as claims 5-8 and 10-12.
THE OBVIOUSNESS REJECTION BASED ON BENZEL, BLOORE, AND ADDITIONAL
CITED PRIOR ART
Claims 2-4, 9, 14, and 16
Appellants do not present any separate arguments of patentability for
claims 2--4, 9, 14, and 16, but rather rely on the arguments presented for
claims 1 and 10. See App. Br. 8-9. For the reasons discussed above, we
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Application 12/962,460
find these arguments unpersuasive. Accordingly, we sustain the rejection of
claims 2--4, 9, 14, and 16.
THE OBVIOUSNESS REJECTION BENZEL AND REMSBURG
Claims 1, 10, 13, and 15
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1, 10, 13, and 15 as unpatentable over Benzel and
Remsburg. Namely, we agree with Appellants that the combination of
Benzel and Remsburg fails to teach or suggest a surface of at least one of the
first electrode and second electrode is at least partially covered by a
compound that is soluble in the liquid. See Reply Br. 6-7.
Remsburg is directed to a device with an electrical wetness sensor to
warn of incontinence. Remsburg, Abstract. Specifically, Remsburg's
device includes an anode, a cathode, and a dielectric line between them
made of absorbent and hydrophilic material, such as cotton, for retaining
urine. Remsburg, col. 6, 11. 59-62; col. 7, 11. 3---6. The absorbent layer
absorbs the urine, an electrolyte, creating an electrical connection between
the anode and cathode to produce a galvanic reaction. Remsburg, col. 7,
11. 4---6.
The Examiner does not rely on Remsburg's absorbent dielectric line,
but instead finds that Remsburg's anode is a compound that is soluble in
liquid. See Ans. 8-9. While we recognize that Remsburg's anode does
corrode in the urine electrolyte, this reaction occurs based on the galvanic
reaction. As Appellants explain, "very specific electrochemical conditions
with respect to the anode, the cathode and the electrolyte must be given in
order to achieve galvanic corrosion, as pointed out by Remsburg from
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column 10, line 21 to column 11line11." Reply Br. 6. As such, we agree
with Appellants that a skilled artisan would not understand Remsburg's
anode, which according to Remsburg preferably includes a composition of
magnesium, aluminum, zinc, calcium, silicon, iron, and other impurities
(Remsburg, col. 5, 11. 58---64), to be compound that is soluble in liquid.
According! y, we do not sustain the rejection of claims 1, 10, 13, and
15 as unpatentable over Benzel and Remsburg.
CONCLUSION
We affirm the Examiner's decision to reject claims 1-12, 14, and 16
as unpatentable under 35 U.S.C. § 103 based on Benzel and Bloore alone
and with additionally cited prior art, but reverse the Examiner decision to
reject claims 1, 10, 13, and 15 as unpatentable under 35 U.S.C. § 103 based
on Benzel and Remsburg.
DECISION
The decision rejecting claims 1-12, 14, and 16 is affirmed, but the
decision rejecting claims 13 and 15 is reversed.
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).
AFFIRMED-IN-PART
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