Ex Parte Minervini et al

Patent Trial and Appeal Board

Feb 17, 2016

95001850 (P.T.A.B. Feb. 17, 2016)

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.
95/001,850 12/23/2011 Anthony D. Minervini 552689 6471
30954 7590 02/18/2016
LATHROP & GAGE LLP
2345 GRAND Boulevard
SUITE 2400
KANSAS CITY, MO 64108
EXAMINER
ANDUJAR, LEONARDO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/18/2016 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
____________

ANALOG DEVICES, INC.
Requester

v.

KNOWLES ELECTRONICS LLC
Patent Owner and Appellant
____________

Appeal 2015-004989
Reexamination Control 95/001,850
Technology Center 3900
Patent 8,018,049 B2
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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On September 29, 2015, Patent Owner, Knowles Electronics LLC
(“Patent Owner”) requested rehearing under 37 C.F.R. § 41.79 (a) of the
Decision on Appeal entered August 31, 2015 (“Decision” or “Dec.”), which
affirmed the Examiner’s final rejection of claims 1, 2, 5, 6, 9, 11, 12, 15, 16,
19, 21–23, 25 and 26.
Third-Party Requester Analog Devices, Inc. did not file any
comments under 37 C.P.R. § 41.79 (c) in opposition to Patent Owner’s
request for rehearing.
The Request for Rehearing is denied.

ANALYSIS
Claim Construction
First, Patent Owner argues that “[t]he Decision rejects . . . Knowles’s
proposed construction based on a determination that Minervini ’049 lacks
‘express language’ limiting the term ‘package’ in this manner.” (Req. for
Reh’g 2.) However, Patent Owner argues, “the law does not require
‘express language’ in a specification to support requirements that are well-
understood by a person skilled in the art.” (Id.)
However, the Federal Circuit has articulated that “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.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). The
’049 patent contains thirty-one figures, illustrating multiple embodiments, in
which only two figures illustrate a package connected to a printed circuit
board. Furthermore, the ’049 patent does not expressly define a “package”
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as requiring a second level interconnect between the package and an external
printed circuit board. Accordingly, the intrinsic evidence of record does not
persuasively establish that the claim term “package” must be construed as
requiring “a second level interconnect between the package and an external
printed circuit board,” as advocated by Patent Owner.
Second, Patent Owner argues “the Board overlooks Knowles’s
argument that the term ‘package’ is a well-known term of art in the
microelectronics industry.” (Req. for Reh’g 2.) In particular, Patent Owner
argues that “[t]he Board’s overly broad interpretation is simply not
consistent with how one of ordinary skill would understand the term” and
“Knowles submitted extensive evidence about the meaning of the term
‘package,’ and in particular how one of ordinary skill would understand the
‘second-level connection’ requirement for a ‘package.’” (Id. at 3.)
However, Patent Owner has not provided any persuasive extrinsic
evidence that requires “a second level interconnect between the package and
an external printed circuit board.” In particular, Patent Owner has not
provided a single technical reference to support the construction that a
“package” requires “a second level interconnect between the package and an
external printed circuit board.” At best, extrinsic evidence submitted by
Patent Owner illustrates that a secondary connection to a printed circuit
board is a common practice, rather than an absolute requirement.1
Third, Patent Owner argues “[t]he Board overlooked virtually all of
this [extrinsic] evidence, and instead focused on an alleged flaw in one of

1 In a related proceeding, the U.S. International Trade Commission reached
a similar determination with respect to the claim construction of “package.”
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the references: Tummala Fundamentals.” (Req. for Reh’g 4.) In particular,
Patent Owner argues “[w]hen read contextually, it is clear that the phrase [in
general] was used in Tummala Fundamentals to describe two overarching
categories or families of packages, while allowing for subcategories to exist
within each of those ‘general’ families.” (Id. at 5.)
Although Patent Owner has offered an alternative interpretation of the
modifier “in general” from the sentence “[i]n general, IC packages can be
classified into two categories: 1) through-hole, and 2) surface mount” from a
technical reference (FUNDAMENTALS OF MICROSYSTEMS PACKAGING 67 (Rao

In the Matter of Certain Silicon Microphone Packages and Products
Containing the Same, No. 337-TA-695 (USITC Nov. 22, 2010). In
particular, the Administrative Law Judge concluded that:
Based on the intrinsic and extrinsic evidence cited supra, I find
that “package” means “a single, self-contained unit which fully
encloses a device, and which provides: (1) protection for the
device from the external environment, (2) an electrical
connection between the device and the package, and (3) an
electrical connection between the package and another circuit
outside of the package.”
(Slip. Op. 25.)
Knowles argues that the second level connection can only be
made in one of two ways: (1) “by inserting the leads of the first
level package into plated holes in the board and soldering them
into place” or (2) “by placing the first level package onto pads,
which have been covered in solder paste, on the top surface of
the printed circuit board.” I find that the evidence of record
demonstrates that these are two ways of forming the second level
connection, but they are not the only two ways, as Knowles
asserts.
(Id. at 26 (citations omitted.))
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R. Tummala ed., McGraw-Hill 2001)), Patent Owner has not shown that our
interpretation of the phrase “in general” as meaning, “in most instances, the
second-level connections can either be a through-hole mount or a surface
mount, but permits for possible exceptions” (Dec. 8) is unreasonable.
Fourth, Patent Owner argues “the Decision does not identify a single
example of package mounting other than surface mounting or through-hole
mounting” and “Requester’s expert, Dr. Michael Pecht, could not
substantiate any other example of package mounting.” (Req. for Reh’g 5.)
However, the testimony of a single expert (e.g., Dr. Michael Pecht’s
alleged inability to “substantiate any other example of package mounting”)
does not persuasively rebut the express statement in the extrinsic evidence
that “[i]n general, IC packages can be classified into two categories: 1)
through-hole, and 2) surface mount” and accordingly, not all IC packages
are required, without any exception, to have a second-level connections that
is either a through-hole mount or a surface mount. Furthermore, because
Patent Owner is advocating a claim construction that “package” should be
narrowly interpreted to require a second level interconnect between the
package and an external printed circuit board, it is Patent Owner’s burden to
provide such evidence, rather than the Board’s burden to prove a negative
(e.g., “the Decision does not identify a single example of package mounting
other than surface mounting or through-hole mounting”).
Fifth, Patent Owner argues “although the Decision does not actually
construe the term, it implicitly attempts to apply an interpretation of
‘package’ that it views as encompassing Halteren’s ‘flexible substrate
transducer assembly’” and “Halteren’s failure to provide a way to
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mechanically attach the device to a circuit board further results in a
corresponding failure to provide protection from mechanical and
environmental stresses that is necessary for packages.” (Req. for Reh’g 6.)
Our Decision states the following:
In particular, one relevant definition of “package” which
refers to a “second level interconnect” is as follows:
We can think of the package as a structure
consisting of a semiconductor device, a first-level
interconnect system, a wiring structure, a second-
level interconnection platform, and an enclosure
that protects the system and provides the
mechanical platform for the sublevel.
(Dec. 7 (citing Ken Gilleo, ELECTRONIC PACKAGE & INTERCONNECTION
HANDBOOK 1.22 (Charles A. Harper ed., McGraw-Hill 3rd ed. 2000).))
Accordingly, based upon this definition, we construed the claim term
“package” as broad enough to encompass the transducer assembly 10 of
Haltern. (Dec. 10.)
Sixth, Patent Owner argues “the Board overlooks a pertinent Federal
Circuit decision [MEMS Technology Berhad v. Int’l Trade Comm’n, 447
Fed. Appx. 142, 157–59 (Fed. Cir. 2011)] about the meaning of the term
‘package’ in related patent claims” (Req. for Reh’g 6) and “the Federal
Circuit affirmed the International Trade Commission’s determination that
Mr. Minervini’s ‘package’ must ‘be capable of two levels of electrical
connection—one from the device to the package, and one from the package
to an external circuit or other system’” (id. at 7).
However, this Federal Circuit decision is not germane to the current
appeal because the court did not adopted a claim construction that requires
“a second level interconnect between the package and an external printed
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circuit board.” In fact, our Decision adopts a claim construction nearly
identical to the construction adopted by the Federal Circuit in MEMS
Technology Berhad. (Dec. 7 (citing Ken Gilleo, ELECTRONIC PACKAGE &
INTERCONNECTION HANDBOOK 1.22 (Charles A. Harper ed., McGraw-Hill
3rd ed. 2000).))
Last, Patent Owner argues “[t]he Federal Circuit also held that the
essence of Mr. Minervini’s invention was ‘the containment of the
components in a “package,”’ and therefore held that the ‘components listed
in the claim body come together to form a mountable package, —
distinguishing asserted art [Baumhauer] on that basis.” (Req. for Reh’g 7
(citations omitted).)
However, the Federal Circuit held that “Baumhauer discloses a
device, not a package” because Baumhauer lacks protection from the
environment, rather than adopting a claim construction of “package”
requiring a second level interconnect between the package and an external
printed circuit board. MEMS Technology Berhad, 447 Fed. Appx. at 157–58
(“As the Commission found, Baumhauer Figure 6 discloses a microphone
attached directly to a circuit board, not a unit with components that come
together to form a mountable package.”). Furthermore, our Decision did not
reach the rejection of claims 1, 9, 11, 12, 15, 16, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Baumhauer. (Dec. 16.)

Combination of Une and Halteren
First, Patent Owner argues that “[t]he Decision does not defend the
Examiner’s cursory obviousness assertion” but “[i]nstead, the Decision on
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Appeal articulates a new rationale for obviousness based on the Board’s new
finding that the microphones of Une and Halteren ‘apply similar modes of
operation by converting measured vibration into electrical signals.’” (Req.
for Reh’g 9.)
However, it is not a new ground of rejection for the Board to respond
to Patent Owner’s arguments using different language, or restating the
reasoning of the rejection in a different way, so long as the evidence relied
upon is the same and the “basic thrust of the rejection” is the same. See In
re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). In particular, citing to a
different portion of an applied reference, which “goes no farther than, and
merely elaborates upon, what is taught by” the previously-cited portion of
that reference relied upon by the Examiner, does not constitute a new ground
of rejection. See In re DBC, 545 F.3d 1373, 1382 n.5 (Fed. Cir. 2008).
In the Right of Appeal Notice, which incorporates the original
Request for Inter Partes Reexamination by reference, the Examiner states:
Regarding claim 21, Une (e.g. figs. 5 and 8) teaches a
method of manufacturing a microphone package comprising: . . .
attaching a plurality condenser microphone units 4/8 to the
plurality of package substrates . . . .
(RAN 34 (second emphasis added).)
Une does not disclose that the condenser microphone is a
silicon condenser microphone. However, Halteren (fig. 2A)
shows a package including a silicon condenser microphone 61
(col. 5/ll. 10-13). It would have been obvious to one of ordinary
skills in the art at the time of the invention was made to use the
silicon condenser microphone of Halteren in Une’s invention
because the substitution of one known element for another would
have yield predictable results.
(RAN 34–35 (emphasis added).)
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Furthermore, the original Request for Inter Partes Reexamination
states:
Fig. 8 further shows a package with a single condenser
microphone. Accordingly, Une teaches attaching a single
microphone to each of the substrates in the panel shown in Fig. 5.
Une, however, does not expressly teach that each microphone is
in the form of a silicon die.
Halteren teaches a condenser microphone in the form of a
silicon die. Specifically, Halteren column 5, lines 37-39 describe
the condenser microphone by stating that it requires a flexible
membrane and a back plate—requirements for any condenser
(i.e., capacitive) microphone.
(P. 33 (first emphases added).)
Accordingly, Patent Owner’s arguments are inaccurate because both
the Right of Appeal Notice and the Request for Inter Partes Reexamination
presented evidence that both the microphone of Une and the condenser
microphone of Halteren are capacitive microphones. In other words, as
stated in our Decision, “because silicon microphone 61 of Halteren sends
output signals to ASIC 62 and solid state device 8 of Une converts
capacitance measured from electret capacitor microphone, both Halteren and
Une apply similar modes of operation by converting measured vibration into
electrical signals.” (Dec. 13.)
Second, Patent Owner argues “[t]he Board’s new finding further
overlooks that electret microphones rely on a charged backplate whereas
MEMS microphones rely on biasing voltage and therefore require additional
circuitry within the package—i.e., a different mode of operation.” (Req. for
Reh’g 9–10.)
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However, Patent Owner improperly presents new arguments not
raised in the Briefs before the Board. “Arguments not raised, and Evidence
not previously relied upon, pursuant to §§41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1). Patent Owner
has not identified a reason for meeting one of these exceptions.
Furthermore, other than providing a conclusory statement, Patent Owner has
not presented any evidence to support the argument that such combination
would not have predictable results. Arguments of counsel cannot take the
place of factually supported objective evidence. See, e.g., In re Huang, 100
F.3d 135, 139–40 (Fed. Cir. 1996).
Third, Patent Owner argues that “the Board overlooked the objective
evidence of unique difficulties associated with MEMS packages and
especially packages for fragile MEMS microphones” (Req. for Reh’g 10)
and “[t]he Decision overlooks all of this objective evidence, and therefore
fails to establish that a person skilled in the art would expect predictable
results from substituting the fragile MEMS silicon microphone die of
Halteren for the non-MEMS microphone components of Une (id. at 11).
Similarly, Patent Owner argues that “Halteren’s MEMS microphone would
have predictable results [sic] because it overlooks the numerous additional
variables identified by the extrinsic evidence as key to the performance of
MEMS microphone packages, including geometric properties, heat
dissipation, interference reduction, and thermal expandability.” (Id. at 9.)
However, as discussed on our Decision (Dec. 13), such evidence
submitted by Patent Owner was used to support an argument of bodily
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incorporation and accordingly, is insufficient to rebut the Examiner’s prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Fourth, Patent Owner argues “[t]he Decision also errs in discounting
the testimony from Dr. Peter Loeppert that a MEMS transducer substituted
into the Une apparatus would be unlikely to function properly” and “[t]he
Board overlooks that Dr. Loeppert’s sworn statements are the only evidence
of record from an expert with experience in microphone design,
manufacturing, and operation, and are corroborated by several disclosures
Loeppert cites that were contemporaneous with the time of the invention as
to why a MEMS die would be inoperable in Une,” pointing to paragraphs 2–
5 of the Loeppert Declaration. (Req. for Reh’g 11 (citations omitted).)
However, as discussed in our Decision (Dec. 14), Dr. Loeppert’s
testimony, particularly paragraph 6, was based upon the erroneous legal
principle that Figure 8 of Une is drawn to scale, when Une is silent with
respect to scale. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well established that patent drawings
do not define the precise proportions of the elements and may not be relied
on to show particular sizes if the specification is completely silent on the
issue.”).
Last, Patent Owner argues that “the Board offers no record evidence
or reasoning that substituting a MEMS microphone die for a
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multicomponent condenser microphone would be feasible, its obviousness
finding is erroneous” with a citation to Ex Parte Kang, Appeal No. 2011-
004083 (PTAB Aug. 1, 2013) (non-precedential). (Req. for Reh’g 11.)
Contrary to Patent Owner’s arguments, our Decision has provided an
articulated reasoning with some rational underpinning by stating that
“because silicon microphone 61 of Halteren sends output signals to ASIC 62
and solid state device 8 of Une converts capacitance measured from electret
capacitor microphone, both Halteren and Une apply similar modes of
operation by converting measured vibration into electrical signals.”
(Dec. 13.) Furthermore, Kang has not been designated as precedential, and
therefore is not binding on this panel.

CONCLUSION
The Request for Rehearing has been considered and denied.

REHEARING DENIED

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PATENT OWNER:

LATHROP & GAGE LLP
2345 Grand Boulevard
Suite 2400
Kansas City, MO 64108

THIRD PARTY REQUESTER:

SUNSTEIN KANN MURPHY & TIMBERS LLP
125 Summer Street
Boston, MA 02110-1618