Ex Parte Muza

Patent Trial and Appeal Board

Mar 23, 2017

13110360 (P.T.A.B. Mar. 23, 2017)

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.
13/110,360 05/18/2011 John M. Muza 081276-9497-00 3329
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
O TOOLE, COLLEEN J
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. MUZA
Appeal 2016-001147
Application 13/110,360
Technology Center 2800
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
JEFFREY R. SNAY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a micro-electromechanical system (MEMS)
chip and a method for using it to generate a bias voltage for a capacitive
sensor. Claim 1 is illustrative:
1. A MEMS chip, the chip comprising:
a high-voltage (HV) NMOS switch having a source coupled
to ground;
an inductor having a first node coupled to a drain of the
HV NMOS switch, and a second node coupled to a DC power
source supplying a first DC voltage, the inductor integrally
Appeal 2016-001147
Application 13/110,360
formed as part of the MEMS chip;
a diode having an anode coupled to the first node of the
inductor and the drain of the HV NMOS switch; and
a capacitor having a first node coupled to a cathode of the
diode, and a second node coupled to the ground;
wherein the MEMS chip is a capacitive sensor biasing
circuit.
The References
Osinga US 7,081,739 B2 July 25,2006
Hebert US 7,786,837 B2 Aug. 31,2010
Li US 2011/0018616 A1 Jan. 27,2011
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1—5, 16, and 17 over Hebert in view of Li, claims 6—9 over Hebert in
view of Li and Osinga, claim 10 over Osinga in view of Hebert and
claims 11—15 over Osinga in view of Hebert and Li.
OPINION
We reverse the rejections. We need address only the independent
claims (1 and 10). Those claims require an inductor integrally formed as
part of an MEMS chip. To meet that claim requirement the Examiner relies
upon Hebert (Pinal Act. 2, 6; Ans. 3).1
Hebert discloses that “[i]t is well known to include a discrete inductor
on the printed circuit board when implementing a power converter circuit”
1 In the rejection of claim 10 over Osinga in view of Hebert, the Examiner,
when citing to Osinga regarding the claim requirement of an inductor
integrally formed as part of an MEMS chip, actually cites to the portions of
Hebert relied upon in the rejection over Hebert in view of Li (compare Final
Act. 2 and 5). To meet that claim requirement in the rejection of claim 10
the Examiner relies upon Hebert (Final Act. 6).
2
Appeal 2016-001147
Application 13/110,360
(col. 1,11. 17—19), but that “[pjower converters implemented in this way
suffer the disadvantages of having higher component cost and of requiring
more printed circuit board space” (col. 1,11. 23—23). Hebert’s invention is “a
semiconductor power device having a stacked discrete inductor structure
wherein at least one semiconductor component is stacked on, and electrically
coupled to electrodes of, a discrete inductor” (col. 1,11. 9-12). The power
device can have leads which “allow for the stacking and electrical
connection of semiconductor components upon a top surface of the discrete
inductor” (col. 2,11. 12—14; col. 5,11. 25—41; Fig. 3), or “[t]he semiconductor
components may be flip chip mounted onto the discrete inductor leads and
contacts and routing connections or wire bonded thereto” (col. 2,11.19-22;
col. 5,11. 42—50; Fig. 4). The power device “minimizes overall assembly
and packaging costs by dispensing with the need for a separate substrate or
lead-frame” (col. 2,11. 8—10).
The Examiner finds that “Hebert teaches that the inductor is integrally
formed as part of the MEMS chip (column 1 lines 31-37, lines 49-57,
column 2 lines 7-10, lines 29-35 and column 5 lines 14-20)” (Ans. 3).
“‘[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellant’s Specification
states that the invention relates to “a MEMS boost style DC/DC converter
including an integrated inductor” (| 1) and, in reference to Figure 1, states
that “[i]n some embodiments, the control and gate drive circuit 115, the
HVNMOS switch 120, the inductor 125, the diode 130, the capacitor 135,
the high-impedance MEMS biasing network 140, and the capacitive
3
Appeal 2016-001147
Application 13/110,360
sensor 145 all reside on a single MEMS chip” (| 9). Hence, the broadest
reasonable interpretation of the Appellant’s claim requirement of an
“inductor integrally formed as part of the MEMS chip” is that the inductor
resides on the MEMS chip. The Examiner does not establish that the
relied-upon portions of Hebert disclose such a structure.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a prima facie case of obviousness of the Appellants’ claimed
invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”). Accordingly, we reverse the rejections.
DECISION/ORDER
The rejection under 35 U.S.C. § 103 of claims 1—5, 16 and 17 over
Hebert in view of Li, claims 6—9 over Hebert in view of Li and Osinga,
claimlO over Osinga in view of Hebert and claims 11—15 over Osinga in
view of Hebert and Li are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
4