Ex Parte Niblock

Patent Trial and Appeal Board

Mar 30, 2017

11051920 (P.T.A.B. Mar. 30, 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.
11/051,920 02/03/2005 Trevor Graham Edward Niblock 357267-990021 5162
26379 7590
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
PatentDocketingU S -Palo Alto @ dlapiper. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TREVOR GRAHAM EDWARD NIBLOCK
Appeal 2016-003933
Application 11/051,920
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 50-83. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 We refer to the Specification (“Spec.”) filed February 3, 2005; Final Office
Action (“Final Act.”) dated July 16, 2014; Appellant’s Appeal Brief (“App.
Br.”) dated July 28, 2015; Examiner’s Answer (“Ans.”) dated January 12,
2016; and Appellant’s Reply Brief (“Reply Br.”) dated March 14, 2016.
2 Appellant identifies Analatom, Inc. as the real party in interest. App. Br. 3.
Appeal 2016-003933
Application 11/051,920
BACKGROUND
The subject matter on appeal relates to a micro-fabricated sensor.
Claims 50 and 66 are reproduced from the Claims Appendix of the Appeal
Brief as follows:
50. A micro-fabricated sensor device useful for monitoring
deterioration of a structure, the device comprising:
a first electrode having a first finger;
a second electrode having a second finger, wherein the
second finger is separated from the first finger by about 1 mm
or less; and
mounting material comprising polyimide and
surrounding and bonded to the electrodes, and providing
corrosive passivation thereto, wherein the mounting material
covers exposed sidewalls of the electrodes to protect the
sidewalls, wherein:
corrosion resistance of the electrodes, established using
linear polarization corrosion measurement techniques with
regard to corrosion associated with top surfaces of the
electrodes, is linear over an-extended range of corrosion
conditions; and
as a result of the encapsulated sidewalls and the linear
corrosion resistance of the electrodes resulting therefrom, the
device has a corrosion rate that provides an accurate measure of
an amount of corrosion to which the structure is exposed;
wherein a current between the first electrode and the
second electrode indicates a degree of deterioration of the first
and second electrodes;
wherein the first electrode has a thickness less than about
75 pm and the second electrode has a thickness less than about
75 pm.
66. A system for monitoring corrosion in a structure, the
system comprising:
a plurality of LPR sensors, wherein each of the LPR
sensors includes a working electrode, a reference electrode, and
mounting material comprising polyimide and surrounding the
electrodes and bonded to the electrodes, and providing
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Application 11/051,920
corrosive passivation thereto, wherein the mounting material
covers exposed sidewalls of the electrodes to protect the
sidewalls, wherein:
corrosion resistance of the electrodes, established using
linear polarization corrosion measurement techniques with
regard to corrosion associated with top surfaces of the
electrodes, is linear over an extended range of corrosion
conditions; and
as a result of the encapsulated sidewalls and the linear
corrosion resistance of the electrodes resulting therefrom, the
device has a corrosion rate that provides an accurate measure of
an amount of corrosion to which the structure is exposed;
an electronic controller programmed to read
measurements from each of the LPR sensors;
a multiplexing network that enables the controller to
address each of the LPR sensors;
electronic components that match the LPR sensors to the
controller;
a flex circuit carrier having passivated metal
interconnects and bond pads onto which the LPR sensors, the
electronic components, the electronic controller, and the
multiplexing network are attached,
wherein the working electrode has a thickness less than
about 75 pm and the reference electrode has a thickness less
than about 75 pm.
REJECTIONS3
I. Claims 50-54, 61—63, 65, 69-72, 74—80, 82, and 83 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Agarwala4 in view of
Marchal.5
3 Final Act. 2—30.
4 US 5,338,432, issued August 16, 1994 (“Agarwala”).
5 US 2003/0085136 Al, published May 8, 2003 (“Marchal”).
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Application 11/051,920
II. Claims 55—59 and 73 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Agarwala in view of Marchal and Glass.6
III. Claim 60 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Agarwala in view of Marchal and Tiefnig.7
IV. Claim 64 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Agarwala in view of Marchal and Harris.8
V. Claims 66—68 and 81 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Glass in view of Marchal and Agarwala.
DISCUSSION
Rejection I
With regard to Rejection I, Appellant argues the rejected claims as a
group, with the exception of claims 54, 62, 72, 74, and 78, which are argued
separately. App. Br. 15—19. In accordance with 37 C.F.R. § 41.37(c)(l)(iv),
we select claim 50 as representative and decide the appeal as to Rejection I
based on the representative claim alone. Claims 54, 62, 72, 74, and 78 are
separately discussed.
Appellant does not dispute the Examiner’s findings that Agarwala
discloses a micro-fabricated corrosion sensor comprising first and second
electrodes on a polyimide carrier layer. Compare Final Act. 3, with Appeal
Br. 15—19. The Examiner also finds that Marchal discloses a corrosion
sensor comprising paired electrodes and teaches that providing mounting
6 US 5,437,773, issued August 1, 1995 (“Glass”).
7 US 5,854,557, issued December 29, 1998 (“Tiefnig”)
8 US 2006/0162431 Al, published July 27, 2006 (“Harris”).
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Application 11/051,920
material planar to the surface of the electrodes advantageously affects
accuracy of the corrosion rate measurement. Final Act. 4.
Appellant argues that Agarwala’s micrometer-scale sensor is
manufactured using semiconductor fabrication methods, whereas Marchal’s
millimeter-scale sensor is formed using physical machining methods by
grinding away potting material until electrode surfaces are exposed. Appeal
Br. 15—16. On that basis, Appellant contends that “the sensors of Agarwala
and Marchal are wholly different.” Id. at 16. Appellants’ argument is not
persuasive of reversible error. Appellant does not point us to persuasive
evidence or technical reasoning as to why the purported differences in scale
and manufacturing technique between Agarwala and Marchal negates
Marchal’s teaching that it was advantageous to provide mounting material
planar to the surface of the electrodes or the reasonable expectation that
Agarwala’s sensor would have benefitted from the advantage taught by
Marchal.
Appellant also argues that Marchal’s epoxy resin “would not be used
as a substitute for the mounting material of Agarwala.” Id. The Examiner
responds that Rejection I is not based on substitution of Marchal’s resin for
Agarwal’s polyimide mounting material. Ans. 31. Rather, the Examiner
determines that one of ordinary skill would have had a reason, in light of
Marchal’s teaching of applying a mounting material planar to the top surface
of the electrodes, to extend Agarwala’s polyimide mounting material to be
planar with the exposed electrode surfaces. Final Act. 4—5. Appellant’s
argument does not address the Rejection as it is set forth by the Examiner
and, therefore, does not identify reversible error.
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Application 11/051,920
Appellant further argues that it would not have been obvious to
passivate the electrode sidewalls in Agarwala because Agarwala’s sensor
predominantly detects corrosion from the electrode sidewalls. See Appeal
Br. 16 (“facilitates corrosion predominantly from the electrode sidewalls as
the corrosion detection mechanism”); id. at 18 (“operation of Agarwala is
fundamentally different in that corrosion current flows between the electrode
sidewalls”). However, because Appellant does not point to persuasive
evidence to support the contention that Agarwala’s sensor predominantly
involves electrode sidewalls, we are not convinced of error in the
Examiner’s determination that Agarwala’s sensor would have benefitted
from sidewall-passivation of the electrodes. See In re Linder, 457, F.2d 506,
508 (CCPA 1972) (attorney argument and conclusory statements, absent
evidence, are entitled to little, if any, weight).
Appellant also contends that Agarwala’s sensor cannot detect linear
polarization resistance (“LPR”) because Agarwala requires each of the two
electrodes to be formed from a different material. Appeal Br. 17. Appellant
does not point to any particular passage in Agarwala to support the
contention that the electrodes necessarily differ in material. Nor does
Appellant point to persuasive evidence to support the argument that
dissimilar electrode materials would preclude LPR detection. Moreover,
Agarwala expressly teaches that the electrodes may be formed from the
same material. Agarwala col. 4,11. 41—43 (“In another application of sensor
10 of the present invention both conductive elements 16 are made of the
same material.”). Appellant’s argument is not supported by a preponderance
of the evidence.
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Application 11/051,920
Appellant argues that Agarwala’s disclosed electrode spacing of 15
mils and thickness of 0.6 mil are outside the presently recited range of
“about 1 mm or less” and “less than about 75 pm”, respectively. Appeal Br.
18. We disagree. One mil is equal to 0.0254 mm. Thus, Agarwala’s
disclosure of 15 mils and 0.6 mil equate to 0.38 mm and 15.2 pm,
respectively, and are within the corresponding range recited in Appellant’s
claim.
With regard to claims 54 and 72,9 Appellant argues that “Agarwala
and Marchal do not mention the possibility of integration with electronics,
etc. on the same substrate/carrier.” Appeal Br. 19. In rejecting these claims,
the Examiner finds that Agarwala’s connection wires 20a and 20b depicted
in Agarwala’s Figure 1 constitute electronic components formed on the same
carrier. Final Act. 6—7. Appellant neither contests nor addresses this
finding. As such, Appellant’s argument does not identity reversible error.
With regard to claims 62, 74, and 78,10 Appellant argues that
“Agarwala and Marchal do not teach or suggest the use of interdigitated
electrodes.” Appeal Br. 19. We disagree. See Agarwala col. 2,11. 13—14
(“The strips of the two conductive elements are interdigitated.”).
For the foregoing reasons, Appellant does not convince us of
reversible error in the Examiner’s findings and obviousness determination
9 Appellant presents this argument also with regard to claims 55—59, 60 and
63. Appeal Br. 19. However, these claims are not subject to Rejection I.
10 Appellant presents this argument also with regard to claims 67 and 68. Id.
However, these claims also are not subject to Rejection I.
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Application 11/051,920
made in connection with the combined teachings of Agarwal and Marchal.
Accordingly, we sustain Rejection I.
Rejections II and V
Appellant argues against Rejections II and V collectively, based solely
on the unsubstantiated attorney argument that “the Agarwala-Marchal-Glass
combination teaches away from the combination of materials . . . particularly
polyimide,” and that “if the materials suggested to encapsulate or protect the
electrodes are used and provide the protection alleged, then the sensor would
not function properly as the electrodes would not be exposed to moisture
that drives the corrosion process.” Appeal Br. 20. Appellant does not
explain what “combination of materials” is called for by the claims. As
noted and not disputed by Appellant, Agarwala expressly teaches polyimide
as electrode carrier material. See Agarwala col. 2,11. 66—67 (“base 12 may
be a thin film or sheet of Kapton (Dupont), a polyimide which is available in
sheets as thin as 0.3 mil thick . . .”). Nor does Appellant explain why
providing that carrier material so as to be planar with exposed electrode
surfaces, as articulated by the Examiner in each of Rejections II and V,
would cause the resulting sensor not to function properly. In short,
Appellant fails to point us to persuasive evidence or technical reasoning to
support the otherwise unsubstantiated attorney argument that a sensor
resulting from the combination of relied upon prior art teachings would not
function.
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Application 11/051,920
Because Appellant fails to identify reversible error, we sustain
Rejections II and V.
Rejection III
With regard to Rejection III, Appellant argues that Tiefhig employs a
silicone potting agent, rather than polyimide. Appeal Br. 21. Appellant also
argues that “Tiefnig discloses the use of temperature sensors to calibrate the
corrosion rate,” and therefore would not have been consulted by one of
ordinary skill “when developing a method to accurately measure corrosion
rates.” Id. Appellant’s arguments are not well-taken.
Rejection III applies only to claim 60—a dependent claim which adds
the recitation that “the electronic components [that connect to the electrodes]
are hermetically sealed in a silicone potting agent.” The Examiner finds,
and Appellant does not dispute, that Tiefhig “discloses a corrosion sensor
device and discloses encapsulating the electronic elements with a pottant to
protect the elements from being corroded.” Final Act. 22. Appellant does
not point to persuasive evidence to refute the Examiner’s finding.
Accordingly, we sustain Rejection III.
Rejection IV
With regard to Rejection IV, Appellant argues that “it is not clear to
one of ordinary skill in the art that stainless steel or aluminum electrodes
will function when combined with Agarwala’s corrosion sensor.” Appeal
Br. 20. Appellant also argues that “[w]hile Harris discloses a thin film
electrode configuration on a passivated silicon substrate, the electrodes are
serpentine in shape—i.e., not in the claimed electrode/fmger configuration—
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Application 11/051,920
and vary in size for different ranges of sensitivity.” Id. These arguments are
not persuasive.
Agarwala discloses that the selection of electrode material “may be
governed by their relative electrochemical potentials or by what specific
corrosive elements are being detected. The metals may also be selected to
closely reflect the objects being corroded.” Agarwala col. 3,11. 58—62.
Appellant does not point to persuasive evidence to refute the Examiner’s
finding that aluminum electrodes, taught to be useful for corrosion detection,
would have been functional in Agarwala’s corrosion sensor. Appellant’s
argument that Harris provides electrodes in a serpentine configuration does
not address the Examiner’s articulated basis for the rejection, in which
Agarwala is relied upon for teaching the claimed interdigitated electrode
finger configuration.
We sustain Rejection IV.
DECISION
The Examiner’s decision rejecting claims 50—83 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.
AFFIRMED
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