10926206 (B.P.A.I. Nov. 24, 2008)

Ex Parte Okojie

Board of Patent Appeals and InterferencesNov 24, 2008

10926206 (B.P.A.I. Nov. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT S. OKOJIE _____________ Appeal 2008-3988 Application 10/926,206 Technology Center 2800 ____________ Decided: November 24, 2008 ____________ Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2008-3988 Application 10/926,206 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 7-13. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION Appellant’s claimed invention is directed to a packaging sensor. The bottom substrate housing (407 in Fig. 6A) and top cover (409 in Fig. 6A) sandwich the sensor (405 in Fig. 6A). The top cover is smaller than the sensor. This configuration allows the periphery of the top cover, the sensor and the housing of the bottom substrate to be exposed to glass, and thereby providing a hermetic seal (601 in Fig. 6A) (Spec. 5:20-6:1 and Spec. 24:19- 20). Claim 7, reproduced below, is representative of the subject matter on appeal: 7. A packaged sensor comprising: a bottom substrate having a housing; a sensor having a perimeter residing in said housing; a top substrate having a cover; said cover having a perimeter; and, said perimeter of said cover and said perimeter of said sensor being hermetically sealed to said housing of said bottom substrate. Appeal 2008-3988 Application 10/926,206 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Carnall US 5,270,491 Dec. 14, 1993 Farnworth US 5,958,100 Sep. 28, 1999 Martin US 6,323,550 B1 Nov. 27, 2001 Samman US 6,378,355 B2 Apr. 30, 2002 Parsons US 2003/0146502 A1 Aug. 07, 2003 Ishida JP 62281453 A Dec. 07, 1987 Yano JP 06163731 A Jun. 10, 1994 The following rejections are before us for review: 1. The Examiner rejected claims 7, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Carnall in view of Farnworth. 2. The Examiner rejected claims 8 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Carnall in view of Farnworth and further in view of Martin. 3. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Carnall in view of Farnworth and Martin and further in view of Ishida. 4. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Carnall in view of Farnworth and Martin and further in view of Yano. Appeal 2008-3988 Application 10/926,206 4 OBVIOUSNESS ISSUE Appellant contends that Carnall teaches away from the combination because placing Farnworth’s non-conductive hermetic seal between the entire sensor and the housing of Carnall would render the electrical connections between the sensor and terminals 18 inoperable (App. Br. 12). The Examiner asserts that Carnall’s terminals 18 extending into the cavity of the package cannot be interpreted as lack of hermeticity (Ans. 11). The Examiner further asserts that Carnall does not teach away from hermetic sealing because Carnall discloses a package including a hermetic seal (col. 3, ll. 15-19) and the title of the invention is “‘Hermetically Sealed Microelectronic Package’” (Ans. 12). The Examiner further states that Carnall’s hermetic seal only seals the device with respect to moisture or contaminants from the outside (Ans. 11). The Examiner reasons that an additional hermetic seal at the perimeter between the sensor (i.e., Farnworth’s die 4) and housing (i.e., Fanrworth’s bottom substrate 6) would prevent emission of moisture or other contaminants (i.e., Farnworth’s epoxy attachment material) from the inside of Carnall’s device (Ans. 11-12). Has the Appellant shown that the Examiner erred by (a) placing Farnworth’s non-conductive seal between Carnall’s electrical connections between the entire sensor and terminals 18 of the housing and thereby rendering those connections inoperable and (b) reasoning that an additional hermetic seal at the sensor’s perimeter and housing would prevent internal emission of moisture or other contaminants? Appeal 2008-3988 Application 10/926,206 5 FINDINGS OF FACT The relevant facts include the following: 1. Carnall teaches a hermetic sealing between the top cover 24 and housing 12 via use of the seal pads 26, 28, and 30 (Fig. 2 and col. 2, ll. 35-49). 2. Carnall further teaches a sensor 22 placed within cavity 14 and terminals 18 extending in cavity 14 to facilitate electrical connection to the sensor (Fig. 6 and col. 2, ll. 49-56). 3. Farnworth teaches an entire sensor (i.e., die 4) bonded to the bottom housing of a substrate (i.e., substrate 6) via a hermetic seal (col. 4, ll. 27- 34 and col. 2, ll. 45-47). 4. Neither Carnall nor Farnworth teaches the “perimeter of said sensor being hermetically sealed to said housing” as claimed. PRINCIPLES OF LAW The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is met, then the burden shifts to the Appellant to overcome the prima facie case with argument and/or evidence. Id. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court, citing In re Kahn, 441 F.3d at 988, stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741. Appeal 2008-3988 Application 10/926,206 6 “[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” KSR, 127 S. Ct. at 1740. If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir.1984). It is improper to combine references where the references teach away from their combination. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). ANALYSIS Claims 7-13 Has the Appellant shown that the Examiner erred by (a) placing Farnworth’s non-conductive seal between Carnall’s electrical connections between the entire sensor and terminals 18 of the housing and thereby rendering those connections inoperable and (b) reasoning that an additional hermetic seal at the sensor’s perimeter and housing would prevent internal emission of moisture or other contaminants? Carnall teaches a hermetic sealing between the top cover 24 and housing 12 via use of the seal pads 26, 28, and 30 (Finding of Fact 1). Carnall further teaches a sensor 22 placed within cavity 14 and terminals 18 extending in cavity 14 to facilitate electrical connection to the sensor (Finding of Fact 2). Farnworth teaches an entire sensor (i.e., die 4) bonded to the bottom housing of a substrate (i.e., substrate 6) via a hermetic seal (Finding of Fact 3). Neither Carnall nor Farnworth teaches the “perimeter of said sensor being hermetically sealed to said housing” as Appeal 2008-3988 Application 10/926,206 7 claimed (Finding of Fact 4). Instead, at best Farnworth teaches the entire sensor 4 being sealed to the housing 6. Even if the perimeter is included as part of the entire sensor being sealed to the housing, the combination would render Carnall inoperable because the modification would destroy the electrical connection of the sensor 22 with terminals 18 extending through cavity 14. Thus, the proposed modification renders the prior art invention of Carnall being modified unsatisfactory for its intended purpose (i.e., the combination destroys the electrical connection of sensor 22 with terminals 18), and thus, there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900 (Fed. Cir.1984). Also, it is improper to combine references where the references teach away from their combination (i.e., inoperability of the Carnall’s electrical connection between sensor 22 and terminals 18). In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). Furthermore, the Examiner’s proposed modification rationale of placing an additional hermetic seal in Carnall’s package sensor at the sensor’s perimeter and housing to prevent internal emission of moisture or other contaminants caused by the additional hermetic seal itself does not support the legal conclusion of obviousness. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1741. In other words, the Examiner creates a problem by inserting an internal hermetic seal material emitting moisture or contaminants and then solves it by stating that such material is sealed at the sensor’s periphery with the housing preventing such emissions. In addition, as state supra there was no teaching in either Carnall or Farnworth of placing a sealant at the periphery of the sensor. Appeal 2008-3988 Application 10/926,206 8 For the above reasons, Appellant has shown error in the Examiner’s rejection of claims 7, 11, and 12 under 35 U.S.C. § 103(a). Furthermore, as the rejections of claims 8-10 and 13 depend on the combination of Carnall and Farnworth, and neither Martin, Ishida, Yano, Samman nor Parsons remedies the shortcomings of that combination as pointed out by Appellant, Appellant's arguments have persuaded us of error in the Examiner's rejections of claims 7-13. CONCLUSIONS OF LAW Appellant has shown that the Examiner erred by (a) placing Farnworth’s non-conductive seal between Carnall’s electrical connections between the entire sensor and terminals 18 of the housing and thereby rendering those connections inoperable and (b) reasoning that an additional hermetic seal at the sensor’s perimeter and housing would prevent internal emission of moisture or other contaminants. ORDER The decision of the Examiner to reject claims 7-13 under 35 U.S.C. § 103(a) is reversed. REVERSED KIS KENNETH L. MITCHELL (WOODLING, KROST AND RUST) 9213 CHILLICOTHE ROAD KIRTLAND, OH 44094