Ex Parte Partridge et al

Patent Trial and Appeal Board

May 20, 2016

13213709 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/213,709 08/19/2011
24972 7590 05/24/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Aaron Partridge
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.
l 1403/80C 8758
EXAMINER
BRADLEY, STEPHEN M
ART UNIT PAPER NUMBER
2819
NOTIFICATION DATE DELIVERY MODE
05/24/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON PARTRIDGE,
MARKUS LUTZ, and SIL VIA KRONMUELLER
Appeal2014-007265
Application 13/213,709
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 16-30 and 36. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
The claims on appeal are directed to a microelectromechanical device
(claims 16-30) and a method of producing a microelectromechanical device (claim
1 The Appellants cancelled claims 31-35 and 37 in an "Amendment After a Final
Office Action" dated October 30, 2013.
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Application 13/213,709
36). Representative claim 16 is reproduced below from the Claims Appendix of
the Appeal Brief dated February 12, 2014 ("App. Br.").
16. A microelectromechanical device, the device comprising:
a chamber including a first encapsulation layer, the first
encapsulation layer including at least one vent;
a microelectromechanical structure disposed at least
substantially within the chamber;
a semiconductor material disposed in or on the at least one vent
to seal the chamber; and
a fluid within the chamber, wherein:
(i) a pressure of the fluid is within a predetermined range;
(ii) a diffusivity of the fluid is sufficient to provide a
predetermined and substantially constant damping of the
microelectromechanical structure during its operation; and
(iii) the fluid includes at least one by-product gas
resulting from a gas used to create the first encapsulation layer.
App. Br., Claims App'x 1.
The claims on appeal stand rejected as follows:
(1) claims 16, 20, 22-25, 30, and 36 under 35 U.S.C. § 103(a) as
unpatentable over Reichenbach et al. 2 in view of Fischer et al.; 3
(2) claims 17-19 and 27-29 under 35 U.S.C. § 103(a) as unpatentable
over Reichenbach in view of Fischer, and further in view of Oh et al.; 4 and
2 US 2004/0065932 Al, published April 8, 2004 ("Reichenbach").
3 US 2003/0141561 Al, published July 31, 2003 ("Fischer").
4 In-Hwan Oh & Christos G. Takoudis, Modeling of epitaxial silicon growth from
the SiH2Ch-H2-HCl system in an rf-heated pancake reactor, 69 J. Appl. Phys.
8336-45 (1991) ("Oh").
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(3) claims 21and26 under 35 U.S.C. § 103(a) as unpatentable over
Reichenbach in view of Fischer, and further in view of Guckel et al. 5
B. DISCUSSION6
Claim 16 recites a microelectromechanical device comprising, inter alia, "a
chamber including a first encapsulation layer ... and a fluid within the chamber,
wherein ... the fluid includes at least one by-product gas resulting from a gas used
to create the first encapsulation layer." App. Br., Claims App'x 1 (emphasis
added). Similarly, claim 36 recites a method of producing a
microelectromechanical device comprising, inter alia, the steps of "providing a
chamber including a first encapsulation layer ... and providing a fluid within the
chamber ... wherein the providing of the fluid includes forming the fluid at least
partially as a by-product gas resulting from a gas used to create the first
encapsulation layer." App. Br., Claims App'x 3 (emphasis added).
The Examiner finds "Fischer discloses trapping processes [sic, process]
gases from the deposition of an encapsulation layer (FIG. 12: [covering layer] 120)
inside of a chamber in a MEMS device (see paragraph 0029)." Final 5, 7.7 More
specifically, Fischer discloses that "[i]n the deposition of covering layer 120, a
process gas is preferably enclosed in hollow space 22 at the same time." Fischer
iT 29.
The Appellants argue:
That the process gas is enclosed concurrently with the deposition step
does not disclose or suggest that the process gas is a by-product gas.
In this regard, Fischer does not detail how the process gas is related to
5 US 4,744,863, issued May 17, 1988 ("Guckel").
6 In the Appeal Brief, the Appellants limit their discussion to independent claims
16 and 36. See App. Br. 4.
7 Final Office Action dated August 20, 2013.
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Application 13/213,709
the PECVD process. Indeed, the process gas may not be involved in
the deposition process at all, may be a precursor gas, or may be one of
many process gases, e.g., Argon, which are known to persons of
ordinary skill in the art as being incapable of participation in or
resulting from chemical reactions.
App. Br. 3--4. Therefore, the Appellants argue that Fischer paragraph 29 "does not
disclose or suggest the by-product gas resulting from the gas used to create a first
encapsulation layer, as recited in the claims." App. Br. 4.
In response, the Examiner contends that Appellants' Specification "does not
provide a special definition for the term 'by-product gas,' which would exclude the
process gas of Fischer from being considered as a 'by-product gas."' Ans. 3.8
Moreover, the Examiner contends that the phrase"' resulting from a gas used to
create the first encapsulation layer' is directed towards the process of making 'a
fluid within the chamber' that 'includes at least one by-product gas"' and for that
reason, is a product-by process limitation. Ans. 3. The Examiner concludes that
"the language "'resulting from a gas used to create the first encapsulation layer,'
only requires the fluid including at least one by-product gas[,] which does not
distinguish the invention from the combination of Reichenbach and Fischer." Ans.
4 (original emphasis omitted; emphasis added).
According to one embodiment of the Appellants' invention:
[O]ne or more gases are introduced during the encapsulation process
with the expectation that those gases will react with the environment
during and/or after the encapsulation process ....
The one or more gases may be a primary or a secondary reagent
in the forming, growing and/or depositing the encapsulation layer(s).
Alternatively, (or in addition to) these gases may be additional gases
that are not significant in forming, growing and/ or depositing the
encapsulation layer(s). In this regard, these additional gases may react
8 Examiner's Answer dated April 24, 2014.
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Application 13/213,709
with materials (solids and/or gases) in the deposition environment to
produce by-product(s) that are trapped in the chamber after
encapsulation.
Spec. iTiT 30-31.
Thus, based on the Appellants' disclosure, we interpret the term "by-product
gas" recited in claims 16 and 36 to mean a gas produced by the reaction of at least
one gas with other materials (solids and/or gases) in the deposition environment.
Our interpretation is consistent with the definition presented by the Appellants in
the Reply Brief. See Reply Br. 2 ("One of ordinary skill in the art would ...
appreciate that a by-product, e.g., in a manufacturing or chemical context, refers to
a secondary product derived from/during a manufacturing or chemical process."). 9
In this case, the Examiner has failed to show that the process gas described
in paragraph 29 of Fischer is a "by-product gas" within the scope of claims 16 and
36. For that reason, the§ 103(a) rejection of claims 16, 20, 22-25, 30, and 36
based on the combination of Reichenbach and Fischer is not sustained.
The Examiner does not rely on Guckel to cure the deficiency in the rejection
of claim 16 identified above. See Final 10-11. Therefore, the§ 103(a) rejection of
claims 21 and 26 based on the combination of Reichenbach, Fischer, and Guckel is
not sustained.
The Examiner, however, finds Oh discloses a method of forming polysilicon
layers10 by chemical vapor deposition in which at least one by-product gas is a
hydrogen based gas, a chlorine based gas, or a chlorine and a hydrogen based gas
as recited in claims 17-19 and 27-29. Final 7-10. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to apply the deposition
9 Reply Brief dated June 16, 2014.
10 The Examiner finds, and the Appellants do not dispute, that the first
encapsulation layer in Reichenbach' s device is polysilicon. Final 7.
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process of Oh to the device of Reichenbach and Fischer such that the fluid in the
chamber includes a hydrogen based by-product gas, a chlorine based by-product
gas, or a chlorine and a hydrogen based by-product gas. Final 7-10. The
Appellants do not direct us to any error in the Examiner's factual findings or legal
conclusions. See App. Br. 4. Therefore, the§ 103(a) rejection of claims 17-19
and 27-29 based on the combination of Reichenbach, Fischer, and Oh is sustained.
Claims 17-19 and 27-29 depend either directly or indirectly from claim 16.
Therefore, we conclude that claim 16 is also unpatentable under 35 U.S.C. § 103(a)
over the combination of Reichenbach, Fischer, and Oh. See Ormco Corp. v. Align
Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (explaining that when dependent
claims "were found to have been obvious, the broader claims . . . must also have
been obvious"); In re Muchmore, 433 F.2d 824, 827 (CCPA 1970) ("since the
narrower claims were properly rejected for obviousness, the rejection of the
broader claims on that ground must also be affirmed''). Moreover, the Appellants
do not present any arguments in support of the separate patentability of claims 20,
22-25, and 30, which depend either directly or indirectly from claim 16. See App.
Br. 4. Therefore, we enter the following new grounds of rejection:
(1) claims 16, 20, 22-25, and 30 as unpatentable under 35 U.S.C.
§ 103(a) over Reichenbach in view of Fischer and Oh; and
(2) claims 21 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Reichenbach in view of Fischer and Oh, and further in view of Guckel.
As for independent claim 36, the Examiner's uncontested application of Oh
in the§ 103(a) rejection of claims 17-19 and 27-29 also cures the deficiency
identified above in the§ 103(a) rejection of claim 36 over Reichenbach in view of
Fischer. Therefore, we enter an additional new ground of rejection of claim 36
under 35 U.S.C. § 103(a) based on Reichenbach in view of Fischer and Oh.
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C. DECISION
The Examiner's decision to reject claims 16, 20, 22-25, 30, and 36 under 35
U.S.C. § 103(a) as unpatentable over Reichenbach in view of Fischer is reversed.
The Examiner's decision to reject claims 21 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Reichenbach in view of Fischer, and further in view
of Guckel is reversed.
The Examiner's decision to reject claims 17-19 and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over Reichenbach in view of Fischer and Oh is affirmed.
Claims 16, 20, 22-25, 30, and 36 are newly rejected under 35 U.S.C.
§ 103(a) as unpatentable over Reichenbach in view of Fischer and Oh.
Claims 21 and 26 are newly rejected under 35 U.S.C. § 103(a) as
unpatentable over Reichenbach in view of Fischer and Oh, and further in view of
Guckel.
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) which provides that "[a] new ground of rejection ... shall not be
considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
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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).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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