Ex Parte Ryan

Patent Trial and Appeal Board

Oct 31, 2013

11158370 (P.T.A.B. Oct. 31, 2013)

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.
11/158,370 06/22/2005 Vivian Ryan 27 9631
7590 10/31/2013
Ryan, Mason & Lewis, LLP
90 Forest Avenue
Locust Valley, NY 11560
EXAMINER
HO, HOANG QUAN TRAN
ART UNIT PAPER NUMBER
2818
MAIL DATE DELIVERY MODE
10/31/2013 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

____________

Ex parte VIVIAN RYAN
__________

Appeal 2011-008304
Application 11/158,370
Technology Center 2800
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-7 and 10-23. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We REVERSE.
Appellant’s invention is directed to an integrated circuit and a method
for controlling heat dissipation in integrated circuits (Spec. 1:6-7).
Appeal 2011-008304
Application 11/158,370

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Claim 1 is illustrative:
1. An integrated circuit die comprising:
a substrate having an upper surface;
at least one active device formed in a first area of the upper surface of the
substrate;
a plurality of layers formed on the upper surface of the substrate
above the at least one active device;
a first stacked heat conducting structure spanning from a point
proximate the first area of the upper surface of the substrate through the
plurality of layers;
a lateral heat conducting structure formed above the uppermost layer
of the plurality of layers and in thermal contact with the first stacked heat
conducting structure; and
a second stacked heat conducting structure in thermal contact with the
lateral heat conducting structure and spanning from a point proximate to a
second area of the upper surface of the substrate through the plurality of
layers, the second area of the substrate being laterally removed from the first
area of the substrate;
wherein the first stacked heat conducting structure is electrically
isolated from the active device;
wherein the first stacked heat conducting structure is formed directly
above the active device;
wherein an initial element of the first stacked heat conducting
structure is in thermal contact with an oxide layer overlying the active
device; and
wherein heat generated in the first area by the active device is
conducted by the first stacked heat conducting structure to the lateral heat
conducting structure.

Appellant appeals the following rejection:
Claims 1-7 and 10-23 are rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the enablement requirement.

ISSUE
Appeal 2011-008304
Application 11/158,370

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Did the Examiner reversibly err in concluding that independent claims 1, 14,
and 16 are not enabled by the written description because they require that
“the first stacked heat conducting structure is electrically isolated from the
active device” and “the first stacked heat conducting structure is formed
directly above the active device”? We decide this issue in the affirmative.

FINDINGS OF FACT AND ANALYSES
The Examiner concludes that claims 1, 14, and 16 are not enabled by
the written description because “directly above” in the claim requires that
the first stacked heat conducting structure be in contact with the active
device such that it cannot be electrically isolated from the active device
(Ans. 4-8). In that respect, the Examiner finds that there is no support for
forming an oxide layer between the active device (i.e., heat source) and via
114 as shown in Figure 1A (Ans. 6).
Appellant argues that “directly above” does not necessarily require
contact between the first stacked heat conducting structure and the active
device (App. Br. 8). Appellant contends that “directly above” in the context
of the first stacked heat conducting structure includes embodiments where
an oxide layer is formed between the active device and the first stacked heat
conducting structure (App. Br. 9). Appellant argues that the Specification at
page 9, lines 18-20 describes that a given stacked heat conducting structure
need not be in direct contact with the localized heat source (Reply Br. 7).
The specification, when filed, must enable one skilled in the particular
art to use the invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir.1988). The Examiner has not established that
Appellant’s Specification would require undue experimentation to enable
Appeal 2011-008304
Application 11/158,370

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one skilled in the art to practice the claimed invention. Indeed, the Examiner
does not make any findings or conclusions specifically with regard to
whether undue experimentation would have been required to practice the
claimed invention. Rather, the Examiner is focused on whether there is
“mutual support in the description” for an oxide layer between the heat
source and the first via 114 (Ans. 6, 8). The Examiner’s focus appears to be
on whether there is written descriptive support rather than enablement.
We conclude that Appellant’s Specification enables one of ordinary
skill in the art to make and use the claimed invention. Page 9, lines 18-19
of Specification describes that a given stacked heat conducting structure
need not be in direct contact with the localized heat source (e.g., active
device). The Specification at page 10, lines 1-5, referring to Figure 3A,
describes that the stacked heat conducting structure 306 includes a
metallization layer trench 312 above an oxide layer overlying one or more
active devices as the heat source 304. The page 10 disclosure in the
Specification further describes that “alternatively” an initial via shown in
phantom as element 315 may comprise an initial element of the stacked heat
conducting structure 306. Accordingly, the Specification enables having an
electrically insulating layer between the active device and the first stacked
heat conducting structure.
On this record and for the above reasons, we reverse the Examiner’s
§ 112, first paragraph, rejection for lack of enablement.

DECISION
The Examiner’s decision is reversed.

Appeal 2011-008304
Application 11/158,370

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ORDER
REVERSED

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