Ex Parte Stahl et alDownload PDFPatent Trial and Appeal BoardDec 10, 201412001531 (P.T.A.B. Dec. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HEIKO STAHL, CHRISTIAN OHL, and FRANK FISCHER ____________ Appeal 2012-010558 Application 12/001,531 Technology Center 2800 ____________ Before RICHARD E. SCHAFER, N. WHITNEY WILSON, and KIMBERLY J. McGRAW, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1, 2, and 4–8. Appeal Br. 1. Claims 3, 9, and 10 are withdrawn. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a new ground of rejection. STATEMENT OF THE CASE Background Appellants’ disclosure relates to a micromechanical component having integrated passive electronic components. Spec. 1:1–5. 1 The real party in interest, identified by Appellants, is ROBERT BOSCH Gmbh of Stuttgart in the Federal Republic of Germany. Appeal Br. 1. Appeal 2012-010558 Application 12/001,531 2 Claims 1 and 8 are independent. Claim 1 is representative and is reproduced below: 1. A micromechanical component comprising: a substrate; at least one first layer sequence situated on the substrate, the at least one first layer sequence including at least one micromechanical functional element; and at least one second layer sequence situated on the substrate, the at least one second layer sequence being able to act as at least one macroelectronic, passive component. Claim App’x 1 (disputed limitations in italics). The Issue Appellants seek reversal of the Examiner’s rejection of claims 1, 2, and 4–8 under 35 U.S.C. § 102(b) as anticipated by Partridge et al. (U.S. Patent Application No. 2004/0245586 Al) (“Partridge”). Appeal Br. 3–5. The issue is whether the Examiner erred in determining that Partridge discloses “at least one second layer sequence situated on the substrate, the at least one second layer sequence being able to act as at least one macroelectronic, passive component” as required by the claims. DISCUSSION Claim 1 The Examiner finds that Partridge discloses at least one second layer (22) sequence situated on the substrate (14), the at least one second layer sequence (22) being able to act as at least one macroelectronic, passive component (16). Ans. 7, citing Partridge ¶ 45, lines 1–11 and Fig. 14A. Appellants argue that the field region 22 of Partridge is merely a substrate material upon which discrete electrical components may be Appeal 2012-010558 Application 12/001,531 3 mounted and that the substrate material itself of region 22 does not constitute a second layer sequence acting as a macroelectronic passive component. Appeal Br. 4. We disagree. Contrary to the Appellants’ assertions, the electrical components taught by Partridge are not simply disclosed as “mounted” on the substrate material in field region 22. Rather, Partridge teaches that the electrical components may be integrated with the substrate. As explained in Partridge, Figures 14A–E show a microelectromechanical system (MEMS) that includes a micromechanical functional element (12) and a data processing electronics element (16), including integrated circuits 54 disposed in field region 22. Partridge ¶ 104. Partridge further discloses that the data processing electronics 16 can be integrated on or in a common substrate. Partridge ¶ 104, Figs. 14A–E. Partridge further states that: FIG. 14A-14E illustrate cross-sectional views of MEMS, according to certain aspects of the present inventions, including a micromachined mechanical structure portion and an integrated circuit portion, both portions of which are disposed or integrated on a common substrate. Partridge ¶ 38 (emphasis added). The integrated circuit may be fabricated using conventional techniques. Partridge ¶ 105. Partridge also states that the data processing electronics 16 may be integrated in or on substrate 14. Partridge ¶ 42; Fig. 1. Thus, Partridge repeatedly discloses that the processing electronics (16), as well as integrated circuit (54), are not merely mounted on, but can also be integrated within the substrate. Additionally, in Fig. 14A the processing electronics (16) are depicted as a layered sequence integrated in the region 22. The layered sequence includes the layer 48 and a number of unidentified layers below layer 48. Appeal 2012-010558 Application 12/001,531 4 Thus, the processing electronics (16) as shown in Fig. 14A, and described in Partridge’s written description, is a “second layer sequence being able to act as at least one macroelectronic, passive component” as used in and required by Claim 1. Appellants further contend that the data processing electronics (16) in field region (22), such as transistors, resistors, capacitors, also cannot constitute a second layer sequence acting as a macroelectronic passive component. Appeal Br. 4 (emphasis added). Appellants argue that the Specification defines the term “macroelectronic, passive components” as “passive components that, by their dimensioning, are able to replace individual, normally discretely available and interconnected components.” Appeal Br. 4; Reply Br. 2. Appellants contend that the data processing electronics (16) recited in Partridge are individual, discrete components, and therefore are not within the scope of the definition of macroelectronic, passive components, as defined by the present application. Reply Br. 2. Again we disagree. First, we fail to see how the characterization that Partridge’s passive components as “individual, discrete components” distinguishes Partridge’s teachings from Appellants’ claimed subject matter. Appellants’ specification states that Figure 1 shows a micromechanical component according to their invention. Spec. 4: 1–2. That figure shows a device that includes a substrate (2) and functional region (4) said to represent “at least one macroelectronic, passive component.” Spec. 4:17–20. Functional region (4) is represented in Figure 1 with the electrical symbol for a capacitor. The specification further expressly states that the macroelectronic component may function as a capacitor. See e.g., Spec. 2:24–33. It is not apparent to us why the capacitor shown as functional Appeal 2012-010558 Application 12/001,531 5 region (4) in Figure 1, and as described in Appellant’s specification, is not also an “individual, discrete component.” Because Appellants’ claim 1 presumptively reads on their Figure 1, the characterization of Partridge’s passive components as individual and discrete does not serve to distinguish the claimed subject matter from the devices taught by Partridge. Secondly, we fail to see why Appellants’ definition of “macroelectronic, passive components” as “components that, by their dimensioning, are able to replace individual, normally discretely available and interconnected components” excludes the data processing electronics (16) shown in Partridge’s Fig. 14A. As we noted above, Partridge’s Fig. 14A depicts the processing electronics (16) as a layered sequence. Partridge teaches that the processing electronics (16) may be integrated in the substrate and include integrated circuits (54) that are fabricated by conventional integrated circuit manufacturing techniques. 2 Fig. 14A and ¶¶ 42, 45, 104, and 105. Partridge further notes that the present inventions are pertinent to electromechanical systems, for example, gyroscopes, resonators, temperatures sensors and/or accelerometers, made in accordance with fabrication techniques, such as lithographic and other precision fabrication techniques, which reduce mechanical components to a scale that is generally comparable to microelectronics. Partridge ¶ 114, last sentence. Thus, one skilled in the art would understand that Partridge’s processing electronics are microelectronic integrated circuit components. As such, we do not see anything in Appellants’ definition that 2 While not necessary in reaching our conclusion, we are not aware of any that integrated circuit microelectronic components that are not in the form of a “layer sequence.” Appeal 2012-010558 Application 12/001,531 6 would exclude such components. In this regard, we note that Appellants’ components are also microelectronic integrated circuits. Spec. 4:31 – 5:25. We find that Partridge’s integrated data processing circuitry (16) meets Appellants’ definition of “passive components that, by their dimensioning, are able to replace individual, normally discretely available and interconnected components.” We affirm the Examiner’s decision to reject claim 1. Claims 2 and 4-8 For the remaining claims, 2 and 4-8, Appellants have not directed us to any additional limitations that would distinguish the subject matter of those claims from Partridge. Brief, 4-5. We therefore select claim 1 as representative and decide this appeal on the basis of that claim. 37 C.F.R § 41.37( c)(iv) (2011). NEW GROUND OF REJECTION Because our opinion discusses the Partridge reference to greater detail than either the Examiner or Applicant, we exercise our discretion to denominate our affirmance as a new ground of rejection. 37 C.F.R. § 41.50(b). DECISION The decision of the Examiner to reject claims 1, 2 and 4–8 is affirmed. Notice WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellants must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: Appeal 2012-010558 Application 12/001,531 7 (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 proceeding 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. 37 C.F.R. § 41.50(b) No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED NEW GROUND OF REJECTION 37 C.F.R. § 41.50(b) lv Copy with citationCopy as parenthetical citation