Ex Parte Tan

Board of Patent Appeals and Interferences

Jan 28, 2008

10319391 (B.P.A.I. Jan. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIEN BENG TAN
____________

Appeal 2008-0033
Application 10/319,391
Technology Center 2800
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Decided: January 28, 2008
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Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-52. We have jurisdiction under 35 U.S.C. § 6(b), and
we heard the appeal on January 22, 2008. We affirm-in-part.
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STATEMENT OF THE CASE
Appellant invented a preamplifier integrated circuit device for a
magnetic storage device that includes multiple channels and one or more
interconnecting layers. A passivation layer is arranged adjacent to the
interconnecting layers and external connections are arranged in openings in
the passivation layer. The external connections independently communicate
with each group of channels. Such an arrangement simplifies power
distribution and reduces heating as the number of read and write channels
increase.1 Claim 1 is illustrative:
1. A preamplifier integrated circuit (IC) for a magnetic storage device
comprising:

a plurality of channels, each including at least one preamplifier;

one or more interconnecting layers;

a passivation layer arranged adjacent to said interconnecting layers;
and

a plurality of first external connections that are arranged in openings
in said passivation layer, that are in contact with at least one of said
interconnecting layers and that are adapted to distribute a first potential to
said preamplifiers,

wherein said plurality of channels are arranged in a plurality of
groups, each of said plurality of groups includes at least one of said
channels,

wherein at least one of said first external connections independently
communicates with each of said groups, and

1 See generally Spec. ¶¶ 0001, 0010-18.
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wherein the first potential is distributed to a respective one of said
plurality of groups via the corresponding at least one of said external
connections.

The Examiner relies on the following prior art references to show
unpatentability:
Kawahara US 5,300,839 Apr. 5, 1994
Smith US 5,744,898 Apr. 28, 1998
Henrichs US 6,249,824 B1 Jun. 19, 2001

1. Claims 1-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Henrichs and Smith.2
2. Claims 27-52 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kawahara and Smith.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs3 and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

2 The Examiner withdrew a previous objection to claims 1-26 (Ans. 11).
Nonetheless, such an issue would not be before us in any event as objections
are petitionable matters -- not appealable matters. See MPEP § 706.01
(“[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board.”); see also MPEP
§ 1201 (“The Board will not ordinarily hear a question that should be
decided by the Director on petition….”).
3 We refer to the most recent Appeal Brief filed August 30, 2005 and the
Reply Brief filed January 6, 2006 throughout this opinion.
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OPINION
The Rejection of Claims 1-26
Independent Claims 1 and 12
We first consider the Examiner’s rejection of claims 1-26 under 35
U.S.C. § 103(a) as unpatentable over Henrichs and Smith. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727
(2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
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ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 1741 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Regarding independent claims 1 and 12, the Examiner's rejection
essentially finds that Henrichs teaches a preamplifier IC for a magnetic
storage device with every claimed feature except for arranging plural first
external connections in openings in a passivation layer. The Examiner,
however, notes that passivation layers are known in the art as evidenced by
Appellant’s Specification (Spec. ¶ 0008). The Examiner further notes that
external connections such as power and signals conventionally communicate
with a chip through openings in the passivation layer. Additionally, the
Examiner indicates that external connections are likewise formed in
Henrichs’ device to provide power and signals to the chip (Ans. 4-5).
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Alternatively, the Examiner cites Smith for teaching arranging
multiple external connections in openings in a “passivation layer” MLC
(Ans. 5).
In view of these teachings, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
arrange plural first external connections in openings in a passivation layer of
Henrichs’ device (Ans. 5).
Regarding representative claim 1,4 Appellant argues that the prior art
does not teach nor suggest (1) a preamplifier IC that independently supplies
a first potential via external connections and interconnecting layers to each
group, or (2) a passivation layer with openings for receiving the external
connections as claimed (App. Br. 7-9; Reply Br. 4, 9-12). Appellant
contends that the identified teachings in Henrichs were taken out of context
and the references are not properly combinable (App. Br. 8-9). According to
Appellant, since all of the address circuits in Figures 71A and 75 of
Henrichs are all supplied by the same voltage line through a single external
connection to the IC, this arrangement actually teaches away from the
claimed preamplifier IC layout (App. Br. 10; Reply Br. 10). Appellant adds
that the read and write preamplifier circuits of the microhead array chip in
Henrichs likewise teach away from the recited IC layout since these circuits
are all supplied by the same voltage line through a single external
connection (Reply Br. 10).

4 Appellant argues independent claims 1 and 12 together as a group. See
App. Br., at 7; see also Reply Br., at 4, 9. Accordingly, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).
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Appellant also argues that Smith -- a reference disclosing an
ultrasound transducer array -- does not cure the deficiencies of Henrichs.
Appellant emphasizes that Smith does not discuss passivation or
interconnecting layers, let alone arranging plural external connections in a
passivation layer where at least one of the external connections
independently communicates with each of the groups as claimed (App. Br.
10; Reply Br. 12).
In addition, Appellant argues that Smith is non-analogous art. In
reaching this conclusion, Appellant contends that Smith is neither in the
field of Appellant’s endeavor (preamplifier ICs for magnetic media storing
devices) nor is the reference reasonably pertinent to the particular problem
with which Appellant is involved (App. Br. 10-12; Reply Br. 13-14).
The Examiner notes that the claim language merely requires only one
external connection to independently communicate with each group -- a
limitation that is fully met by the VDD or GND contacts in Henrichs (Ans.
12, 16-17). The Examiner adds that while the various figures from Henrichs
that were relied upon pertain to different aspects of Henrichs’ device, they
all nonetheless are part of the magnetic micro-head array chip (Ans. 13). In
addition, although the Examiner acknowledges that Henrichs does not
explicitly state that a passivation layer is used, the Examiner reiterates that
such a layer is known in the art as evidenced by Appellant’s Specification
and, in any event, would have been obvious in view of Smith (Ans. 14).
Regarding Smith, the Examiner asserts that skilled artisans would use a
“voltage supply/protection structure” such as that disclosed by Smith in
Henrichs’ IC device (Ans. 17-18).
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The issue before us, then, is whether Henrichs, considered with either
(1) the admitted prior art disclosed in the Specification, or (2) the disclosure
of Smith, reasonably teaches or suggests the limitations of representative
claim 1. For the reasons that follow, we find that Henrichs considered with
the admitted prior art does, in fact, reasonably suggest the limitations of
representative claim 1. However, Henrichs considered with Smith does not.
Henrichs discloses a magnetic data storage fixed hard disk drive that
uses stationary Microhead Array Chips (MACs). The MACs are mounted
on chip-positioning circuit boards 27 adjacent to the hard disk’s data storage
platter 13 (Henrichs, col. 1, ll. 34-43; col. 25, ll. 16-18; Fig. 1).
Every MAC has a group of 64 circuit contacts physically embedded
into the bottom surface of the chip’s outer shell. These embedded contacts
correspond to matching contacts embedded into the top surface of the circuit
board’s chip socket (Henrichs, col. 42, ll. 31-42; Figs. 11, 12, 26-27, 30, 32,
35, 37). As best seen in Figures 11 and 12, the MAC’s contacts include,
among other things, +5V and GND connections (connections 33 and 34).
Figure 65A details the MAC’s functionality.5 As shown in that
figure, the MAC includes, among other things, two distinct read and write
preamp circuits. The GND and +5V connections of each preamp circuit are
each connected to the GND and +5V contacts of the MAC, respectively
(Henrichs, Figs. 65A, 65C, 65D).

5 Although we discuss the embodiment of Figure 65A which details one type
of MAC (i.e., a magnetoresistor MAC), Figure 64A likewise shows
commensurate features relevant to this appeal for a different type of MAC
(i.e., magnetic MAC). See Henrichs, at col. 45, ll. 41-50 (distinguishing the
two MAC design strategies).
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In our view, these teachings from Henrichs reasonably suggest several
key features of representative claim 1. First, we find the read and write
signal flow paths shown in Figure 65A are arranged in two groups of
channels each with an associated preamplifier.6 Second, we find that the
GND and +5V contacts of the MAC reasonably correspond to plural “first
external connections” as they distribute a potential (+5V or GND) to the
read and write preamplifier circuits, respectively. Third, we find that both
the +5V and the GND contacts independently communicate with each of the
groups. As shown in Figures 65A, 65C, and 65D, there are at least two
independent and distinct conductive lines that extend from the MAC’s +5V
and the GND connections to the read and write preamplifier circuits,
respectively. That is, there are independent connections between either the
+5V or the GND contacts and the respective read and write preamplifiers.
Appellant’s argument that Henrichs teaches away from the claimed
invention since Henrichs’ read and write preamplifiers are all supplied by
the same voltage through a single external connection (Reply Br. 10) is
unavailing and, in any event, not commensurate with the scope of the claim
language. Both the +5V or the GND contacts constitute external
connections with respect to the MAC. Moreover, these external connections
distribute at least one potential to the respective groups as noted above.
Based on these findings in Henrichs, we now address the differences
between Henrichs and the claimed invention and whether such differences
would have been obvious to the ordinarily skilled artisan in light of the cited

6 See also Henrichs, at col. 14, ll. 29-30 (referring to the MAC’s
preamplifiers as a “Read Channel Preamp” and a “Write Channel Preamp”
respectively).
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prior art. At the outset, we note that Henrichs teaches the MAC’s read and
write microhead arrays along with their control, switching, addressing,
amplifying, encoding, and decoding circuitry is fabricated as a single CMOS
MAC device using standard CMOS photo-resist oxide masking, etching, and
layer techniques (Henrichs, col. 14, ll. 13-36; emphasis added). Henrichs,
however, does not provide any specific structural details of this integrated
CMOS structure apart from a discussion of the multi-layer CMOS
fabrication techniques employed for the various components of the device.7
In the Background section of the Specification, Appellant notes that
preamplifier ICs are typically formed on wafers by repeated film deposition,
masking, etching, and doping techniques until the individual devices of each
preamplifier are formed. Then, the individual devices are interconnected
using one or more metal layers separated by insulating layers. Vias
interconnect the separated metal layers. In addition, a passivation layer is
typically deposited to protect the IC from damage and/or contamination.

7 Although the Examiner refers to the formation of an oxide layer in
connection with these manufacturing techniques (Ans. 14), the cited
passages merely refer to fabricating the Induction Channel Coils of the
MAC (Henrichs, col. 12, l. 50 - col. 13, l. 2). Nevertheless, Henrichs does
indicate that commensurate multi-layer CMOS fabrication techniques can be
used for other components of the MAC, namely the MAC’s Yoke Cores,
Magnetic Flux Concentration Tips, and Magnetoresistor read elements
(Henrichs, col. 13, l. 3 - col. 14, l. 12). Even if we assume, without
deciding, that the oxide layers used in this fabrication process are merely
temporary masking agents as Appellant alleges (Reply Br. 11), we disagree
with Appellant’s assertion that these fabrication techniques are “wholly
irrelevant.” On the contrary, while Henrichs does not provide specific
details regarding the internal structure of the MAC, the fabrication
techniques described in Henrichs nonetheless suggest that the MAC is a
multi-layered CMOS structure.
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Openings are formed in the passivation layer to allow electrical contact to be
made with the metal layers using solder bumps and traces on the flex circuit
(Spec. ¶ 0008).
According to the Specification, power supply voltages are typically
delivered to the preamplifier IC using a trace and solder bump. After
reaching the IC, power is distributed in the metal layers of the IC (Spec. ¶
0009).
This admitted prior art discussion amply teaches that passivation and
interconnecting layers are well known in preamplifier ICs. Moreover, this
discussion evidences that it is well known to form openings in the
passivation layer to allow electrical contact to be made with the
interconnecting layers.
Therefore, in our view, there is ample suggestion on this record to
provide a passivation layer adjacent to interconnecting layers in the MAC
device of Henrichs to, among other things, protect the IC from
contamination and distribute power via internal conductive layers. We reach
this conclusion mindful that Henrichs strongly suggests that the MAC is a
multi-layer CMOS device as we noted previously.8 Furthermore, based on
these collective teachings, ordinarily skilled artisans would readily recognize
that the external connections of the MAC would be arranged in openings of
the passivation layer to enable electrical contact with the connections.
For the foregoing reasons, we will sustain the Examiner’s rejection of
representative claim 1 based on the collective teachings of Henrichs and the
admitted prior art in the Specification. We will also sustain the Examiner’s
rejection of claim 12 which falls with claim 1.

8 See p. 10 n.7, supra, of this opinion.
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However, we find the Examiner’s reliance on Smith unavailing
essentially for the reasons indicated by Appellant. Smith discloses an
ultrasound transducer array with integrated transmitter and receiver circuitry
for generating and receiving ultrasonic pulses (Smith, Abstract). In Figure
17, transmitter and receiver ICs are disposed in a recess 870. Transmit and
receive element connections are routed through a multilayer ceramic (MLC)
connector 850 to a quarter wave mismatching layer 840 and multilayer
piezoelectric material 820 disposed thereabove (Smith, col. 18, l. 33 - col.
19, l. 35; Figs. 17-18B).
At best, Smith merely teaches providing electrical connections to and
from the ICs in a multilayer ceramic connector. But to assert that this very
limited teaching would somehow suggest providing a passivation layer in
the MAC of Henrichs, let alone disposing the MAC’s external connections
in openings in such a passivation layer, simply strains reasonable limits and
is tantamount to hindsight reconstruction of the invention. Moreover, we
agree with Appellant that Smith is not in the same field of endeavor as
Appellant’s invention. Nor do we find that Smith’s transducer arrangement
is reasonably pertinent to the problem that Appellant is trying to solve. The
specific structural arrangement in Figure 17 is for an entirely different
purpose and functions in an entirely different manner. Therefore, we cannot
sustain the Examiner’s rejection of claims 1-26 based on Henrichs and
Smith.

Dependent Claims 2-11 and 13-26
Although Appellant nominally argues the rejection of dependent
claims 2-11 and 13-26 separately (App. Br. 12; Reply Br. 15), the arguments
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presented do not separately point out with particularity or explain why the
limitations of the dependent claims are separately patentable. Rather,
Appellant merely asserts patentability of the claims for the same reasons
advanced in connection with the independent claims and summarily alleges
patentability of the dependent claims “to the extent they mention further
aspects of the preamplifier IC” (Id.). Since Appellant has not persuasively
rebutted the Examiner’s prima facie case of obviousness for dependent
claims 2-11 and 13-26 based on the collective teachings of Henrichs and the
admitted prior art, we will sustain the rejection of claims 2-11 and 13-26 for
the same reasons discussed above with respect to claims 1 and 12.

The Rejection of Claims 27-52
We now consider the Examiner’s rejection of claims 27-52 under 35
U.S.C. § 103(a) as unpatentable over Kawahara and Smith. The Examiner
finds that Kawahara teaches a preamplifier IC with every claimed feature
except for arranging plural first external connections in a passivation layer
on a substrate including a first trace. The Examiner again cites Figure 17 of
Smith and concludes that arranging plural first external connections via a
passivation layer and solder ball arrangement would have been obvious to
one of ordinary skill in the art (Ans. 7-9).
Regarding independent claims 27 and 40, Appellant argues that the
signals relied upon by the Examiner in Kawahara are all different signals
which are not equivalent to the recited potential that must be independently
distributed to all of the groups and at least one preamplifier in the groups
and are not arranged in openings in a passivation layer. Rather, Appellant
contends different signals in Kawahara are distributed to the groups (App.
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Br. 13; Reply Br. 16). In addition, Appellant argues that both Smith and
Kawahara constitute non-analogous art (App. Br. 14; Reply Br. 17-18).
The Examiner notes that Kawahara teaches providing external power
VE independently of other external connections -- a potential provided to at
least two groups (circuits) (Ans. 18).
We will not sustain the Examiner’s rejection of independent claims 27
and 40 essentially for the reasons indicated by Appellant. As we indicated
previously, we find the secondary reference to Smith non-analogous art and
cannot sustain the Examiner’s rejection on that ground alone. Furthermore,
even if we consider Kawahara’s semiconductor IC device with sense
amplifier relied upon by the Examiner (Kawahara, Fig. 17; col. 12, l. 66 -
col. 14, l. 28) analogous art, the signals YR1, YW1, F21, F11 referred to by
the Examiner on Page 8 of the Answer are all different signals that, in our
view, are not equivalent to the recited potential -- a potential that must be
independently distributed to all of the groups and at least one preamplifier in
the groups as claimed.
Kawahara does indicate that VE is an external power source voltage
(Kawahara, col. 14, ll. 62-63; Fig. 17a). But even assuming that this
external voltage is distributed to multiple circuits as the Examiner indicates
(Ans. 18), we still fail to see how the combined teachings of Kawahara and
Smith teach or would have suggested the recited structural aspects of the
claims, namely, with respect to the external connections being arranged in
openings in a passivation layer adjacent to one or more interconnecting
layers as claimed. Even if Smith were analogous art (which it is not), we
still see no reasonable teaching or suggestion to pick and choose various
aspects of the Smith reference (e.g., the transmit and receive element
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connections routed through the multilayer ceramic (MLC) connector 850)
and apply these unrelated teachings to Kawahara to ostensibly arrive at the
claimed invention.
For at least the foregoing reasons, we will not sustain the Examiner’s
rejection of independent claims 27 and 40 or dependent claims 28-39 and
41-52 for similar reasons.9

DECISION
We have sustained the Examiner's rejections with respect to claims 1-
26. We have not, however, sustained the Examiner’s rejection with respect
to claims 27-52. Therefore, the Examiner’s decision rejecting claims 1-52 is
affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

9 Although we reverse the Examiner’s rejection based on Kawahara and
Smith, the Examiner may wish to consider the potential applicability of the
admitted prior art in the Specification in conjunction with other prior art as it
pertains to the patentability of claims 27-52. We leave this determination to
the Examiner.
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AFFIRMED-IN-PART

eld

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