Ex Parte Whitworth et al

Patent Trial and Appeal Board

Sep 24, 2012

11564241 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ADAM J. WHITWORTH and WENJIANG ZENG
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Appeal 2010-008970
Application 11/564,241
Technology Center 3700
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Before: KEN B. BARRETT, BRETT C. MARTIN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008970
Application 11/564,241

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STATEMENT OF THE CASE
Adam J. Whitworth and Wenjiang Zeng (Appellants) appeal under 35
U.S.C. § 134(a) from a decision finally rejecting claims 1-11 and 14-16. We
have jurisdiction under 35 U.S.C. § 6(b)(1).
We REVERSE.

The Claimed Subject Matter
According to Appellants, the claimed invention relates to “a high
density planarized inductor, as well as high density combination [sic] of
inductors, and a method of making the same.” Spec. 1, para. [0001]. Claim
1, reproduced below, is illustrative of the claimed subject matter.

1. A method of making at least one high density
planarized inductor having interwound conductive
elements comprising the steps of:
forming a first conductive element over an insulator on
a substrate of a semiconductor device, the first conductive
element having a first coil shape with a first plurality of
coils in which the conductive element has a width and
there exists a spacing adjacent the width that causes the
plurality of coils;
forming an insulator over the first conductive element,
the insulator having sidewalls and creating therebetween a
void with a void width that has a second coil shape; and
creating a second conductive element on the substrate,
the second conductive element having the second coil
shape with a second plurality of coils, wherein the second
plurality of coils have the second coil shape that is that of
the void and the void width, wherein
each of the at least one high density planarized
inductor comprises one or more of the first and second
conductive elements.

Appeal 2010-008970
Application 11/564,241

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Rejection
The Examiner rejected claims 1-11 and 14-16 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
on account of three phrases appearing in claim 1, namely:
(1) “A method of making at least one high density
planarized inductor”;

(2) “forming a first conductive element over an insulator on a
substrate of a semiconductor device”; and

(3) “each of the at least one high density planarized inductor
comprises one or more of the first and second conductive
elements.”

Fin. Rej. 2. The Examiner, however, subsequently agreed that the first and
third phrases are adequately supported by the Specification and maintains
the rejection only on account of the second phrase: “forming a first
conductive element over an insulator on a substrate of a semiconductor
device[.]” Ans. 2-3.

OPINION
Claim 1 requires, in relevant part, “forming a first conductive element
over an insulator on a substrate of a semiconductor device” (emphasis
added). The Examiner asserts that this phrase is not described in the
Specification. Ans. 3.
To satisfy the written description requirement, the Specification must
“reasonably convey[] to those skilled in the art that the inventor[] had
possession of the claimed subject matter as of the filing date.” Ariad
Appeal 2010-008970
Application 11/564,241

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Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Whether it does is a question of fact. Id.
“[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology.” Id. (citing
Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The claimed
invention need not be recited in haec verba in the original specification to
satisfy the written description requirement. Ariad Pharms., 598 F.3d at
1352.
Claim 1, as filed, did not include the phrase “on a substrate of a
semiconductor device[.]” Spec. 6. In discussing embodiments of the
claimed invention, the Specification refers to and illustrates “a substrate
310” but does not expressly state that it is a substrate of a semiconductor
device. See, e.g., Spec. 3, para. [0019], Figs. 3A-3D. Appellants argue,
however, that “[t]he person of ordinary skill in the art would have read
originally filed claim 1 in the context of semiconductors and integrated
circuits[.]” App. Br. 8. Appellants further state that “[t]he subject
Application is directed to inductors that are constructed on the substrate of a
semiconductor device” and that “[t]he Background of the Invention
expressly sets the context of the claimed invention within the field of
semiconductors and integrated circuits [see ¶¶ 1-5].” App. Br. 7 (quoting
Spec. 1, paras. [0001]-[0005]).
The Background of the Invention of the Specification does refer to
semiconductor devices. Spec. 1, paras. [0002]-[0004]. Indeed, the
Examiner concedes as much, stating: “the back ground [sic] of the invention
describes to make [sic] the electrical device in the field of the semiconductor
Appeal 2010-008970
Application 11/564,241

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device[.]” Ans. 5. Nevertheless, the Examiner finds that the Specification
does not sufficiently describe the claim recitation, apparently because the
substrate identified in the embodiments of the claimed invention is not
expressly identified as a substrate of a semiconductor device. Ans. 5.
We disagree with the Examiner and find that the Specification
“reasonably conveys to those skilled in the art that the inventors had
possession of the claimed subject matter as of the filing date.” See Ariad
Pharms., 598 F.3d at 1351. More specifically, we find that the
Specification is directed to inductors and conductive elements that are
constructed on the substrate of a semiconductor device, as argued by
Appellants. Appellants discuss the use of inductors on semiconductor
devices in the Background of the Invention, and conclude that the prior art
inductors’ “various configurations . . . all suffer from a disadvantage of
using a considerable amount of area on the semiconductor chip.” Spec. 1,
para. [0004].
Accordingly, we reverse the decision to reject claim 1 and claims 2-11
and 14-16, which depend from claim 1.

DECISION
The Examiner’s decision to reject claims 1-11 and 14-16 is reversed.

REVERSED

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