Marko Lemke et al.

Patent Trials and Appeals Board

Jul 31, 2019

14037422 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/037,422 09/26/2013 Marko Lemke P53415US 9442
81722 7590 07/31/2019
Viering, Jentschura & Partner mbB - Inf
c/o
444 Brickell Avenue
Suite 51270
Miami, FL 33131
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARKO LEMKE and STEFAN TEGEN
__________

Appeal 2018-006269
Application 14/037,422
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants1 appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3–12, 14 and 16–28. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention is directed to an integrated circuit and battery
structure (Spec. ¶ 1; claims 1 and 14).
Claim 1 is illustrative of the subject matter on appeal:
1. An integrated circuit structure, comprising:
an electronic circuit being arranged on a surface of a carrier;
and
a cavity and a cavity opening arranged within a carrier,
wherein the cavity opening extends from the cavity to the
surface of the carrier; and
a solid state electrolyte battery being at least partially
arranged within the cavity and the cavity opening of the carrier,
wherein the solid state electrolyte battery is conformally
disposed over an inner surface of the cavity and an inner
surface of the cavity opening so that the solid state electrolyte
battery encloses an empty portion of the cavity,
wherein at least a part of the solid state electrolyte battery
arranged within the carrier overlaps with the electronic circuit
along a direction parallel to the surface of the carrier.

App. Br. 21 (Claims Appendix).

Appellants appeal the following rejections:
1. Claims 1, 3–8, 14, and 16–28 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2. Claims 1, 3–8, 14, and 16–28 are rejected under 35 U.S.C. § 112(b) as
being indefinite.

1 The Appeal Brief on page 3 indicates that “Infineon Technologies AG” is
the assignee of record.
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3. Claims 1, 3–8, and 21–24 are rejected under 35 U.S.C. § 102(a)(2) as
unpatentable over Deligianni (US 2012/0043814 Al, published
February 23, 2012).
4. Claims 9–12, 14, and 16–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Deligianni in view of Han (US 8,932,947 B1,
issued January 13, 2015).
5. Claims 25–28 are rejected under 35 U.S.C. § 103 as unpatentable over
Deligianni in view of Han and Cappellani (US 2013/0320455 Al,
published December 5, 2013).

Appellants’ Brief states that only rejections (1) to (3) are on appeal (App.
Br. 9). Because of our decision to reverse the Examiner’s rejections
including the § 102 rejection over Deligianni, we address the merits of the
§ 103 rejections based on Deligianni.

FINDINGS OF FACT & ANALYSIS
Rejection (1): § 112(a)- Written Description
The Examiner’s findings regarding the lack of written description are
located on page 3 of the Final Office Action. The Examiner finds that
claims 1 and 14 recite an “empty portion”, which lacks written descriptive
support (Final Act. 3). The Examiner finds that Appellants’ Figures 4A to
4M do not provide sufficient descriptive support because there is no teaching
within the Specification of a solid state battery enclosing an empty portion
of a cavity and there is no label in any of the figures depicting an empty
portion of the cavity surrounded by a solid state battery (Final Act. 3).
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Appellants argue that their Figure 4M shows a layered battery 106a to
106f conforming to the interior of the cavity 108 with a white area in the
middle (i.e., the empty portion) (App. Br. 12). Appellants contend that
Figures 4A to 4M show the steps used to make the integrated circuit device
and the empty cavity 108 is shown in white in Figure 4I (App. Br. 11).
Appellants argue that the progression of steps shows that empty white cavity
is partially filled by stippled, gray-scaled layers 106a to 106f that conform to
the interior of the cavity 108 and form the battery (App. Br. 12). Appellants
contend that the empty portion of the cavity is white throughout Figures 4H
to 4M such that one of ordinary skill in the art would have understood that
Appellants had possession of an integrated circuit structure where the solid
state electrolyte battery is conformally disposed over an inner surface of the
cavity and an inner surface of the cavity opening so that the solid state
electrolyte battery encloses an empty portion of the cavity (App. Br. 12–13).
The preponderance of the evidence favors Appellants’ argument.
Appellants correctly point out Figure 4I shows an empty cavity by
designating the cavity 108 in white. See Figure 4I and Spec. ¶ 138. The
progression of steps shown in Figures 4I to 4M, show that the center of the
cavity remains white while the gray-scale/stippled layers of battery 106a to
106f are deposited along the interior of the cavity 108 so that the battery
layers enclose the white center portion of the cavity 108 (Fig. 4J to 4M).
Based on these disclosures in the drawings, we find that Appellants have
demonstrated possession of the claimed invention. The Examiner’s findings
that no verbatim disclosure of the claim limitation is provided in the record
is not persuasive. Rather, Appellants may rely on the drawings as a basis for
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establishing written descriptive support. In re Wolfensperger, 302 F.2d 950
(CCPA 1962).
We reverse the Examiner’s rejection for lack of written description.

REJECTION (2): §112(b)
The Examiner determines that claims 1 and 14 are indefinite because
the claim phrase “electrolyte battery encloses an empty portion of the
cavity” is unclear (Final Act. 4). The Examiner determines that the “empty
portion” may refer to a voided region within the battery that is then filled
with battery layers or it may refer to a voided region that exists after the
battery layers are applied to the cavity (Final Act. 4).
Appellants argue that the Examiner has not established that the
“empty” language in claim 1 is unclear (App. Br. 16). Appellants contend
that the claim language plainly states “the solid state electrolyte battery
encloses an empty portion of the cavity.” (App. Br. 16).
A claim is indefinite if one of ordinary skill in the art would not
understand what is claimed when the claim is read in light of the
specification. Orthokinetics v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986). In the present case, the language of claims 1 and 14
is clear that the battery encloses an empty portion of the cavity. As
discussed above with regard to the written description rejection, the
Specification describes in Figures 4A to 4M the process wherein an empty
cavity 108 has battery layers 106a to 106f applied to the interior surface of
the cavity 108 so that an empty portion of the cavity remains enclosed by the
battery. See Fig. 4M. As noted in our discussion of the written description
rejection, Appellants use the color white to designate an empty cavity (Figs.
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4I, 4M, ¶ 138). Because the center of cavity is white as shown in Figure 4M
which depicts the completed battery, one of ordinary skill in the art would
have understood that the center portion of the cavity 108 enclosed by the
battery layers 106a to 106f is empty.
We reverse the Examiner’s indefiniteness rejection.

Rejections (3) to (5): §§ 102(a)(2) and 103
The Examiner finds that Deligianni anticipates the subject of claim 1
(Final Act. 4–5). Regarding the empty portion of the cavity limitation in
claim 1, the Examiner finds that Deligianni’s carrier 120 includes a cavity or
empty portion, which is filled with solid state battery material over the inner
surface of the cavity such that the cavity and its opening is enclosed by the
battery element as shown in Deligianni’s Figure 1 (Final Act. 5). The
Examiner finds that Deligianni’s cavity is devoid of carrier material after its
formation and will remain free of carrier material (Ans. 5). The Examiner
finds that Deligianni’s cavities are enclosed by the electrical features that
overlay them (Ans. 5). The Examiner construes “enclosed” to mean
including a cap, lid, top by the expanse electrical features in Deligianni
(Ans. 5). In other words, the Examiner finds that Deligianni’s electrical
circuitry forms a cap over the cavities holding the batteries.
Appellants argue that Deligianni’s batteries 130a and 130b do not
enclose an empty part of the cavity as recited in claim 1 (App. Br. 18).
Appellants argue that Deligianni’s batteries fill completely the trenches of
the substrate 128 (App. Br. 18).
We construe the claim as requiring the battery to enclose an empty
portion of the cavity. The Examiner has not shown where Deligianni
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teaches this feature. Indeed, the cavities in Deligianni are completely filled
by the battery material 130a, 130b as shown in Deligianni’s Figure 1. We
reverse the Examiner’s § 102(a)(2) rejection over Deligianni.
With respect to the § 103 rejection over Deligianni in view of Han for
independent claim 14, we find that the Examiner does not rely on Han to
teach a battery enclosing an empty portion of the cavity (Final Act. 6).
Rather, the Examiner relies on Han to teach changing the shape of the cavity
(Final Act. 6). The Examiner relies on Deligianni to teach the disputed
limitation. Because we find that the Examiner has not shown where
Deligianni teaches a battery enclosing an empty portion of the cavity
consistent with the above claim construction, we reverse the Examiner’s §
103 rejections for the same reasons.

DECISION

The Examiner’s decision is reversed.

ORDER
REVERSED