Qorvo US, Inc.

Patent Trials and Appeals Board

Apr 19, 2021

2020003727 (P.T.A.B. Apr. 19, 2021)

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.
15/334,459 10/26/2016 Matthew Ryder 0468.016213US10 1766
146206 7590 04/19/2021
MRG/Qorvo
c/o Mueting Raasch Group
111 Washington Ave. S., Suite 700
Minneapolis, MN 55401
EXAMINER
TAN, RICHARD
ART UNIT PAPER NUMBER
2849
NOTIFICATION DATE DELIVERY MODE
04/19/2021 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW RYDER, RIO RIVAS, and THAYNE EDWARDS
Appeal 2020-003727
Application 15/334,459
Technology Center 2800
Before MONTÉ T. SQUIRE, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed October 26, 2016
(“Spec.”); the Non-Final Office Action mailed October 11, 2019 (“Non-
Final Act.”); the Appeal Brief filed October 31, 2019 (“Appeal Br.”); the
Examiner’s Answer mailed February 21, 2020 (“Ans.”); and the Reply Brief
filed April 17, 2020 (“Reply Br.”).
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Application 15/334,459

2
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6–17 and 20–22.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The subject matter of the present application relates to a micro-
electro-mechanical system (MEMS) resonator device and a method of
fabricating the device. Spec. ¶¶ 12, 20. A binding material is formed over
the resonator device to detect the presence of chemical or biological agents.
Id. ¶ 8. The dimensions of this binding material are configured relative to
dimensions of the resonator device to enhance the sensor response. Id. ¶ 11.
Figure 6 of Application 15/334,459, which is illustrative of the subject
matter on appeal, is reproduced below:

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Qorvo US, Inc.
Appeal Br. 2.
3 Claims 5, 18, and 19 are pending and objected to as being dependent on a
rejected base claim. Non-Final Act. 23. We do not consider the objection in
this appeal because the objection is a petitionable matter under 37 C.F.R.
§ 1.181 and is not within the jurisdiction of the Patent Trial and Appeal
Board. See 37 C.F.R. § 1.181 (2018).
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Application 15/334,459

3

Figure 6 is a partial cross-sectional view of an embodiment of
Appellant’s MEMS resonator device that includes bottom side electrode 40,
piezoelectric material 42, and top side electrode 48. Id. ¶ 90. Active area 50
is the region in which top side electrode 48 and bottom electrode 40 overlap.
Id. ¶¶ 21, 65. Functionalization material 58 is formed over central portion 76
of active region 50, e.g., extending a maximum length in a range of from
about 20% to about 95% of an active area length and extending a maximum
width in a range of from about 50% to 100% of an active area width, of the
resonator. Id. ¶¶ 11, 90.
Independent claim 1, reproduced below from the Claim Appendix of
the Appeal Brief, with emphasis to highlight key disputed limitations, is
illustrative of the claimed subject matter:
1. A micro-electrical-mechanical system (MEMS)
resonator device comprising:
a substrate;
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Application 15/334,459

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a bulk acoustic wave resonator structure arranged over at
least a portion of the substrate, the bulk acoustic wave resonator
structure including a piezoelectric material, a top side electrode
arranged over a portion of the piezoelectric material, and a
bottom side electrode arranged between the piezoelectric
material and the substrate, wherein a portion of the piezoelectric
material is arranged between the top side electrode and the
bottom side electrode to form an active region, the top side
electrode comprises an active area portion that overlaps the
bottom side electrode and is coincident with the active region,
the active area portion includes an active area width, and the
active area portion includes an active area length extending
perpendicular to the active area width; and
at least one functionalization material arranged over at
least a central portion of the top side electrode, wherein the at
least one functionalization material extends a maximum
length in a range of from about 20% to about 95% of the
active area length and extends a maximum width in a range
of from about 50% to 100% of the active area width.
Appeal Br. 19 (Claims App.) (emphasis added).
Independent claim 16 is directed to a method for fabricating a MEMS
resonator device where the method includes depositing the same
functionalization material as recited in claim 1. Id. at 21–22 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal (Ans. 3;
Final Act. 2–23):
Rejection 1: Claims 1, 2, 7–12, and 16 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Mastromatteo ’494;4

4 Mastromatteo et al., US 8,448,494 B2, issued May 28, 2013.
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Rejection 2: Claims 1–4, 6–12, 16, and 17 are rejected under
35 U.S.C. § 102(a)(1) as anticipated by Mastromatteo ’410;5
Rejection 3: Claims 3 and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Mastromatteo ’494 in view of Zhang;6
Rejection 4: Claims 4, 6, 13–15 and 20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Mastromatteo ’494 in view of Zhang and
Feucht;7
Rejection 5: Claims 21 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Mastromatteo ’494;
Rejection 6: Claims 13–15 and 20 are rejected under 35 U.S.C. § 103
as unpatentable over Mastromatteo ’410 in view of Zhang and Feucht; and
Rejection 7: Claims 21 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Mastromatteo ’410.
DISCUSSION
Rejection 1 – Anticipation by Mastromatteo ’494
Appellant argues for the patentability of claims 1 and 16. Appeal Br.
4–8. Appellant does not present separate patentability arguments with
respect to claims 2 or 7–12. Id. at 8. We focus our discussion on
representative claim 1 because it contains the disputed functionalization
material limitation emphasized above. See 37 C.F.R. § 41.37(c)(1)(iv). We,
however, note that Appellant’s arguments and our analysis also apply to
claim 16, which contains the disputed functionalization material limitation
as well.

5 Mastromatteo et al., US 2010/0163410 A1, published July 1, 2010.
6 Zhang et al., US 2005/0148065 A1, published July 7, 2005.
7 Feucht et al., US 2006/0125489 A1, published June 15, 2006.
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The Examiner finds that Mastromatteo ’494 teaches claim 1’s MEMS
resonator device. Non-Final Act. 2. Specifically, the Examiner finds that
Mastromatteo’s Figure 1, which is reproduced below, as well as Figures 7–9,
10a, and 10b show supporting region 16 (corresponding to claim 1’s
“functionalization material”) arranged over a central portion of an active
area of top electrode 15 where the “functionalization material extends a
maximum length in a range from about 20% to about 95% of the active area
length, and extends a maximum width in a range of from about 50% to
100% of the active area width” as required by claim 1. Id. at 3–4.

Figure 1 above is a cross-section of an embodiment of Mastromatteo
’494’s integrated electronic microbalance.
The Examiner admits that Mastromatteo ’494 does not explicitly
disclose the claimed functionalization/active area length and width ratio
ranges, but maintains that the ranges are anticipated because one of ordinary
skill in the art would understand Mastromatteo ’494’s drawings as teaching
such ranges. Ans. 4.
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Appellant argues the drawings are not taught as being to scale and
cannot be relied for teaching the dimensions of a functionalization
material/active area as claimed. Appeal Br. 5. Appellant additionally argues
that, even if the drawings were drawn to scale, the drawings only illustrate
the extent of material 16 in one direction and cannot be relied on to
anticipate the functionalization/active area length and width ratio ranges
recited in claim 1. Id. at 6.
Appellant’s arguments are persuasive of reversible error. To serve as
an anticipatory reference, “the reference must disclose each and every
element of the claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009). In the context of claim 1, this includes the functionalization
material/active area length and width ratio ranges. “[I]t is well established
that patent drawings do not define the precise proportions of the elements
and may not be relied on to show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group
Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). Because Mastromatteo ’494 does
not indicate that its drawings are to scale, and the Examiner admits that
Mastromatteo ’494 fails to disclose any dimensions for supporting region 16
(the “functionalization material”) (Ans. 4), the Examiner has not established
that Mastromatteo ’494 discloses dimensions of a functionalization
material/active area that falls within the claimed ranges.
The drawings, at best, teach a “functionalization material” (supporting
region 16) having an extension that is smaller, in one direction, than that of
the active area of top electrode 15. Mastromatteo ’494 Fig. 1. As Appellant
persuasively argues, a general teaching that the functionalization material is
smaller in a length or width direction than the active area of top electrode 15
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is not the same as disclosing the specific ranges recited in claim 1. Appeal
Br. 7.
The Examiner finds that Mastromatteo ’494 discloses the importance
of controlling the amount of mass deposited on supporting region 16 (the
“functionalization material”) and that from this disclosure, one of ordinary
skill in the art would interpret the dimensions depicted in the drawings as
falling within the claimed ranges. Ans. 4–5; Mastromatteo ’494 4:1–28.
However, as Appellant persuasively argues, Mastromatteo ’494 makes no
mention of any amount of mass that is sufficient and makes no connection
between the mass and the dimensions of the functionalization material.
Reply Br. 4. Further, the claimed ranges are not just dimensions of the
functionalization material, but rather a ratio between the dimensions of the
functionalization material and the active area of the top side electrode.
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). For
the reasons discussed above, on the record before us, we are persuaded the
Examiner has failed to meet the requisite burden to establish that
independent claim 1 is anticipated by Mastromatteo ’494. Appellant having
identified a reversible error, we do not sustain the rejection of claims 1, 2, 7–
12, and 16 under 35 U.S.C. § 102(a)(1) based on Mastromatteo ’494.
Rejection 2 – Anticipation by Mastromatteo ’410
Appellant argues claims 1 and 16 are not anticipated by Mastromatteo
’410. Appeal Br. 8. Appellant does not present separate arguments for the
patentability of claims 2–4, 6–12, or 17. Id. at 10. We again focus our
discussion on representative claim 1 because it contains the disputed
functionalization material limitation emphasized above. See 37 C.F.R.
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§ 41.37(c)(1)(iv). We, however, note that the arguments and analysis also
apply to claim 16, which contains the disputed functionalization material
limitation as well.
The Examiner finds that Mastromatteo ’410 teaches the device of
claim 1. Non-Final Act. 5. Specifically, the Examiner finds that Figure 3,
which is reproduced below, and Figure 7 show the dimensions of detecting
layer 34 and probe segments 35 (corresponding to claim 1’s
“functionalization material”) arranged over a central portion of the active
area of upper electrode 30 (the region where bottom electrode 26 overlaps
upper electrode 30) where the “functionalization material extends a
maximum length in a range from about 20% to about 95% of the active area
length, and extends a maximum width in a range of from about 50% to
100% of the active area width” as recited in claim 1. Id. at 6.

Mastromatteo ’410’s Figure 3 above is an enlarged, cross-sectional
view of an embodiment of its electronic detection device.
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The Examiner concedes that Mastromatteo ’410 does not explicitly
disclose the claimed functionalization/active area length and width ratio
ranges, but maintains that the ranges are anticipated because one of ordinary
skill in the art would understand Mastromatteo ’410’s drawings as teaching
such ranges. Ans. 6.
As with Rejection 1 discussed above, Appellant argues that the
drawings fail to anticipate the claimed ranges of claim 1. Appeal Br. 8.
Specifically, Appellant argues that the drawings cannot be relied upon to
show particular sizes, and that the drawings only illustrate either a length or
a width. Id. at 9–10.
Appellant’s arguments are persuasive of reversible error for reasons
similar to those discussed above regarding Rejection 1. The Examiner
admits Mastromatteo ’410 fails to explicitly disclose the dimensions for the
“functionalization material” (Ans. 6). Although the drawings in
Mastromatteo ’410 depict the length or width of the “functionalization
material” (sensing layer 34 and probe segments 35) as being smaller than the
length or width direction of the active area of upper electrode 30, the
Examiner has not established that Mastromatteo ’410 discloses dimensions
of a functionalization material/active area that falls within the claimed
ranges. Thus, on the record before us, we are persuaded that the Examiner
has failed to meet the burden to establish that independent claim 1 is
anticipated by Mastromatteo ’410. Appellant having identified a reversible
error, we do not sustain the rejection of claims 1–4, 6–12, 16, and 17 under
35 U.S.C. § 102(a)(1) over Mastromatteo ’410.
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Rejection 5 – Obviousness over Mastromatteo ’494
The Examiner rejects claims 21 and 22 under 35 U.S.C. § 103 over
Mastromatteo ’494. Non-Final Act. 14.
Claim 21 depends from claim 1 and requires “the at least one
functionalization material extends a maximum length in a range from about
40% to 90% of the active area length and extends a maximum width in a
range from about 70% to 95 % of the active area width.” Appeal Br. 23
(Claims App.).
We focus our discussion on claim 21, but note that Appellant’s
arguments and our analysis also apply to claim 22, which requires a slightly
narrower range of length and width ratio ranges than claim 21.
In rejecting claim 21, the Examiner determines that it would have
been obvious to one of ordinary skill in the art, from the teachings of
Mastromatteo ’494, to arrive at claim 21’s ranges as a matter of design
choice through a mere change in size, or by optimizing the parameters
through routine experimentation. Non-Final Act. 15. To support this
determination, the Examiner cites In re Rose, 220 F.2d 459 (CCPA 1955) for
the proposition that a change in size is generally recognized as within the
level of ordinary skill in the art, and cites In re Aller, 220 F.2d 454, 456
(CCPA 1955) for the proposition that “where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” Non-Final Act.
15.
Appellant argues that the Examiner failed to provide sufficient
evidence to support a conclusion that the claimed functionalization
material/active area length and width ratio ranges would have been an
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obvious design choice within the skill in the art. Appeal Br. 14. Specifically,
Appellant argues that Mastromatteo ’494 fails to recognize a benefit of the
length and the width of the “functionalization material” area (supporting
region 16) relative to the active area of the top side electrode (top electrode
15),8 therefore one of ordinary skill in the art would not arrive at the claimed
ratio ranges as a matter of design choice. Id. Additionally Appellant also
argues that Mastromatteo ’494 fails to identify the claimed ratio as a result-
effective variable, which is a prerequisite for a finding that optimizing the
variable to arrive at the claimed ranges would have been obvious to one of
ordinary skill in the art. Id. at 15.
Appellant’s arguments are persuasive of reversible error. The
Examiner’s reliance on In re Rose is misplaced. In Rose, the appellant
argued that the claimed “lumber package” was large and required a lift truck
for handling, whereas the prior art packages (a package of relatively small
pieces of lumber and a package of window screen frames) could be lifted by
hand. Rose, 220 F.2d at 463. The court held that “this limitation [(i.e., size
and weight of the package)] is [not] patentably significant since it at most
relates to the size of the article under consideration which is not ordinarily a
matter of invention.” Id. (citation omitted). Here, in contrast, the Examiner
proposes modifying the dimensions of one component of Matsumoto’s
device, a “functionalization material” (supporting region 16), with respect to
the dimensions of another component of Matsumoto’s device, top electrode
15. The court in Rose did not address such a situation. The Examiner’s

8 Appellant’s Specification teaches that the size, dimensions, and shape of
the functionalization material impact the device’s performance. Spec. ¶¶ 11,
89.
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proposed modification in the present appeal is more than simply a change in
size of the functionalization material, and on this record, it is not clear why
the modification of Mastromatteo ’494 as proposed by the Examiner is
simply an obvious design choice.
Additionally, obviousness based on optimization requires that the
claimed variable be recognized by the prior art as being a result-effective
variable. In re Aller, 220 F.2d at 456. In situations where there is “essentially
no disclosure of the relationship” between the variable and any result, the
disclosure is insufficient to find a variable result effective. In re Antonie, 559
F.2d 618, 620 (CCPA 1977). In claim 21, there are two claimed variables—
the ratio of functionalization length to active area length of the top side
electrode and the ratio of functionalization width to active area width of the
top side electrode. Mastromatteo ’494’s disclosure does not discuss either of
these ratios, or even the individual dimensions that make up the ratios, let
alone that these variables affect performance.
In the Answer, the Examiner responds that Mastromatteo ’494
discloses a relationship between the mass of the substance which is
deposited on the “functionalization material” (supporting region 16) during
operation and the frequency of the resonator. Ans. 7–8. Although the mass
of the deposited substance may have a relation to the area of the
functionalization material, the claim recites ratios that include parameters
that do not contribute to this area—the active area length and width. The
connection to the claimed ratios is too attenuated to conclude that one of
ordinary skill in the art would arrive within the required ranges by simply
optimizing the mass of the substance deposited on the “functionalization
material” in Mastromatteo ’494.
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For the foregoing reasons, we do not sustain the rejection of claims 21
and 22 under 35 U.S.C. § 103 over Mastromatteo ’494.
Rejections 3–4 – Obviousness over ’494 in view of Zhang and Obviousness
over ’494 in view of Zhang and Feucht
The Examiner’s rejection over Mastromatteo ’494 in view of Zhang,
alone or further in view of Feucht are premised on the same deficient factual
findings and reasoning regarding Mastromatteo ’494 as discussed above
with respect to Rejection 1. Non-Final Act. 9, 10. The Examiner does not
rely on Zhang or Feucht to cure the deficiencies of Mastromatteo ’494. Id. at
9–14. Thus, for the reasons discussed above, we do not sustain the § 103
rejections of claims 3, 4, 6, 13–15, 17, and 20.
Rejection 7 – Obviousness over Mastromatteo ’410
Appellant argues that Examiner has not established a prima facie case
that claims 21 and 22 are obvious over Mastromatteo ’410. Appeal Br. 16.
We focus our discussion on claim 21, but note that Appellant’s arguments
and our analysis also apply to claim 22, which requires a slightly narrower
range of length and width ranges than claim 21.
As with the obviousness rejection over Mastromatteo ’494 discussed
above, the Examiner determines it would have been obvious to one of
ordinary skill in the art, from the teachings of Mastromatteo ’410, to arrive
at the claim 21’s ranges as a matter of design choice through a mere change
in size, or by optimizing the parameters through routine experimentation.
Non-Final Act. 21.
Appellant contends that Examiner has failed to provide sufficient
evidence to support a conclusion that the claimed functionalization/active
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area length and width ratio ranges would have been an obvious design
choice within the skill in the art. Appeal Br. 17. Specifically, Appellant
repeats the same arguments as set forth above with respect to Rejection 5.
Appellant’s arguments are persuasive of reversible error, for the
reasons set forth with respect to Rejection 5. While the disclosure of
Mastromatteo ’410 is not identical to that of Mastromatteo ’494, the
rejection suffers the same deficiencies. Thus, for the same reasons as
discussed above, we do not sustain the rejection of claims 21 and 22 under
35 U.S.C. § 103 over Mastromatteo ’410.
Rejection 6 – Obviousness over Mastromatteo ’410 in view of Zhang and
Feucht
The Examiner’s rejection over Mastromatteo ’410 in view of Zhang
and Feucht are premised on the same deficient factual findings and
reasoning regarding Mastromatteo ’410 as discussed above with respect to
Rejection 2. Non-Final Act. 17. The Examiner does not rely on Zhang or
Feucht to cure the deficiencies of Mastromatteo ’410. Id. at 17–18. Thus, for
the reasons discussed above, we do not sustain the § 103 rejection of
claims13–15 and 20.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 7–12,
16
102(a)(1) Mastromatteo ’494 1, 2, 7–12,
16
1–4, 6–12,
16, 17
102(a)(1) Mastromatteo ’410 1–4, 6–12,
16, 17
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3, 17 103 Mastromatteo
’494, Zhang
3, 17
4, 6, 13–15,
20
103 Mastromatteo
’494, Zhang,
Feucht
4, 6, 13–15,
20
21, 22 103 Mastromatteo ’494 21, 22
13–15, 20 103 Mastromatteo
’410, Zhang,
Feucht
13–15, 20
21, 22 103 Mastromatteo ’410 21, 22
Overall
Outcome
1–4, 6–17,
20–22

REVERSED