QUALCOMM Incorporated

Patent Trials and Appeals Board

Jun 21, 2021

2020005866 (P.T.A.B. Jun. 21, 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.
14/843,964 09/02/2015 Karim ARABI QC151835 4329
23696 7590 06/21/2021
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
EXAMINER
PIZARRO CRESPO, MARCOS D
ART UNIT PAPER NUMBER
2814
NOTIFICATION DATE DELIVERY MODE
06/21/2021 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIM ARABI, RAVINDRA VAMAN SHENOY,
EVGENI PETROVICH GOUSEV, and METE ERTURK
Appeal 2020-005866
Application 14/843,964
Technology Center 2800

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
JENNIFER GUPTA, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–10, 31, 32, and 34.2 See Appeal Br.
8. We have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed September 2, 2015 (“Spec.”); Final Office Action mailed
June 24, 2019 (“Final Act.”); Appeal Brief filed April 6, 2020 (“Appeal
Br.”); Supplemental Appeal Brief filed May 18, 2020 (“Supplemental
Appeal Br.”); Examiner’s Answer mailed June 12, 2020 (“Ans.”), and Reply
Brief filed August 11, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies QUALCOMM Incorporated as the real
party in interest. Appeal Br. 3.
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Application 14/843,964

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We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to integrated circuit devices with
voltage regulators. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of
the claimed subject matter (Supplemental Appeal Br., Claims Appendix 7):
1. A device, comprising:
a system-on-chip (SOC) wafer;
an inductor wafer having first and second surfaces and a
plurality of vias therethrough, the vias forming a plurality of
sidewalls in the inductor wafer, the first surface of the inductor
wafer disposed adjacent to the SOC wafer;
a magnetic layer on and in direct contact with at least a
portion of the first surf ace of the inductor wafer;
a dielectric layer disposed on the magnetic layer; and
a conductive layer disposed on and in contact with the
dielectric layer, on and in contact with at least a portion of the
first surface and with at least a portion of the second surface of
the inductor wafer, and on and in contact with at least some of
the sidewalls formed by the vias in the inductor wafer,
wherein the dielectric layer is in between the conductive
layer and the magnetic layer and in between the conductive
layer and at least a part of the first surface of the inductor wafer.
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Application 14/843,964

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ahn (“Ahn’300”)3 US 6,976,300 B2 Dec. 20, 2005
Ahn (“Ahn’225”) US 2005/0105225 A1 May 19, 2005
Sutardja US 2015/0137342 A1 May 21, 2015

REJECTIONS
1. Claims 1–9, 31, 32, and 34 are rejected under 35 U.S.C. § 103
as being unpatentable over Sutardja and Ahn’300. Final Act.
4–6.
2. Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Sutardja, Ahn’300, and Ahn’225.
Final Act. 6.

OPINION
Rejection 1
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 12. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).

The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Sutardja and Ahn’300, the
Examiner found Sutardja discloses a SOC wafer (204), and inductor wafer

3 The Examiner refers to this reference as “Kie.” Final Act. 4.
Appeal 2020-005866
Application 14/843,964

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(212) with a plurality of vias (240) therethrough, and a conductive layer
(244/260) on the first and second surfaces and some of the sidewalls of the
inductor wafer. Final Act. 4, citing Sutardja Figs. 2, 4. The Examiner found
Sutardja fails to disclose magnetic and dielectric layers, and thus the
arrangement of magnetic and dielectric layers recited in claim 1. Id. The
Examiner found Ahn’300 discloses forming dielectric and magnetic layers to
increase the inductance of the conductive layer. Id. at 5, citing Ahn’300,
Fig. 2; col. 4, ll. 38–40. The Examiner determined it would have been
obvious to have included the magnetic and dielectric layers of Ahn’300 in
the inductor wafer of Sutardja to increase the inductance of the conductor
layer. Id.

Appellant’s Arguments
Appellant argues that Ahn’300 does not correct the deficiencies in
Sutardja identified by the Examiner. Appeal Br. 9–10. In particular,
Appellant argues that even if the magnetic and insulating layers of Ahn’300
are incorporated into the integrated circuit package of Sutardja, the
combination would still fail to render claim 1 obvious. Id. at 11. In this
regard, Appellant contends that Ahn’300 teaches away from a conductive
layer that is in contact with a portion of the first surface and with at least a
portion of the second surface of the inductor wafer, because Ahn’300
discloses the insulating layers electrically isolate the surface conducting
segments of the highly conductive path from the magnetic layers. Id. at 11–
12. Appellant contends that the Examiner’s reliance on different figures in
Ahn’300 for the contact of the conductive layer with the inductor wafer
surface is insufficient, because such figures are directed to different
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Application 14/843,964

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embodiments, which themselves lack features recited in claim 1. Id. at 12–
14.

Issue
Did the Examiner err in determining that the device recited in claim 1,
including an inductor wafer having a magnetic layer, dielectric layer, and
conductive layer with the requirements in the claim would have been
obvious over Sutardja and Ahn’300?

Discussion
We are not persuaded by Appellant’s arguments. In particular,
Appellant’s arguments focus on what each reference discloses individually
rather than what the combination of prior art would convey to one of
ordinary skill in the art. “[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
In this case, Ahn’300 discloses magnetic films formed on substrates
increase the inductance of highly conductive paths. Ahn’300 col. 4, ll. 39–
40. Ahn’300 discloses that substrates may be partially coated with magnetic
materials. Id. at col. 2, ll. 40–64. Ahn’300 discloses “encapsulated
magnetic material layers” where “insulating layers,” which may be
dielectrics are used “to electrically isolate the surface conducting segments
of highly conductive path[] from magnetic material layers.” Id. at col. 4, l.
59 – col. 5, l. 10, Fig. 2.
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Thus, even assuming arguendo, we were to agree with Appellant that
the Figures in Ahn’300 individually do not illustrate certain aspects the
conductive, dielectric, and magnetic layers recited in claim 1 (Appeal Br.
11–14), such arguments are not persuasive of reversible error. As the
Examiner correctly observes, Ahn’300 discloses electrically isolating the
conductive layer from the magnetic layer, but does not disclose isolating the
conductive layer from the inductor wafer. Ans. 9.
In view of Ahn’300, which, as discussed above, discloses substrates
with partial magnetic layers, we are not persuaded that it would have been
beyond the level of ordinary skill to have incorporated an encapsulated
magnetic material layer on a portion of the first surface 216 of Sutardja’s
inductor wafer, e.g., under conductive trace 260, in order to increase the
inductance of the conductive path while maintaining contact between the
conductive trace 260 and conductive pads 256. See Sutardja, Fig. 2. In
KSR, the Supreme Court explained, “[w]hen 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.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Accordingly, we affirm the Examiner’s rejection of claim 1 and the
claims dependent therefrom.

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Application 14/843,964

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Rejection 2
Regarding the rejection of claim 10 as obvious over Sutardja,
Ahn’300, and Ahn’225, the Examiner relied on Ahn’225 for the disclosure
of quartz substrates. Final Act. 6. Appellant does not separately argue this
rejection. See Appeal Br. 12.
Accordingly, we affirm the Examiner’s rejection of claim 10 for
similar reasons as discussed above with respect to Rejection 1.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 31, 32,
34
103 Sutardja, Ahn’300 1–9, 31, 32, 34
10 103 Sutardja, Ahn’300,
Ahn’225
10
Overall
Outcome
1–10, 31, 32,
34

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED