Texas Instruments Incorporated

Patent Trials and Appeals Board

Sep 29, 2020

2019003090 (P.T.A.B. Sep. 29, 2020)

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.
15/003,856 01/22/2016 Mona M. Eissa TI-76124 7978
23494 7590 09/29/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
TORNOW, MARK W
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONA M. EISSA, MARK R. KIMMICH,
SUDTIDA LAVANGKUL, SOPA CHEVACHAROENKUL, and
MARK L. JENSON
Appeal 2019-003090
Application 15/003,856
Technology Center 2800

Before ROBERT E. NAPPI, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–15 are pending, stand rejected, are appealed by Appellant,1
and are the subject of our decision under 35 U.S.C. § 134(a). See Final Act.
1; Appeal Br. 16–17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 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 Texas
Instruments, Inc. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Jan. 22, 2016;
Appeal Brief (“Appeal Br.”), filed Oct. 12, 2018; and Reply Brief (“Reply
Br.”), filed Mar. 8, 2019. We also refer to the Examiner’s Final Office
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Application 15/003,856

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CLAIMED SUBJECT MATTER
The claimed subject matter generally relates to fluxgate devices and
“the fabrication of integrated fluxgate devices.” Spec. ¶ 2. More
specifically, Appellant’s claimed subject matter relates to integrated circuits
and devices with a magnetic core structure a first “encapsulation layer”
surrounding the magnetic core structure, a second encapsulation layer
surrounding the first encapsulation layer, the encapsulation layers having
different thermal expansion coefficients (thermal expansion characteristics),
and an oxide layer formed on top of (above) the second encapsulation layer
with a thickness that mitigates thermal stress between the encapsulation
layers. See Spec. ¶¶ 2–5; Abstract. Claims 1 (directed to an integrated
circuit) and 10 (directed to an integrated fluxgate device) are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An integrated circuit, comprising:
a substrate;
a circuit having transistors with active regions developed
on the substrate and a metal layer formed above the active
regions to provide interconnections for the transistors;
a core structure formed above the metal layer;
a first encapsulation layer encapsulating the core
structure and having a first thermal expansion coefficient;
a second encapsulation layer encapsulating the first
encapsulation layer over the core structure and having a second
thermal expansion coefficient different from the first thermal
expansion coefficient; and
an oxide layer formed above the second encapsulation
layer, the oxide layer having an oxide thickness sufficient to

Action (“Final Act.”), mailed June 1, 2018; and Answer (“Ans.”) mailed
Jan. 10, 2019.
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mitigate a thermal stress between, and prevent cracking
attributable to the thermal stress in, the first and second
encapsulation layers.
Appeal Br. 12 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Na et al. (“Na”) US 7,382,123 B2 June 3, 2008
Schatz et al.
(“Schatz”)
US 2014/0077796 A1 Mar. 20, 2014
Iuliano et al.
(“Iuliano”)
US 2014/0167193 A1 June 19, 2014
REJECTIONS3
1. The Examiner rejects claims 1–9 under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the Appellant regards as the invention. See Final Act.
2–3.
2. The Examiner rejects claims 1–8 and 10–15 under 35 U.S.C.
§ 103 as being unpatentable over Iuliano and Na. See Final Act. 3–13.
3. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Iuliano, Na, and Schatz. See Final Act. 12–13.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 103 and 112. Because the present
application has an effective filing date (Jan. 22, 2016) after the AIA’s
effective date, this decision refers to 35 U.S.C. §§ 103 and 112(b).
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ANALYSIS
Indefiniteness Rejection of Claims 1–9
The Examiner rejects independent claim 1 and dependent claims 2–9
as being indefinite. See Final Act. 2–3; Ans. 3–4. Specifically, the
Examiner finds that the oxide thickness limitation—“the oxide layer having
an oxide thickness sufficient to mitigate a thermal stress between . . . the first
and second encapsulation layers” (Appeal Br. 12 (Claim App.) (claim 1))—
is “functional language” (Final Act. 2) and, therefore, the Examiner “is
unable to determine the specific structure which performs the claimed
function (as well as the degree of mitigation required to satisfy the claim)”
(Final Act. 3). See Ans. 3–4.
Appellant contends the oxide layer limitation goes beyond simply
reciting functional language, in that the claim (claim 1) specifically recites
that the “‘oxide layer’ is ‘formed above the second encapsulation layer’” the
purported functional properties of the oxide thickness are “well explained in
the specification.” Appeal Br. 4; see Appeal Br. 4–7; Reply Br. 2–7.
The essence of the requirement under 35 U.S.C. § 112(b), is that the
language of the claims must make clear what subject matter the claims
encompass—i.e., “whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Star Scientific,
Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011)
(quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986)); see In re Packard, 751 F.3d 1307, 1310–14
(Fed. Cir. 2014).
“[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
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words or phrases whose meaning is unclear.’ Put differently, ‘claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms.’” In re McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d at
1310, 1313–14) (citations omitted).
We find the language of claim 1 (and dependent claims 2–9), when
properly construed, would be understood by those skilled in the art, and the
language is not unclear. In particular, we disagree with the Examiner that
one of ordinary skill in the art could not “determine the specific structure
which performs the claimed function” or “the degree of mitigation required
to satisfy the claim.” Final Act. 3. As pointed out by Appellant, the
Specification provides a description of the oxide layer and the oxide
thickness providing the recited functionality. See Appeal Br. 4–7 (citing
Spec. ¶¶ 19–21, 24–27, 39–42); Reply Br. 2–7. Appellant’s Specification
explains that the “minimum thickness . . . of the oxide layer . . . can be based
upon a stress ratio of the thermal stress associated with the longitudinal size
(L) of the magnetic core structure” (Spec. ¶ 26) or “can be at least 85% of
the encapsulation thickness” (Spec. ¶ 27).
The Examiner apparently misconstrues the claim language and does
not explain why, in view of Appellant’s Specification, the disputed language
would be unclear to one of ordinary skill in the art. In light of our findings
and Appellant’s arguments, we find the Examiner fails to sufficiently
explain why one of ordinary skill in the art would not understand what is
claimed by Appellant. Therefore, we do not sustain the Examiner’s
indefiniteness rejection of claims 1–9.
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Obviousness Rejection of Claims 1–8 and 10–15
The Examiner rejects independent claims 1 and 10 (as well as
dependent claims 2–8 and 11–15) over Iuliano and Na. See Final Act. 3–13;
Ans. 4–8. Appellant contends Iuliano and Na do not teach the disputed
limitations of claims 1 and 10. See Appeal Br. 8–10; Reply Br. 8–9.
Specifically, Appellant contends, with respect to claim 1, that neither
Iuliano, nor Na teaches or suggests two distinct encapsulation layers. See
Appeal Br. 8–9; Reply Br. 8–9. Further, Appellant contends, with respect to
claim 10, that Iuliano (cited by the Examiner as teaching two distinct oxide
layers (see Final Act. 9)) does not teach two oxide layers, but instead only
teaches a single oxide layer. See Appeal Br. 9–10; Reply Br. 9.
We agree with Appellant that the Examiner-cited portions of Iuliano
and Na do not teach or suggest the disputed features of claims 1 and 10.
Specifically, with respect to claim 1, neither Iuliano, nor Na describes two
distinct encapsulation layers and, with respect to claim 10, Iuliano does not
describe two oxide layers. The Examiner misconstrues Appellant’s claims
as well as the disclosures of the references.
Appellant’s claim 1 requires two distinct “encapsulation” layers—“a
first encapsulation layer encapsulating the core structure” and “a second
encapsulation layer encapsulating the first encapsulation layer over the core
structure” (Appeal Br. 12 (Claims App.) (claim 1)). Appellant’s
Specification does not explicitly define “encapsulation,” an “encapsulation
layer,” or “encapsulating,” but explains that “encapsulation layers cover[] a
magnetic core” (Spec. ¶ 2; see Spec. ¶ 3). Further, Appellant’s Specification
describes in detail the structure of the encapsulation layers and how the
encapsulation layers are formed—“first encapsulation layer 136 has a
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bottom portion [that] serves as a seed layer for developing the magnetic core
structure 130” and “a top portion to cover and protect the magnetic core
structure 130” (Spec. ¶ 19) and “second encapsulation layer 138 includes a
top portion that covers the first encapsulation layer 136” and “a bottom
portion on which the first encapsulation layer 136 is formed” (Spec. ¶ 20).
See Spec. ¶¶ 19, 20, 34, 37; Figs. 3D—3F. Additionally, as pointed out by
Appellant (see Reply Br. 8), “encapsulate” has a well-understood meaning—
to “enclose in or as if in a capsule.” Webster’s New World College
Dictionary (5th ed. 2011) available at
http://www.yourdictionary.com/encapsulate (last visited Sept. 14, 2010).
This definition is consistent with Appellant’s Specification (supra). We
broadly but reasonably interpret an encapsulation layer, as recited in claim 1
and detailed in the Specification, to superpose beneath and above. Thus, the
recited first encapsulation layer must encase the core structure from beneath
and cover the core structure from above. It follows that the second
encapsulation layer must encase the first encapsulation layer from beneath
and cover the first encapsulation layer from above. The claim requires at
least two layers above and two layers beneath the magnetic core structure.
Iuliano describes a first barrier layer (25, 25’) beneath a magnetic
layer (27, 27’) and a second barrier layer (29, 29’) above (covering) the
magnetic layer. See Iuliano ¶¶ 74, 75, 83; Figs. 10, 14. Iuliano also
describes a protective layer (36) covering the second barrier layer. See
Iuliano ¶¶ 93, 94, 98; Figs. 14–16. Na describes a first insulating layer
(140), an amorphous magnetic core (150), and a second insulating layer
(170). See Na col. 5, l. 31–col. 6, l. 59; Figs. 4E–4O. Iuliano’s barrier
layers (25 and 29) do not cover or encapsulate the magnetic layer (27) from
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above and below, and the second barrier layer does not cover or encapsulate
the first from above and below. Similarly, Na’s insulating layer (140)
covers only the bottom of magnetic core (150) (encloses the core from
beneath), and Na’s insulating layer (170) covers only the top of magnetic
core (150) (encloses the core from above). Neither reference describes two
barriers or insulating layers above and two layers below a magnetic core.
With respect to claim 1, the claim requires two encapsulation layers
(supra). At best Na’s first and second insulating layers (140 and 170)
together partially cover or encapsulate the core (150). See Na Fig. 4O.
Apparently, the Examiner interprets Na’s combination of layers to
encapsulate the core. See Final Act. 5; Ans. 4–8. Such an interpretation
misconstrues Appellant’s claim 1 and Na.
With respect to claim 10, the claim requires two oxide layers (supra).
At best Iuliano teaches a single protective layer. See Iuliano ¶¶ 93, 94, 98;
Figs. 14–16. There is no disclosure of layer 36 being an oxide. The
Examiner’s interpretation of Iuliano’s protective layer (36) as comprising
multiple layers (see Final Act. 9–10; Ans. 9) is not reasonable in view of
Iuliano’s description of a single protective layer.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding Iuliano and Na render Appellant’s claims
1 and 10 obvious. Claims 2–8 and 11–15 depend from and stand with their
respective base claims. Accordingly, Appellant’s contentions persuade us of
error in the Examiner’s obviousness rejection of claims 1–8 and 10–15, and
we reverse the Examiner’s rejection of these claims.
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Obviousness Rejection of Claim 9
The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Iuliano, Na, and Schatz. See Final Act. 12–13. The
Examiner does not suggest Schatz, alone or in combination with Iuliano and
Na, cures the above noted deficiencies of the Iuliano-Na combination
(supra). Therefore, we reverse the Examiner’s obviousness rejection of
dependent claim 9 for the same reasons set forth for claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–9
under 35 U.S.C. § 112(b). Appellant has also shown that the Examiner erred
in rejecting claims 1–15 under 35 U.S.C. § 103. We, therefore, do not
sustain the Examiner’s rejections of claims 1–15.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–9 112(b) Indefiniteness 1–9
1–8, 10–15 103 Iuliano, Na 1–8, 10–15
9 103 Iuliano, Na,
Schatz
9
Overall
Outcome
1–15

REVERSED