Ex Parte Maling et al

Patent Trial and Appeal Board

Apr 25, 2018

14730346 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/730,346 06/04/2015
44152 7590 04/27/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Jeffrey C. Maling
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BUR920120101US2 1530
EXAMINER
MOVVA,AMAR
ART UNIT PAPER NUMBER
2898
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY C. MALING, ANTHONY K. STAMPER,
DANA R. DEREUS, and ARTHURS. MORRIS, III
Appeal2017-007388
Application 14/730,346
Technology Center 2800
Before TERRY J. OWENS, BRIAND. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 seeks our review of the
Examiner's rejections of claims 1, 3-5, 7-13, and 15-21.
We have jurisdiction. 35 U.S.C. § 6.
We affirm-in-part.
1 Appellant is the Applicant, International Business Machines Corporation,
which is also identified as the real party in interest. App. Br. 2.
Appeal2017-007388
Application 14/730,346
SUBJECT MATTER
The subject matter on appeal relates to integrated circuit switches
formed from micro electro mechanical systems (MEMS). Spec. ,r 2.
Independent claim 1 (with bracketed matter added) is illustrative of
the claimed subject matter and is copied below:
1. A structure, comprising:
a beam structure [20] located within a cavity;
at least one vent hole [24a] positioned over a free end
[20a] of the beam structure, the at least one vent hole having a
first size which prevents material deposition on the free end of
the beam structure; and
at least another vent hole [24b] positioned over a fixed
end [20b] of the beam structure, the at least another vent hole
having a second size, larger than the first size,
wherein the at least one vent hole is sealed with a first
material [52] and the at least another vent hole is sealed with
the first material and a second material [54], and
the beam structure comprises a MEMS cantilever beam,
the second material is deposited on the fixed end of the MEMS
cantilever beam and the free end of the MEMS cantilever beam
is devoid of the first material.
App. Br. 16.
Figures 4 and 5, reproduced below, are illustrative of the claimed
subject matter:
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Application 14/730,346
20b
56
20a
24b 54
.. ··,· .. ·.· .. ·.·...... ;;a... ... ~"-""" 't' .. · .. -... ~~ .... ~~ ...... ~~ .... · ... · .. · .. . "• "." ·.-." ·. . ' .. ~ . "- . ~ ' " . ·- . . \}'-.::: -. ~}'.?~·~-t . ·. -· ...
',. '' '' '' ,,-, ::···::· ··:;: :::;·: ::.~ ·:::··.:
20b
20a
22
FIG. 4
22
FIG. 5
Figures 4 and 5 depict the sealing processes during beam structure
manufacture. Spec. ,r,r 37-39. According to the Specification, using smaller
vent holes 24a that are positioned over the moving, or free, end 20a of a
MEMS cantilevered beam structure 20 reduces or eliminates the likelihood
that sealing material 52, 54 will be deposited on such moving end.
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Application 14/730,346
Spec. ,r 25. This is beneficial because the deposition of sealing material 52,
54 on the free end negatively affects MEMS performance by, for example,
introducing capacitance stability issues, distorting beam shape, and
increasing beam shape variability. Spec. ,r 5. While sealing material 54 may
form 56 on the fixed end 20b of cantilevered beam structure 20, incidental
deposition of the sealing material on such fixed end of the structure will not
cause the same problems as if it forms on the free end. Spec. ,r 25, Fig. 5.
REJECTIONS
The Examiner maintains the following rejections on appeal:
I. Claim 4 under 35 U.S.C. § 112, fourth paragraph for failing to
further limit the claim from which it depends;
II. Claims 1, 3-5, 7-13, and 15-21 under 35 U.S.C. § 112, second
paragraph as being indefinite;
III. Claims 1, 4, 7, 10-12, and 17-21 under 35 U.S.C. § 102(b) as
anticipated by Vancura (US 7,582,514 B2, issued Sept. 1, 2009);
and
IV. Claims 5 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Vancura.
OPINION
Rejection I
The Examiner finds that claim 4 fails to further limit the structure of
claim 1 because "the subject matter of claim 4 is already included in the
limitations of claim 1." Final Act. 2.
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Application 14/730,346
Relevant to this rejection, claim 1 requires that "the beam structure
comprises a MEMS cantilever beam, [and] the second material is deposited
on the fixed end of the MEMS cantilever beam." Claim 4 requires that "the
second material is deposited on the fixed end of the beam structure."
Appellant contends that this rejection is erroneous because "the
second material can be deposited on any location of the beam structure, not
just the MEMS cantilever beam." App. Br. 7; Reply Br. 6.
This argument is unpersuasive. According to claim 1, the beam
structure comprises a MEMS cantilever beam, and the MEMS cantilever
beam has an amount of a second material deposited on its fixed end.
Therefore, because the limitation recited in claim 4 requiring the second
material to be deposited on the fixed end of the beam structure is already
present in claim 1, Rejection I is sustained.
Rejection II
We need only address the independent claims, claims 1 and 10, which
each recite one or more vent holes that are sealed with a first or second
material.
The Examiner rejects these claims as indefinite because, once sealed,
"it no longer acts as [a] vent hole ... [because] a hole ... that is filled is no
longer a hole let alone a hole that is capable of venting gases." Final Act. 3.
Appellant argues that Figures 4 and 5 show that vent holes 24a and
24b are not eliminated once sealed, and that the skilled artisan would
understand that such sealing does not eliminate the holes. App. Br. 4--5;
Reply Br. 3.
We agree with Appellant. "[C]laims are required to be cast in clear-
as opposed to ambiguous, vague, indefinite-terms" as "[i]t is the claims
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Appeal2017-007388
Application 14/730,346
that notify the public of what is within the protections of the patent, and
what is not." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). "'If the
claims, read in the light of the specifications, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits, the courts can demand
no more."' Id. (quoting Georgia-Pacific Corp. v. U.S. Plywood Corp., 258
F.2d 124, 136 (2d Cir. 1958)). See also In re Moore, 439 F.2d 1232, 1235
(CCP A 1971) ("[T]he definiteness of the language employed must be
analyzed-not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art").
Here, the Specification discusses that forming vent holes [24a and
24b] during manufacture is necessary to remove the sacrificial material and
form a cavity around the MEMS structure. Spec. ,r,r 5, 34, 36. Once the
sacrificial material is removed, the vent holes are sealed. Spec. ,r,r 37-39.
Figures 4 and 5 plainly show that holes 24a and 24b are not eliminated once
sealed. Rather, each hole remains in the structure, despite the presence of
sealing material 52 and/or 54.
Based on such disclosure, we determine that the claims reasonably
apprise the skilled artisan of the invention's scope and are, therefore, not
indefinite. Accordingly, we do not sustain Rejection II.
Rejections III & IV
We need only address independent claims 1 and 10 to decide the
propriety of these rejections. Claim 1 requires "at least one vent hole
positioned over a free end of the beam structure" and "another vent hole
positioned over a fixed end" of such structure. Similar in scope, claim 10
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Application 14/730,346
requires a first and second "set of vent holes" over a moving (i.e., "free")
end and fixed end of a MEMS cantilever beam, respectively.
The Examiner finds that Vancura's Figures 7, 8, and 10 serve as an
anticipatory disclosure of the limitations recited in claims 1 and 10. Final
Act. 4--6. In support of this finding, the Examiner provides an annotated
version ofVancura's Figure 7, illustrated below:
f H,:.aJi first wmt h::::a ~·
m~~~r-... "11r-=: ......... ._._ .......... ..,......,....,......
i:, ~- 1,~, .• · SBE~"l" :~
t,,~0:!::~~:~,,J~"'T"~"""t-'"'""'"~..,.....-
FIG.7
Annotated Figure 7 depicts an epitaxial seal structure having larger vents at
the periphery of a MEMS structure, serving to "avoid redeposition of silicon
or silicon oxide on the SiC anti-stiction coating" during encapsulation of the
structure. Vancura 6:5-12.
Appellant argues, inter alia, that Vancura fails to disclose "that at
least one vent hole is positioned over a free end of the beam structure," and
because Vancura only shows a cross-section view of the beam, it "does not
even show the fixed end of the beam." App. Br. 9. Appellant argues further
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Application 14/730,346
that Vancura' s larger vent hole is positioned over the periphery of the beam
structure, and not over the fixed end as recited in claims 1 and 10. Id.
We agree with Appellant. The Examiner has not explained how the
relied-upon Figures and disclosure of Vancura evince the recited vent holes
"positioned over" the fixed and free ends of the beam structure.
Specifically, in the Answer, the Examiner does not squarely address
Appellant's observation that Vancura shows a cross-section of the beam
structure, and thus cannot teach the holes positioned over a free and fixed
end. App. Br. 9. Rather, the Examiner merely indicates that "the alleged
periphery ... may also be the fixed end ... [because it is] supported by
another layer." Ans. 6. This explanation fails to account, however, for the
cross-sectional nature of the drawing, and conspicuously does not address
what portion of Figure 7 would, under this alternative reading, meet the
recited "free" end.
Furthermore, the Examiner's construction of the term "over" as
simply "higher than," not "directly over," (Ans. 6) is unreasonably broad.
During examination, "the PTO must give claims their broadest reasonable
construction consistent with the specification." In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Here, the Specification
plainly requires the vent holes to be positioned directly over the fixed and
free ends of the beam structure, rather than at a position that may be deemed
peripheral to, but higher than, the beam structure. Spec. ,r,r 25, 32.
Otherwise, it would not be readily apparent to the skilled artisan, or us, why
the sizing constraints of the vent holes - to prevent or minimize the
deposition of sealing material on the free end of the beam structure itself-
is so important. Spec. ,r,r 9, 25.
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For these reasons, we do not sustain Rejection III. We likewise do not
sustain Rejection IV, which relies on the same erroneous findings as does
Rejection III.
DECISION
The Examiner's rejection of claim 4 under 35 U.S.C. § 112, fourth
paragraph is affirmed.
The Examiner's rejection of claims 1, 3-5, 7-13, and 15-21 under 35
U.S.C. § 112, second paragraph is reversed.
The Examiner's rejection of claims 1, 4, 7, 10-12, and 17-21 under
35 U.S.C. § 102(b) is reversed.
The Examiner's rejection of claims 5 and 13 under 35 U.S.C. § 103(a)
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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