Robert Bosch GmbH et al.

Patent Trials and Appeals Board

Dec 30, 2021

2021002971 (P.T.A.B. Dec. 30, 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.
15/301,226 09/30/2016 Ando Lars Feyh 1576-1667 7585
10800 7590 12/30/2021
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
TRAN, TRAN M.
ART UNIT PAPER NUMBER
2855
MAIL DATE DELIVERY MODE
12/30/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDO LARS FEYH and GARY O'BRIEN
Appeal 2021-002971
Application 15/301,226
Technology Center 2800
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–8, 17, 18, and 20–25.3
We affirm in part.

1 The following documents are of record: Specification filed September 30,
2016 (“Spec.”); Final Office Action dated May 13, 2020 (“Final Act.”);
Appeal Brief filed October 12, 2020 (“Appeal Br.”), citations to pages 28–
30 being to the Claims Appendix; Examiner’s Answer dated January 25,
2021 (“Ans.”); and Reply Brief filed March 18, 2021 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Robert Bosch GmbH. Appeal
Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The invention relates to microscale membrane sensors. Spec. ¶ 1. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A membrane-based sensor, comprising:
a membrane layer defining a membrane plane and
including an upper surface and a lower surface facing away
from one another relative to the membrane plane;
a backside trench defined on a lower side by the lower
surface;
a central cavity defined on a first side by the upper
surface;
a cap layer positioned above the central cavity and the
upper surface; and
a first spacer extending from the cap layer to the upper
surface of the membrane layer and integrally formed with the
cap layer, the first spacer having (i) a first inner surface that
defines a second side of the central cavity and (ii) a first outer
surface that faces away from the first inner surface, the first
spacer directly contacting the upper surface to define an inner
membrane portion of the membrane layer.
Appeal Br. 28.
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103:
1. claims 1–5, 7, 17, 18, and 20–22 over Loeppert (US 6,535,460
B2, issued March 18, 2003) and Hussain (US 2013/0214370 A1, published
August 22, 2013);
2. claims 6, 8, and 23 over Loeppert, Hussain, and McNeil
(US 8,387,464 B2, issued March 5, 2013);
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3. claim 24 over Loeppert, Hussain and Dehe (US 9,516,428 B2,
issued December 6, 2016); and
4. claim 25 over Loeppert, Hussain, and Chen (US 2015/0109889
A1, published April 23, 2015).
OPINION
The Appellant argues each ground of rejection. We discuss the rejection
of each of the separately argued claims below. The remaining claims stand or
fall with the claim(s) from which they depend.
Claim 1:
The Appellant argues that the Examiner reversibly erred in finding that
the ordinary artisan would have modified Loeppert to include Hussain’s
backside trench. See Appeal Br. 4–8. The Appellant’s arguments are not
persuasive because the Appellant misapprehends and, therefore, fails to
identify error in, the Examiner’s fact finding and reasoning. As explained by
the Examiner, Hussain was relied upon as evidence that Loeppert’s structure
inherently includes a backside trench. Ans. 4. “No actual modification to the
structural design and function of Loeppert’s pressure sensor was ever
proposed in view Hussain.” Id.
“[W]hen the prior art evidence reasonably allows the PTO to conclude
that a claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’” In
re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d
705, 708 n.3 (Fed. Cir. 1990)). Because the Appellant has not produced
persuasive evidence to refute the Examiner’s finding that Loeppert’s structure
inherently includes a backside trench, we sustain the rejection of claim 1.
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Claim 3:
Claim 3 depends from claim 1 and recites: “a cap electrode defined in a
portion of the cap layer directly above the central cavity.” Appeal Br. 28. The
Examiner found that the claim 3 limitation reads on Loeppert’s conducting
electrode 14, which is attached to non-conductive perforated member 40 in an
area above air gap 20. See Final Act. 6. The Appellant argues that the claim
language requires that “the cap layer portion . . . show the outline of the cap
electrode within the limits of the cap layer.” Appeal Br. 10.
In response, the Examiner states that the rejection is based on an
interpretation of the claim term “cap layer” as reading on the area of
Loeppert’s structure extending from the top of dielectric layer 31 to the top of
perforated member 40. See Ans. 6 (including annotations to Loeppert Figure
5). As argued by the Appellant, the area identified by the Examiner includes
not only Loeppert’s perforated member 40 and electrode 42, but also support
structures 41. Reply Br. 3; see Ans. 6.
The Appellant argues that if the cap layer is interpreted as reading on
both Loeppert’s membrane 40 and support structure 41, then support structure
41 does not meet the claim 1 recitation, “a first spacer extending from the cap
layer.” Reply Br. 3; see Final Act. 5 (“a first spacer extending from the cap
layer to the upper surface of the membrane layer and integrally formed with
the cap layer (i.e., support 41 in the perforated member 40)”).
We agree with the Appellant that the Examiner’s interpretation of the
claim 3 term “cap layer” as encompassing Loeppert’s support structures is
inconsistent with the Specification’s description of the spacers and the cap
layer as distinct structures. See, e.g., Spec. ¶ 28 (“The second oxide layer 210
includes a plurality of spacers located between the cap layer 206 and the
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intermediate layer 204.”), ¶ 30 (“A peripheral trench portion 215 spaced
outwardly from the central trench portion 214 laterally isolates at least two
spacer portions 246 within the cap layer 206. A first of the spacer portions 246
is anchored to the first of the inner spacers 232 and a second of the spacer
portions 246 is anchored to the second of the inner spacers 232.”), ¶ 36 (“The
etching process forms a central cavity 312 between the inner spacers 332, the
intermediate layer 304, and the cap layer 306.”). Because the claim term “cap
layer” cannot be reasonably interpreted as including support structures 41 (the
inner spacers), Loeppert’s electrode, attached to membrane 40’s (the cap
layer’s) base is not “defined in a portion of the cap layer” as required by claim
3.
The rejection of claim 3 is reversed.

Claim 4:
Claim 4 depends from claim 1 and recites “a second spacer extending
from the cap layer” and “directly contacting the [membrane layer’s] upper
surface to define an outer membrane portion of the membrane layer disposed
between the first spacer and the second spacer.” Appeal Br. 29. The Appellant
argues that the Examiner reversibly erred in finding that Loeppert discloses
the claim 4 limitations because “Loeppert clearly show[s] the outer perimeter
of the diaphragm 12 terminating directly beneath the support structure 41 (the
alleged first spacer). In other words, no portion of the diaphragm 12 extends
laterally outward from the support structure 41.” Appeal Br. 13.
In response, the Examiner explains that the rejection is based on an
interpretation of “the membrane layer” as encompassing Loeppert’s
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conducting diaphragm 12 and the layer of springs 11 that attach diaphragm 12
to substrate 30. See Ans. 7–8.
The Examiner’s interpretation is supported by the Specification’s
description of the membrane layer as including inner membrane 224 and outer
membrane 248. See Spec. ¶¶ 31–32. “The inner membrane 224 and the
electrode 242 collectively define a capacitor within the sensor device 200.” Id.
¶ 31. “[T]he outer membrane 248 does not provide an electrical function and,
instead, provides only mechanical function.” Id. ¶ 32. Further, a broad
interpretation of independent claim 1’s—and, thus, claim 4’s— “membrane
layer” as encompassing a multi-part, discontinuous layer is supported by
dependent claim 24. Claim 24 depends from claim 1 and recites, “the
membrane layer extending continuously and without discontinuity across a
complete lateral extent of the membrane layer.” Appeal Br. 31. This indicates
that claim 1 encompasses both a single- and a multi-part membrane layer. See
In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (“[E]ach claim of a patent
has a purpose that is separate and distinct from the remaining claims. Claims
of narrower scope can be useful to clarify the meaning of broader,
independent claims under the doctrine of claim differentiation.”).
Given the above Specification descriptions, we are not persuaded that it
was erroneous or unreasonable for the Examiner to determine that the claimed
“membrane layer”— a structure that includes a central portion that provides
an electrical function, and an outer portion that provides only a mechanical
function—reads on Loeppert’s diaphragm 12 and springs 11. Loeppert
similarly describes diaphragm 12 as a “conductive” central portion “attached
to the substrate through [an outer portion, i.e.,] a number of springs 11, which
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serve to mechanically decouple the diaphragm from the substrate, thereby
relieving any intrinsic stress in the diaphragm.” Loeppert 5:31–35.
The Appellant argues that the Examiner’s interpretation of “membrane
layer” was newly advanced in the Answer, and presents an improper new
ground of rejection. Reply Br. 6. Because the Appellant did not file a timely
petition to the Director, it has waived this argument. See 37 C.F.R. § 41.40(a)
(2019) (“Any request to seek review of the primary examiner's failure to
designate a rejection as a new ground of rejection in an examiner’s answer
must be by way of a petition to the Director under § 1.181 of this title filed
within two months from the entry of the examiner’s answer and before the
filing of any reply brief. Failure of appellant to timely file such a petition will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection.”).
For the above reasons, we sustain the rejection of claim 4.

Claims 2, 17, and 18–22:
The Appellant requests reversal of the rejection of claims 2, 17, and 18–
22 for the same reasons discussed with respect to claim 1. Appeal Br. 9. As
the Appellant’s arguments are not persuasive as to the claims from which
claims 2, 17, and 18–22 depend, we sustain the rejection of these claims.

Claims 6 and 23:
The Appellant argues that “claims 6 and 23 are patentable over the
combination of Loeppert, Hussain, and McNeil for the same reasons discussed
above with respect to claim 1.” Appeal Br. 15. Because the Appellant’s
arguments are unpersuasive of reversible error in the Examiner’s rejection of
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claim 1, we are likewise unpersuaded of reversible error in the rejection of
dependent claims 6 and 23 and, therefore, sustain the rejection of these claims.

Claim 8:
Claim 8 indirectly depends from claim 1 and requires that “the central
cavity is sealed at a reference pressure.” Appeal Br. 29. Based on McNeil’s
disclosure of a sensor having a hermetically sealed chamber, the Examiner
determined that the ordinary artisan would have modified Loeppert to add “a
cap to form a hermetically sealed chamber in order to protect the chamber
from particles and moisture,” resulting in a central cavity sealed at a reference
pressure. Final Act. 8
The Appellant argues that the ordinary artisan would not have made the
proposed modification because Loeppert requires one or more openings in the
diaphragm and perforated member to provide an acoustical path from the back
chamber of the transducer to the surroundings, “thereby eliminating any
barometric pressure from building up across the diaphragm” (Loeppert 2:31–
35). Appeal Br. 16–17. In response, the Examiner acknowledges that
“Loeppert’s invention may ‘permit pressure equalization through the central
cavity 20’ (via the openings 21),” but argues that adding a cap to completely
cover perforated member 40’s upper surface would still establish an initial
reference pressure in the air gap 20/central cavity after manufacture. Ans. 9.
McNeil discloses that “[i]nertial sensor 24 and pressure sensor 26
typically require hermetically sealed chamber 38 to protect them from
particles, moisture, and so forth,” and “[p]ressure sensor 26 further requires
hermetically sealed chamber 38 in order to measure the pressure difference
between external environment 52 and the internal environment of chamber
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38.” McNeil 6:57–62. We agree with the Appellant that the Examiner has not
adequately explained why the benefits and purpose of hermetically sealing
McNeil’s pressure sensor’s chamber would apply to Loeppert’s acoustic
transducer’s central chamber. Loeppert explicitly requires “one or more
openings in the support ring, providing an acoustical path from the back
chamber of the transducer to the surroundings thereby eliminating any
barometric pressure from building up across the diaphragm.” Loeppert 3:38–
42.
Because the Appellant has persuasively shown that the Examiner’s fact
finding and reasoning is not supported by the record evidence, we do not
sustain the rejection of claim 8.

Claim 24:
As noted above, claim 24 depends from claim 1 and requires that “the
membrane layer extend[] continuously and without discontinuity across a
complete lateral extent of the membrane layer” Appeal Br. 31. The Examiner
found that the ordinary artisan would have formed Loeppert’s Figure 5
membrane layer (diaphragm 12 and springs 11) as a continuous membrane
based on the benefits described in Dehe. See Final Act. 9–10; see Dehe 7:14–
19.
The Appellant argues that the proposed modification would have
rendered Loeppert’s acoustic transducer unsatisfactory for its intended
purpose because it would eliminate Loeppert’s springs 11, which are essential
to relieve any intrinsic stress in the diaphragm of Loeppert’s Figures 5–7
embodiment. Appeal Br. 22 (citing Loeppert 5:29–38). The Appellant argues
that Loeppert teaches that in the Figures 5–7 embodiment—relied on by the
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Examiner in rejecting claim 1 from which claim 24 depends—the diaphragm
must be laterally movable (Reply Br. 19 (citing Loeppert claims 1, 13, 25, and
35)) and free to move in its own plane (id. at 20 (citing Loeppert 3:1–6, 5:28–
38)). The Appellant thus contends that the ordinary artisan would not have
modified Loeppert to eliminate springs 11 or in any manner that would have
resulted in “a membrane layer [that] d[id] not freely move in the membrane
plane” (claim 24).
The Examiner disagrees that eliminating springs 11 would have
rendered Loeppert’s transducer unsatisfactory for its intended purpose, noting
that Loeppert also teaches an embodiment that does not require springs, but
instead uses air gap 22 to relieve intrinsic stress in the diaphragm and small
indentations 13 to decouple diaphragm 12 from substrate 30. See Ans. 10
(citing Loeppert 4:44–67). The Examiner further notes that Loeppert teaches
restricting diaphragm 12’s lateral movement in the Figures 5–7 embodiment.
The Appellant’s arguments are not persuasive of reversible error
because they are based on an overly narrow interpretation of claim 24. The
Specification does not define the terms “freely move” or “membrane plane,”
and neither of these terms appears in the original Specification. Claim 24
was added in an amendment entered November 26, 2019 (“Amendment”).4
As support for the claim 24 subject matter, the Appellant cited Figures 2–7

4 See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir.
2014). (“In claim construction, this court gives primacy to the language of
the claims, followed by the specification. Additionally, the prosecution
history, while not literally within the patent document, serves as intrinsic
evidence for purposes of claim construction. This remains true in construing
patent claims before the PTO.”).
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and Specification paragraphs 33 and 36. Amendment 22. The Appellant
argued:
since no portion of the membrane layer is etched, patterned, or
subjected to any other type of material-removing operation to
form the device 200 of Fig. 2, Applicants’ disclosure supports
that the membrane layer extends “continuously and without
discontinuity across a complete lateral extent of the membrane
layer” as recited in claim 24. Furthermore, since the membrane
layer remains connected to portions of the first and second
dielectric layers, Applicants’ disclosure supports that the
membrane layer is “secured . . . such that the membrane layer
does not freely move in the membrane plane” as recited in
claim 24.
Id. at 22–23.
The Appellant’s membrane layer includes inner membrane 224 and
outer membrane 248. See Spec. ¶ 32. The Specification discloses that “outer
membrane 248 . . . compensates for external stress on the sensor device 200
by deflecting slightly under an external load to absorb the external stress.” Id.
(emphasis added). Given the Specification disclosure and prosecution history,
we construe the claim 24 recitation, “secured between the at least one layer
portion and the cap layer such that the membrane layer does not freely move
in the membrane plane,” as encompassing movement of at least a portion of
the membrane layer in response to an applied force.
Loeppert discloses that “[t]he lateral motion of the diaphragm 12 is
restricted by a support structure 41.” Loeppert 5:39–40. Diaphragm 12
“deflect[s]” (id. at 6:23) when “electrical potential and associated charging of
the conductors produces an electrostatic attraction force between the
diaphragm and the perforated member” (id. at 6:13–16). “When subjected to
acoustical energy, a pressure difference appears across the diaphragm 12
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causing it to deflect towards or away from the perforated member 40.” Id. at
6:20–22; see also id. at 1:16–20 (“The present invention relates to . . . a
miniature acoustic transducer having a diaphragm with a planar receiving
surface that remains substantially planar while deflecting pressure waves.”). In
other words, although Loeppert describes diaphragm 12 as able to “move
freely in its plane,” a force is required to effect such movement. Accordingly,
we determine that claim 24’s limitation, “secured between the at least one
layer portion and the cap layer such that the membrane layer does not freely
move in the membrane plane,” reads on Loeppert’s Figure 5 membrane layer
(diaphragm 12 and springs 11).
The Appellant has not persuasively shown that a continuous membrane
as described in Dehe would not have been capable of moving in the manner
described in Loeppert. Thus, we are not convinced of reversible error in the
Examiner’s conclusion of obviousness as to claim 24, and we sustain the
rejection.

Claim 25:
Claim 25 depends from claim 1, and recites, “wherein the first spacer is
in direct contact with upper surface of the membrane layer without regard to
an electrical state of the sensor.” Appeal Br. 31. The Examiner determined
that the ordinary artisan would have modified Loeppert’s support structure 41
(the first spacer) to achieve the claim 25 structure “in order to modify the
vibrating portions of the membrane geometrically while maintaining a certain
good degree of sensitivity and signal-to-noise ratio” as described in Chen.
Final Act. 10.
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The Appellant argues that Loeppert teaches away from the claim 25
structure because it would prevent diaphragm 12’s free lateral and vertical
movement. Appeal Br. 25. As discussed above in our analysis of the claim 24
rejection, Loeppert does not describe diaphragm 12 as able to move freely
absent application of a force. Therefore, we are not persuaded that Loeppert
teaches away from the proposed modification. Nor are we persuaded that such
modification would have prevented the type of movement required by
Loeppert, as the Specification indicates that the membrane layer is capable of
the same type of movement described in Loeppert.
For the above reasons, we sustain the rejection of claim 25.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 17,
18, 20–22
103 Loeppert, Hussain 1, 2, 4, 5,
7, 17, 18,
20–22
3
6, 8, 23 103 Loeppert, Hussain,
McNeil
6, 23 8
24 103 Loeppert, Hussain,
Dehe
24
25 103 Loeppert, Hussain,
Chen
25
Overall
Outcome:

1, 2, 4–7,
17, 18, 20–
25
3, 8
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED IN PART