Ex Parte Berman et al

Patent Trial and Appeal BoardJan 28, 2014

11012838 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/012,838 12/15/2004 Michael J. Berman 1003-0639 9860 98440 7590 01/29/2014 Otterstedt, Ellenbogen & Kammer, LLP P.O. Box 98 East Northport, NY 11731 EXAMINER RODELA, EDUARDO A ART UNIT PAPER NUMBER 2893 MAIL DATE DELIVERY MODE 01/29/2014 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 MICHAEL J. BERMAN and RENNIE G. BARBER ____________ Appeal 2011-013276 Application 11/012,838 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013276 Application 11/012,838 2 Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. Â§ 102(b) of claims 39, 42, 43, and 59-61 as anticipated by Hirai (US 6,607,135 B1 issued Aug. 19, 2003) and under 35 U.S.C. Â§ 103(a) of remaining claims 40, 41, 45, 46, and 49 as unpatentable over Hirai in combination with additional prior art. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants claim an integrated circuit package 10 comprising an integrated circuit 18 mounted to a substrate within a cavity 14 and an antenna 40 substantially completely disposed on the underside of a lid 54 of the package (independent claim 39, Fig. 3A; see also independent claim 59). A copy of representative claim 39, taken from the Claims Appendix of the Appeal Brief, appears below. 39. An integrated circuit package for housing an integrated circuit comprising: a cavity in a substrate of an integrated circuit (IC) package for housing an IC, the IC mounted to the substrate within the cavity; and an antenna provided as part of the IC package and located substantially outside the cavity, the antenna comprising a conductive trace located on the underside of a lid for the IC package, wherein the antenna is substantially completely disposed on the underside of the lid of the IC package. Appellants present arguments specifically directed to independent claims 39 and 59 as well as dependent claims 60 and 61 (App. Br. 5-13). No separate arguments have been specifically directed to the other claims under Appeal 2011-013276 Application 11/012,838 3 rejection, all of which depend from claim 39 (id.). As a consequence, these other rejected claims will stand or fall with their parent claim 39. For the reasons fully detailed by the Examiner in the Answer, we share the Examiner's finding that argued claims 39 and 59-61 are anticipated by Hirai. We sustain, therefore, the above rejections and add the following comments for emphasis. The Examiner finds that Hirai's Figure 1 package, particularly when viewed from an inverted position, is structurally and functionally identical to the package defined by the above argued claims in that the claimed lid is indistinguishable from the Hirai substrate 1 and the claimed substrate is indistinguishable from the Hirai cap 4 (see, e.g., Ans. 4-6, 9, 10). Appellants argue that the Examiner's finding is not supported by the disclosure in Hirai and is based on a claim construction which is unreasonably broad and not consistent with their Specification (see, e.g., App. Br. 7-10, Reply Br. 3). Appellants' argument lacks persuasive merit. As correctly explained by the Examiner, elements 1 and 4 of Hirai fall within accepted definitions and the Specification disclosure of the respective claim terms "lid" and "substrate" (see, e.g., Ans. 16-17). For this reason, we cannot agree with Appellants that the Examiner's finding is unsupported by Hirai and is based on an inappropriate claim construction. In an attempt to further support this argument, Appellants contend that Hirai's cap 4 cannot be analogized with a substrate because "it clearly lacks any means for connecting electrodes formed on the IC chip with corresponding external pins included in the IC package" (Reply Br. 4). Appeal 2011-013276 Application 11/012,838 4 Appellants' contention is based on the premise that a package of the type disclosed by Hirai and defined by the appealed claims requires external pins connected to the integrated circuit inside the package. However, Appellants have not identified any disclosure in Hirai or in their Specification that such external pins are required by either the Hirai package or the claimed package. It follows that we are not persuaded by the above contention. Concerning the independent claim 39 limitation "the IC mounted to the substrate," Appellants further argue that "the IC chip 2 in Hirai is not mounted to the protective cap 4, and thus the protective cap cannot serve as a substrate to the IC chip" (App. Br. 7). In response to this argument, the Examiner finds that Hirai's filler 6 of silicone resin necessarily would adhere IC chip 2 to protective cap 4 (i.e., the claimed substrate) thereby satisfying the above claim 39 requirement wherein the IC is mounted to the substrate (Ans. 14-15). In reply, Appellants do not contest the Examiner's finding that the silicone resin of Hirai necessarily would adhere IC chip 2 to protective cap 4 (Reply Br. 5-6). Rather, Appellants imply that such adherence would not securely mount the IC chip whereby "the integrity of the connection between the IC chip and the external pins of the IC package . . . would fail and would thereby render the device inoperative" (id.). Appellants have not provided any support for this implication and have not identified any disclosure which teaches external pins are required by the Hirai package or the claimed package. Indeed, Appellants have not provided the record before us with any convincing rationale or evidence that the Examiner's findings somehow render the Hirai package inoperative. Appeal 2011-013276 Application 11/012,838 5 Finally, Appellants' arguments concerning the limitations of claims 59-61 relating to "the portion of the antenna" (App. Br. 12-13) are not convincing of patentability for the reasons explained by the Examiner (Ans. 18-22). The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1). AFFIRMED bar