Ex Parte Corisis et al

Patent Trial and Appeal BoardMar 4, 2019

14797721 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/797,721 07/13/2015 63162 7590 03/06/2019 TRASK BRITT, P.C./ MICRON TECHNOLOGY P.O. BOX 2550 SALT LAKE CITY, UT 84110 David J. Corisis 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. 2269-7525.3(2005-0900.03) 7626 EXAMINER PATEL, ISHWARBHAIB ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 03/06/2019 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): USPTOMail@traskbritt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID J. CORISIS, CROON KUAN LEE, and CHIN HUI CHONG Appeal2018-004689 Application 14/797, 721 Technology Center 2800 Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and SHELDON M. McGEE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1---6 under 35 U.S.C. Â§ 103(a) as obvious over Fisher3 and claims 1---6 and 21 under 35 U.S.C. Â§ 103(a) as obvious over Frana. 4 We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 In explaining our Decision, we cite to the Specification of July 13, 2015 (Spec.), Final Office Action of June 20, 2017 (Final), Appeal Brief of November 17, 2017 (Appeal Br.), and Examiner's Answer of January 4, 2018 (Ans.). We have also considered the Reply Brief of February 28, 2018. 2 Appellant is the applicant under 37 C.F.R. Â§ 1.46, Micron Technology, Inc., which is also identified the real party in interest. Appeal Br. 2. 3 Fisher et al., US 2004/0196122 Al, published Oct. 7, 2004. 4 Frana et al., US 6,479,764 Bl, issued Nov. 12, 2002. Appeal2018-004689 Application 14/797, 721 We AFFIRM. The claims are directed to an electronic device assembly having two interconnecting members, each member electrically coupled to a trace in a manner such as that shown in Figure 7, which as shown below includes first interconnecting member 40 coupled to trace 3 6B and second interconnecting member 42 coupled to trace 36A. See, e.g., claim 1; Spec. ,r,r 3, 61. The distance between the two interconnecting members is substantially the same as the distance between the two traces that electrically communicate with the interconnecting members. Id. We reproduce Figure 7, annotated to show the two distance parameters, which we label D1 and D2. 40 -_-:::::::::: ;:gÂ·~ J4 -Â·Â· 2 Appeal2018-004689 Application 14/797, 721 Figure 7 is a perspective view annotated with arrows and reference numerals D1 and D2 Claim 1, with the key distance limitation highlighted and reference numerals from annotated Figure 7 added, is further illustrative: 1. An electronic device assembly [91], comprising: a substrate [ not shown] comprising electrically insulating material; a first interconnecting member [ 40] comprising electrically conductive material and extending from a first plane on or in the substrate to a second plane on or in the substrate, the second plane offset from the first plane; a second interconnecting member [ 42] comprising electrically conductive material and extending from a third plane on or in the substrate to a fourth plane on or in the substrate, the fourth plane offset from the third plane, wherein at least a portion of the second interconnecting member [ 42] is positioned between portions of the first interconnecting member [40]; a first trace [36B] comprising electrically conductive material extending in the first plane and electrically coupled to the first interconnecting member [ 40]; and a second trace [3 6A] comprising electrically conductive material extending in the third plane and electrically coupled to the second interconnecting member [ 42], the second trace [36A] being separated from the first trace [36B] by a distance [D2] that is at least substantially equal to a distance [Di] separating the first interconnecting member [40] from the second interconnecting member [42]; wherein the first plane is offset from the third plane. Appeal Br. 27 ( claims appendix) ( emphasis added). 3 Appeal2018-004689 Application 14/797, 721 OPINION As Appellant does not argue any claim apart from the others, we select claim 1 as representative. The issues for the two rejections are similar enough to allow us to address the issues for both rejections together. The overarching issue is: Has Appellant identified a reversible error in the Examiner's conclusion that it would have been obvious to one of ordinary skill in the art to have separated the coaxial conductive layers of Fisher and Frana by a distance substantially equal to the distance of the traces connecting to the coaxial conductive layers as required by claim 1? Appellant has not identified such an error. As more completely discussed below, both Fisher and Frana teach coaxial conductors connected to horizontal planar conductive layers (traces) in different planes. Each of the conductive layers are separated by insulating dielectric layers. Fisher is directed to an improved "'conductor-within-a via', microwave interconnect structure for use with laminated radio frequency (RF) printed circuit architectures." Fisher ,r 1. In the embodiment of Figure 3, which is the embodiment relied on by the Examiner (Final 3--4), Fisher teaches a structure with an outer cylindrical conductive layer (ground plane layer 53) that "serves as a first, outer coaxial, grounded shielding via that surrounds the RF pass-through," i.e., the inner conductive via 81. Fisher ,r,r 16, 18. Dielectric fill layer 54 separates the coaxial conductive layers and dielectric layer 61 separates the upper and lower horizontal conductive layers. Fisher Fig. 3, ,r,r 16-17. Dielectric fill layer 54 "serves both to 4 Appeal2018-004689 Application 14/797, 721 define the impedance of the RF pass-through and to provide for structural alignment and stability" of the subsequently formed inner RF pass through- via of layer 81. Fisher ,r 16. Fisher does not expressly state the reason for including the dielectric layer 61 between the horizontally extending conductive layers, but the reason is evident from the context of its use in printed circuit boards: it is to separate the conductive layers so they may carry electrical signals and current independently from each other. Frana also relates to a coaxial via structure. See, e.g., Frana Fig. 3. Specifically, Frana is directed to "a via structure that reduce[s] inductance in the current path when used in printed circuit boards and integrated circuits." Frana col. 1, 11. 7-9. As shown in Figures la and lb, cylindrical via structure 2 has two adjacent and coaxial annular regions 6 and 8 surrounding a cylindrical signal conductor member 10 disposed in the center. Frana col. 2, 11. 30-49. Coaxial regions 6 and 10 are conductive and are separated by insulating region 8. Frana Fig. 3, col. 2, 11. 45--49. This arrangement allows signal current and return current to flow through the conductive regions 6 and 10. Frana col. 2, 11. 45--49. Figure 3 depicts signal lines 52 and 54 connecting to conductive coaxial layers 48 and 50, which are analogous to coaxial regions 6 and 10 of Figures la and lb. Frana Fig. 3, col. 3, 11. 17-39. The lines are in different planes and are separated by insulating layers to allow signal current (forward current 52) to flow to coaxial layer 50 and the separate return current 54 to flow through coaxial layer 48. Frana Figs. 3--4; col. 2, 11. 30-44; col. 3, 1. 17---col. 4, 1. 4. There is no dispute that neither Fisher nor Frana discloses the thicknesses of the dielectric layers between the coaxial conductive layers and the horizontal conductive trace layers. Compare Appeal Br. 9, with 5 Appeal2018-004689 Application 14/797, 721 Final 4, 7-8. The Examiner's rationale for selecting equal distances between the respective pairs of conductive layers is based on the similar distances shown in Fisher's Figure 3 and Frana's Figure 4 (acknowledging that the figures are not disclosed as drawn to scale and the distance may or not be equal), design choice, mere change in size (distance), and routine optimization of result-effective variables. Final 4--5, 8. Appellant contends that the case law on design choice, mere change in size, and routine experimentation of a result-effective variable does not support the Examiner's determination. Appeal Br. 10-16. However, we are not persuaded because Appellant's analysis attempts to develop rigid and mandatory subtests that improperly limit the obviousness inquiry and are subject to error. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007) ("[W]hen a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs."). Section 103 (a) forbids issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR, 550 U.S. at 406. As pointed out in KSR, "[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility." 550 U.S. at 419. It is this basic principle that underlies the cases speaking on design choice, mere changes in size, and routine optimization. Under the flexible inquiry set forth by the Supreme Court, the examiner must take account of the 6 Appeal2018-004689 Application 14/797, 721 "inferences and creative steps," or even routine steps, that an ordinary artisan would employ. Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Fisher and Frana both teach the general structure of coaxial conductors connected to conductive trace layers in different planes with the conductive structures separated by some distance. Neither Fisher nor Frana discloses the distances between the conductive layers, but they do disclose accomplishing the separation by inserting insulating layers between the conductive layers. The reason to so separate conductive layers with insulating layers is to electrically isolate the conductive layers and, in Fisher, to make sure the outer conductive via with ground plane layer 53 electrically shields the inner RF pass-through layer 81. In order to obtain those results, one must select some distances (thicknesses of the insulating layers). Whether one couches the selection in terms of design choice or routine experimentation to find the workable or optimal distances, the result is the same: The teaching of the general conditions supports a presumption that discovering the optimum or workable ranges of a result-effective variable by routine experimentation supports a conclusion of obviousness and shifts the burden to Appellant to show either that the prior art teaches away or that the result they achieve was unexpected. See E.I. DuPont de Nemours & Co. v. Synvina C. V., 904 F.3d 996, 1006 (Fed. Cir. 2018); In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (holding that one would have experimented with various thicknesses of a layer known to absorb shock to obtain an optimum range and noting that the applicant had not relied on a showing of unexpected results); In re Aller, 220 F .2d 454, 456 (CCP A 1955); In re Rice, 341 F .2d 309, 314 (CCP A 1965) ("Appellants have failed to show that the 7 Appeal2018-004689 Application 14/797, 721 change [in the claimed invention] as compared to [the reference], result[s] in a difference in function or give unexpected results."). Although it is also possible to rebut the presumption by showing the variable was not understood to be result-effective, E.I. DuPont de Nemours & Co. v. Synvina C. V., 904 F.3d at 1006, the exception is a narrow one, id. at 1008, and there can be no real question that insulating layer thickness, and hence the distance between the conductive layers within a printed circuit board, was understood to effect the ability to keep electrical signals and currents separate. Here, any number of distances (insulating layer thicknesses) would have been understood to provide the needed electrical separation between the conductive layers and making the distances substantially equal for that purpose would have resulted in a workable device with the required separation. This is just the kind of routine parameter that must be shown to have unexpected results to be patentable. In other words, the situation begs for a showing of unexpected results to support a case of patentability and Appellant does not proffer such a showing. CONCLUSION We sustain the Examiner's obviousness rejections. DECISION The Examiner's decision is affirmed. 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. Â§ 1.136(a)(l). 8 Appeal2018-004689 Application 14/797, 721 AFFIRMED 9