Ex Parte LAN et al

Patent Trials and Appeals Board

Feb 26, 2019

15073372 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/073,372 03/17/2016
64728 7590 02/28/2019
SHUMAKER, LOOP & KENDRICK, LLP
NORTHROP GRUMMAN CORPORATION
42690 WOODWARD A VENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
FIRST NAMED INVENTOR
XINGLAN
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.
NGC-00206(007655-0030) 1290
EXAMINER
CLEVELAND, MICHAEL B
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
CCARDINALE@SLK-LA W.COM
tlopez@slk-law.com
c golupski@ slk-law. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XING LAN
and CHUNBO ZHANG
Appeal2018-002269
Application 15/073,372
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-20 of Application 15/073,372 under
35 U.S.C. § 103 as obvious. Final Act. (June 29, 2017). Pursuant to
35 U.S.C. § 134(a), Appellant1 seeks reversal of these rejections. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.
1 Northrop Grumman Systems Corp. is identified as the applicant and real
party in interest. Appeal Br. 4.
Appeal2018-002269
Application 15/073,372
BACKGROUND
The '372 Application describes a micro-electromechanical system
(MEMS) switch that is fabricated on a substrate using ink printing
technologies. Spec ,r 1.
Claim 1 is representative of the '372 Application's claims and is
reproduced below from the Claims Appendix:
1. A method for fabricating a micro-electromechanical
system (MEMS) switch, said method comprising:
providing a substrate;
printing at least one bias electrode, at least one
connection pad and at least one contact pad on the substrate;
printing a sacrificial layer on the substrate and over the at
least one bias electrode and at least part of the contact pad;
printing a flexible beam structure on the sacrificial layer;
and
removing the sacrificial layer to release the beam
structure so that the beam structure is spaced some distance
from the at least one bias electrode and the contact pad.
Appeal Br. 21 (Claims App.)
2
Appeal2018-002269
Application 15/073,372
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 7, and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park2 and Melman. 3 Final
Act. 3.
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Melman, and
Weaver. 4 Final Act. 5.
3. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Park, Melman, and Zettl. 5 Final Act. 6.
4. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Park, Melman, Weaver, and Zettl. Final
Act. 7.
5. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Melman, Liu, 6 and
Tai. 7 Final Act. 8.
2 E. S. Park, Application of Inkjet-Printing Technology to Micro-Electro-
Mechanical Systems, University of California at Berkeley, Technical Report
No. UCB/EECS-2014-44 (2014),
http://www2.eecs.berkeley.edu/Pubs/TechRpts/20l4/EECS-2014-44.pdf
(hereinafter "Park").
3 US 2010/0295079 Al, published Nov. 25, 2010.
4 US 2002/0195674 Al, published Dec. 26, 2002.
5 US 2009/0291270 Al, published Nov. 26, 2009.
6 US 2007/0236307 Al, published Oct. 11, 2007.
7 US 6,094,116, issued July 25, 2000.
3
Appeal2018-002269
Application 15/073,372
6. Claims 9--11 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Park, Melman, and Liu. Final Act. 9.
7. Claims 16 and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Melman, Liu, Tai,
and Zettl. Final Act. 13.
8. Claims 11 and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Melman, Liu, and
Nelson. 8 Final Act. 13.
9. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Park, Melman, Wan, 9 and
Tai. Final Act. 15.
10. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination Park, Melman, and Ebel. 10
Final Act. 17.
11. Claims 16-18 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Park, Melman, Zettl, Liu, Tai, and
Nelson. Final Act. 18.
DISCUSSION
Appellant argues for the reversal of the obviousness rejections to
claims 1-20 on the basis of limitations present in independent claims 1, 16,
and 20. See Appeal Br. 4--19; see also Reply Br. 1---6. We select claim 1 as
8 US 6,646,215 Bl, issued Nov. 11, 2003.
9 US 2005/0146241 Al, published July 7, 2005.
10 US 2007/0044289 Al, published Mar. 1, 2007.
4
Appeal2018-002269
Application 15/073,372
representative. Claims 2-15 and 17-19 will stand or fall with each of their
respective independent claims. 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection 1. Two or more references can be combined to form the
basis for an obviousness rejection only if they are analogous art to the
claimed invention. The Federal Circuit has explained that
[ t ]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (internal citation omitted).
The scope of analogous art is to be construed broadly. Wyers v. Master Lock
Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme Court's decision
in KSR International Co. v. Teleflex, Inc . ... directs us to construe the scope
of analogous art broadly").
Here, Appellant argues, inter alia, that "the Melman white light
emitting device 100 is not analogous to a MEMS switch." Appeal Br. 12
( emphasis added).
First, as Appellant argues (Reply Br. 2), Melman is not in Appellant's
field of endeavor. The '372 Application's Specification and claims are
directed to fabricating an MEMS switch. Melman, on the other hand,
describes a method for fabricating a white light emitting device. Melman
Abstract, ,r 48.
The Examiner does not point to any evidence in the record that would
support a finding that MEMS switch fabrication and white light emitting
device manufacturing are in the same field of endeavor. Rather, the
Examiner argues that "both LED and MEMS are electronic devices and/ or
5
Appeal2018-002269
Application 15/073,372
fall under the broader electronic device category." Answer 3. Under the
Examiner's reasoning, however, all electronic devices would be considered
analogous art which we determine would be an overly broad interpretation
of the "fied of endeavor". Therefore, on this record, we conclude that
Melman is not in Appellant's field of endeavor.
Second, Appellant argues that Melman is non-analogous art "because
providing the sacrificial layer 148 to protect the passivation layer 138 when
fabricating the white light emitting device 100 in Melman is not reasonably
pertinent to the problem of providing a suitable sacrificial layer [80] that is
dissolved to release a flexible cantilever beam structure [112] in an MEMS
switch." Reply Br. 3 (emphasis added); compare Melman Fig. 5a, ,r 56 with
Spec. Figs. 7, 8, ,r,r 19, 23.
In response to this contention, the Examiner found that Melman "is
still a proper analogous art as it is concerned with a pertinent problem of
interest to the instant invention ... , namely being the problem of how to
apply a polymer-based sacrificial layer." Answer 3. The Examiner made
this finding based upon consideration of the function of Melman's sacrificial
layer. Id. (Melman "protect[s] a corresponding underlying portion from an
above-the-mask treatment.").
Melman may only be used in an obviousness rejection if it is
reasonably pertinent to the particular problem which the inventor was
addressing. Bigio, 381 F.3d at 1325. On this record, we cannot say that the
Examiner has properly supported such a finding. As Appellant argues
(Reply Br. 5), Melman's concern with the general problem of applying a
polymer-based sacrificial layer to protect an underlying portion is not
reasonably pertinent to Appellant's particular problem of depositing a
6
Appeal2018-002269
Application 15/073,372
sacrificial layer that is compatible with an overlying conductive polymer
flexible beam.
The Examiner has not provided an adequate explanation of why, in
the absence of Appellant's disclosure, a person of ordinary skill in the art of
fabricating a MEMS switch would look to methods for fabricating a white
light emitting device. The Examiner's finding that Melman is analogous art
because it is reasonably pertinent to the problem confronting Appellant is
not supported by the record in this appeal.
Because the Examiner erred by finding that Melman is analogous art
to the claimed invention, we reverse the rejection of claims 1, 7, and 8 as
unpatentable over the combination of Park and Melman.
Rejection 2-Rejection 11. As discussed above, we have determined
that the Examiner erred by finding that Melman is analogous art and
available for use in a § 103 rejection. We, therefore, reverse the rejections
of claims 2---6 and 9-20 as unpatentable over the combination of Park and
Melman, either with or without Weaver, Zettl, Liu, Tai, Nelson, Wan, and
Ebel.
CONCLUSION
For the reasons set forth above, we reverse the§ 103 rejections of
claims 1-20 of the '372 Application.
REVERSED
7