Ex Parte MURARKA et al

Patent Trials and Appeals BoardJan 8, 2019

13844270 - (D) (P.T.A.B. Jan. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/844,270 03/15/2013 Apoorva MURARKA 92364 7590 01/10/2019 Spectrum IP Law Group LLC 8 Crystalglen Aliso Viejo, CA 92656 UNITED ST A TES OF AMERICA 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. MIT-1400 9714 EXAMINER HATZILAMBROU, MARK ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 01/10/2019 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): eofficeaction@appcoll.com dan.salehi@slgip.com s tephanie. page@slgip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte APOORVA MURARKA, VLADIMIR BULOVIC, ANNIE I-JEN WANG, and JEFFREY HASTINGS LANG Appeal 2018-003 085 Application 13/844,270 Technology Center 2800 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MERRELL C. CASHION, JR., Administrative Patent Judges. HASTINGS, Administrative Patent Judge DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 1--4, 6-11, 13-27, 29-33, 58, 59, 63- 69, 79, 85, and 86 under 35 U.S.C. Â§ 103(a) as being unpatentable over at least Patel et al. (US 2010/0079847 Al; Apr. 1, 2010) ("Patel") and Parks et al. (US 2009/0004767 Al, pub. Jan. 1, 2009) ("Parks"). 2 Claims 5, 12, 28, 34--57, 60-62, and 70-78 have been cancelled. 1 Appellant is the Applicant, Massachusetts Institute of Technology ("MIT"), which is also identified as the real party in interest (Appeal Br. 4). 2 The Examiner additionally applied Khuri-Yakub et al. (US 2007 /0215964 Al pub. Sept. 20, 2007) ("Khuri-Yakub") to dependent claims 30 and 65 (Non-Final Act. 16; Appeal Br. 12), and also applied Habrel et al. (US Appeal2018-003085 Application 13/844,270 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. Independent claim 1 is illustrative of the subject matter on appeal ( emphasis added to highlight key disputed limitations): 1. An array of addressable membranes, the array comprising: a metallic membrane formed over a substrate, the substrate having a plurality of cavities formed within the substrate and the substrate defining a monolithic material; a first electrode integrated with a first of the plurality of cavities and forming a first electrode pair with a corresponding first portion of the membrane, the corresponding first portion of the membrane defining a first diaphragm covering the first of the plurality of cavities; a power source for biasing the first electrode pair thereby deflecting the first diaphragm over the first of the plurality of cavities in response to an applied bias; wherein the plurality of cavities have a pitch distance of about 3- 7 Âµm and wherein at least one of the plurality of cavities has a depth of about 0.3-1 Âµm. Appellant's arguments focus on limitations common to independent claims 1, 17, 58, and 79 (Appeal Br. 13-21). Appellant does not present arguments for the separately rejected dependent claims (id.). Thus, all the claims stand or fall with representative claim 1. 4,266,263; May 5, 1981) ("Habrel") to dependent claims 2--4, 19-21 and 59 (Non-Final Act. 17-20; Appeal Br. 12). A discussion of these references is unnecessary for disposition of the appeal. 2 Appeal2018-003085 Application 13/844,270 ANALYSIS We have reviewed each of Appellant's arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's conclusion that the claimed subject matter is unpatentable within the meaning ofÂ§ 103 in view of the applied prior art. Appellant's arguments do not show error in the Examiner's obviousness determination. Accordingly, we will sustain the Examiner'sÂ§ 103 rejections, and we add the following primarily for emphasis. It has been established that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264-- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Further, when it comes to claimed subject matter involving ranges, a prima facie case of obviousness exists where the prior art and claimed ranges overlap, as well as in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same properties. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d at 1578; Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Appellant's principal arguments are that the applied prior art does not teach or suggest the claimed cavity pitch distance and cavity depth, and that 3 Appeal2018-003085 Application 13/844,270 conventional processes could not have produced such dimensions (Appeal Br. 14--16). Appellant's arguments are unpersuasive of error in the Examiner's rejection. As pointed out by the Examiner, one of ordinary skill in the art would have readily appreciated from Patel that cavity pitch and depth are result effective variables (Ans. 4, 5; Patel ,r,r 32, 33). "A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result- effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Indeed, the lower end of the exemplary range of a cavity pitch disclosed in Patel that "may be on the order of lOum" (Patel ,r 36) is close to the claimed upper limit of "about ... 7um" for the pitch distance that one skilled in the art would expect the membranes to have the similar properties. When "about" is used as part of a numeric range, "the use of the word 'about,' avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context." Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008) (citations omitted). In determining how far beyond the claimed range the term "about" extends the claim, "[ w ]e must focus ... on the criticality of the [ numerical limitation] to the invention." Id. We have reviewed the Specification and are in agreement with the Examiner that there is no evidence of criticality in the recited ranges. 4 Appeal2018-003085 Application 13/844,270 According to the Specification, the cavities may "be cylindrical, or have any other arbitrary shape, size, or depth" (Spec. ,r 35). The dimensions recited in the claims are only directed to "an exemplary embodiment" (Id.; see also Spec. ,r 63). While Appellant urges that conventional methods could not have produced these dimensions, Appellant does not direct us to any objective evidence to support this contention (as pointed out by the Examiner, see, e.g., Ans. 4, 5), or to any objective evidence of any secondary considerations, such as unexpected results, in support of nonobviousness. An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant's arguments that the Examiner used impermissible hindsight in the determination that one of ordinary skill in the art would have, using no more than ordinary creativity, used a substrate having a plurality of cavities formed therein as exemplified in Parks as a known alternative to Patel's substrate (Appeal Br. 20 (Appellant states one would not use additive process as alternative to the "subtractive process of Patel"), see also, e.g., Appeal Br. 18, 19, 21) are not persuasive for the reasons explained by the Examiner ( e.g., Ans. 6-9 ( explaining there is no process recited in the claims, and that there is no apparent incompatibility, process or otherwise, in substituting the monolithic substrate shown in Parks Fig. 3C, for the composite substrate of Patel); no reply brief has been filed). As a result, a preponderance of the evidence in the record supports the Examiner's rejection of claim 1. Appellant's arguments do not identify a reversible error in the Examiner's rejection. Appellant does not argue any of the claims separately from each other ( Appeal Br. 13-21 ). 5 Appeal2018-003085 Application 13/844,270 Accordingly, the Examiner'sÂ§ 103 rejections on appeal are affirmed. DECISION The Examiner's decision 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)(l )(iv). AFFIRMED 6