Ex Parte O

Patent Trial and Appeal Board

Jun 21, 2017

13673072 (P.T.A.B. Jun. 21, 2017)

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.
13/673,072 11/09/2012 Gary O'Brien 1576-0694 2767
10800 7590 06/22/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CHAPMAN JR, JOHN E
ART UNIT PAPER NUMBER
2855
MAIL DATE DELIVERY MODE
06/22/2017 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 GARY O’BRIEN
Applicant-Appellant: Robert Bosch GmbH1
____________________

Appeal 2016-004525
Application 13/673,072
Technology Center 2800
——————
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 2–20 in the above-identified application.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Robert Bosch GmbH as the real party in interest. See
Appeal Brief 2, Oct. 6, 2015 [hereinafter Appeal Br.].
2 Final Office Action, Apr. 7, 2015 [hereinafter Final Action]; Examiner’s
Answer, Jan. 28, 2016 [hereinafter Answer].
Appeal 2016-004525
Application 13/673,072

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BACKGROUND
Appellant’s invention relates to a semiconductor device incorporating
a sensor. See Spec.3 ¶ 1. Figure 1, reproduced below, shows one
embodiment:

Figure 1 “depicts a perspective view of a micro electromechanical system
(‘MEMS’) [100] having proof mass [116] positioning features that include
concave followers [136] on a proof mass and convex travel stops [134] on an
anchor.” Id. ¶ 14 (reference numbers added); see also id. ¶ 34.
Independent claims 5 and 8 are representative:
5. A micro electromechanical system (MEMS)
comprising:
a substrate;
a first curved surface located at a position above a
surface of the substrate; and
a second curved surface generally opposite to the first
curved surface along a first axis parallel to the surface of the

3 Specification, Nov. 9, 2012 [hereinafter Spec.]
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substrate, wherein the first curved surface is movable along the
first axis in a direction toward the second curved surface,
wherein:
one of the first curved surface and the second curved
surface is generally convex;
the other of the first curved surface and the second
curved surface is generally concave;
movement of the first curved surface along the first axis
is limited to a first distance;
the generally concave surface curves from a mouth to an
apex and has a second distance from the mouth to the apex; and
the length of the first distance is less than the length of
the second distance.

8. An accelerometer for a micro electromechanical
system (MEMS) comprising:
a substrate;
a proof mass at a position above a surface of the substrate
and with a first curved surface located on a first side of the
proof mass; and
a first travel stop with a second curved surface generally
opposite to the first curved surface, wherein
the first curved surface is movable along an axis in a
direction toward the second curved surface,
one of the first curved surface and the second curved
surface is generally convex,
the other of the first curved surface and the second
curved surface is generally concave, and
the first travel stop and proof mass are configured such
that any contact between the first travel stop and the proof mass
requires contact with either the first curved surface or the
second curved surface.
Appeal Br. 27–29 (emphasis of disputed limitations added). Claim 15 is also
independent. See id. at 28–31.
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Application 13/673,072

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The Examiner maintains the following grounds of rejection:
I. Claims 2–5, 8–12, and 15–18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fukuda.4 See Final Action 2–3.
II. Claims 6, 7, 13, 14, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fukuda in view of Suzuki.5 See id. at 4–
5.
DISCUSSION
Claims 2, 3, and 5
Fukuda is directed to a semiconductor acceleration sensor that “has a
weight part connected by elongated beam parts to a fixed part, and which,
with an applied acceleration, detects the acceleration by using a movement
of the weight part in the direction of the acceleration caused by bending of
the beam parts.” Fukuda 1:7–12. Figure 5 of Fukuda is reproduced below:

4 Fukuda et al., US 7,464,591 B2 (issued Dec. 16, 2008).
5 Suzuki, US 7,905,146 B2 (issued Mar. 15, 2011).
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Figure 5 depicts an enlargement of “a protruding portion [15] and a
receiving recessed portion [16] of the silicon substrate in the semiconductor
acceleration sensor.” Id. at 3:56–59 (reference numbers added); see also
5:28–38.
Referring to Figure 5, the Examiner finds that the only difference
between Fukuda and the invention of claim 5 “consists in providing a
concave surface (16) that curves from the mouth of the concave surface to
the apex.” Final Action 2. The Examiner finds that Figure 5 depicts a
generally concave surface that curves from the apex (top of surface 16) to a
midsection (straight segment on the side), though the curvature does not
extend continuously all the way to the mouth of the surface. See Answer 2–
3.6 Nevertheless, the Examiner finds that that modifying concave surface 16
to be a semicircle “would comprise a slight change in the shape,” and thus
Figure 5 of “Fukuda would have taught or suggested a ‘generally concave
surface’ that ‘curves from a mouth to an apex.” Answer 3–4.
In addition, the Examiner refers to Figure 12 of Fukuda, reproduced
below:

6 The Examiner appears to accept Appellant’s argument, from a prior
submission, that “[a] structure which includes straight walls extending from
a mouth to [a] curved surface is not the same as a structure with a curved
surface which extends from a mouth to an apex.” Amendment 13, Mar. 3,
2015.
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Application 13/673,072

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Figure 12 depicts another sensor embodiment having a weight part 3 that
loosely fits around a stopper 21, an arrangement that “makes it possible to
obtain equivalent impact resistance properties for impacts in any directions
in the horizontal direction . . . . Thus, this makes it possible to prevent the
stopper 21 itself from breaking.” Fukuda 7:16–26.7
The Examiner finds, and Appellant does not dispute, that “the level of
skill in the accelerometer art is high: a person of ordinary skill would have
had a full academic degree or equivalent experience in either mechanical or
electrical engineering.” Answer 4–5 (citing UMC Electronics Co. v. U.S., 8
Cl. Ct. 604, 617–18 (Ct. Cl. 1985)). Based on the above evidence, the
Examiner concludes that “[i]t would have been obvious to one of ordinary
skill in the art to form the first curved surface (16) in a semicircular shape in
order to obtain equivalent impact resistance in any direction in the horizontal

7 Fukuda also expresses concern for preventing breakage of the protruding
part 15 in Figure 5, but that embodiment reduces the breakage risk by
including a gap 17 that allows protruding portion 15 to bend upon impact
with recessed portion 16 in the direction C. See Fukuda 5:28–38.
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plane (XY).” Final Action 2–3. Although the modified shape would not be
a complete circle for any one concave surface, the Examiner finds that “one
of ordinary skill would realize the benefit of providing equivalent impact
resistance in any direction in half of the horizontal plane (XY).” Id. at 4.
Appellant argues that a circle as disclosed by Fukuda’s Figure 12 is
not the same as a semicircle, and “the Examiner has failed to explain why
one of ordinary skill in the art would believe that a semicircle would
function in the same manner as a circle.” Appeal Br. 6. Appellant argues,
moreover, that Fukuda only teaches that a complete circle achieves the
benefit of increased impact resistance. See id. at 7. According to Appellant,
one limitation of shaping surfaces 16 as semicircles is that “the recessed
portions 16 would not be capable of stopping movement of the protruding
portions 15 away from the recessed portions 16 in the XY plane.” Id. at 7–8.
Thus, such a configuration “does not provide any impact resistance in at
least one direction in the XY plane,” which according to Appellant means “a
semicircular surface does not function in the same manner as a circular
surface.” Id. at 8.
Furthermore, Appellant argues that even the use of two semicircular
recesses on opposite sides of the Fukuda device would not add impact
resistance in all horizontal directions, because Fukuda “already provides this
benefit without any of the re-designs proposed by the Examiner.” Id.
According to Appellant, Fukuda teaches that
[t]he protruding portions 15 have an outer shape substantially the
same as an inner wall surface of the receiving recessed portions
16 so that movements of the weight part 3 in any directions in a
horizontal direction (XY direction in FIG. 3) perpendicular to the
up and down direction are limited as a result of reception of the
protruding portions 15 by the receiving recessed portions 16.
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Thus, even when a side impact is applied to the acceleration sen-
sor 1, the weight part 3 is prevented from moving significantly,
thereby preventing an excessive stress from being applied to the
beam parts 4 to break the beam parts 4.
Id. at 8–9 (quoting Fukuda 5:3–14). Therefore, Appellant argues that
Fukuda “provides travel limits both for movement along the axis of the
structures as well as for movement perpendicular to the axes,” and “there is
no reason for further modifying the embodiment of FIG. 3 as proposed by
the Examiner other than the Appellant’s teaching.” Id. at 9.
These arguments do not persuade us of reversible error in the
Examiner’s rejection of claim 5. The Examiner has persuasively shown that
a person of ordinary skill in the art would have understood based on
Fukuda’s teachings that a circularly curved surface is advantageous in terms
of impact resistance, and this teaching is applicable whether the surface
forms a complete circle or a semicircle. See In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). In addition, even if other
teachings in Fukuda are directed to reducing impact resistance, Appellant
has not persuasively argued that a person of ordinary skill in the art would
not have combined these teachings, or chosen between them as alternatives.
Cf. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . . .”)
Also unpersuasive of reversible error is Appellant’s argument that the
arrangement of portions 15 and 16 already provides travel limits for the
weight part 3 along multiple axes. See Appeal Br. 8–9. According to the
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Examiner, a skilled artisan would recognize that a semicircular shape would
effectively “limit movement of the weight part (3) by the same amount in
different directions in a horizontal plane (XY).” Answer 5. Appellant
argues that this benefit is not necessary, as Fukuda is already capable of
limiting movement by the same amount in all directions. See Reply Br. 5.
However, Appellant does not persuasively show that the configuration
shown in Fukuda’s Figure 5 would limit movement by the same amount in
all directions. Moreover, the existence of one known solution to the problem
of limiting movement does not render nonobvious other known, predictable
solutions. “When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007).
For the above reasons, Appellant has not persuaded us of reversible
error in the Examiner’s rejection of claim 5. Appellant offers no additional
substantive argument with respect to claims 2 and 3, which depend from
claim 5. Therefore, we affirm the Examiner’s rejection of claims 2, 3, and 5.
Claims 8–10, 12, and 15–17
Claim 8 requires that “the first travel stop and proof mass are
configured such that any contact between the first travel stop and the proof
mass requires contact with either the first curved surface or the second
curved surface.” Appeal Br. (Claims Appendix) 29. The Examiner finds
that modifying Fukuda by using a semicircular shape as with claim 5 has the
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result that “any contact between the travel stop (15) and the proof mass (3)
be with a curved surface.” Final Action 3; Answer 7.8
Appellant did not substantively address the Examiner’s rejection in
the Appeal Brief, and did not substantively respond to the Examiner’s
clarifications in the Answer. Therefore, we affirm the Examiner’s rejection.
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”). With respect to claims 9, 10, 12, and 15–17,
Appellant relies on the same arguments presented for claim 8. See Appeal
Br. 12, 14. Therefore, we affirm the Examiner’s rejection of claims 8–10,
12, and 15–17.
Claims 4 and 11
Claims 4 and 11 require that “the second curved surface extends from
a neck.” Appeal Br. 27, 29. The Examiner finds that “the second curved
surface (15) comprises a neck portion. It would have been obvious to form
the second curved surface (16) in a semicircular shape on a neck portion.”
Final Action 3. In the Answer, the Examiner adds that according to Fukuda,
the “protruding portions 15 have an outer shape substantially the same as an
inner wall surface of the receiving recessed portions 16.” Answer 6 (quoting
citing Fukuda 5:3–5). Consequently, the Examiner states, “it follows from
the teaching of Fukuda that the protruding portion (15) would be formed in a

8 In the Appeal Brief, Appellant argued that the Examiner “failed to allege
any of the limitations of independent claim 8 other than the last limitation.
There is, for example no identification of a proof mass in the prior art in the
rejection of claim 8.” Appeal Br. 11. In the Answer, the Examiner clarified
that the rejection relies on the other findings and conclusion made with
respect to claim 5, and that item 3 is the proof mass. See Answer 7.
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semicircular shape on a neck portion if the receiving recessed portion (16) is
formed in a semicircular shape.” Id.
Appellant argues that “[t]here is no explanation whatsoever of why it
would have been obvious to modify the device of Fukuda.” Reply Br. 4.
Therefore, Appellant argues that the Examiner’s rejection is merely a
conclusory statement. See id.; see also Appeal Br. 10.
We do not find Appellant’s arguments persuasive of reversible error.
As discussed above with regard to independent claims 5 and 8, the Examiner
has provided rationales for why using semicircular shapes for portions 15
and 16 would have been an obvious variation of the shaped disclosed by
Fukuda. Claims 4 and 11 depend from claims 5 and 8, respectively, and the
same rationale applies. Appellant does not dispute the Examiner’s finding
that if Fukuda were modified as in claims 5 and 8, the second curved surface
would extend from a neck. Thus, we affirm the rejection of claims 4 and 11.
See Jung, 637 F.3d at 1365.
Claims 6, 7, 13, 14, 19, and 20
Appellant argues that the Examiner improperly added new grounds of
rejection of claims 6, 7, 13, 14, 19, and 20 without properly designating
them as new grounds. See Reply Br. 8. Appellant has waived this argument
by failing to seek review of this issue by filing a petition within two months
of the entry of the Answer. See 37 C.F.R. § 41.40 (“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.”).
Claim 6, which depends from claim 5, requires an additional pair of
curved surfaces (i.e., third and fourth curved surfaces) perpendicular to the
axis of the first pair of surfaces. See Appeal Br. 16, 28.
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Figure 1 of Suzuki is reproduced below:

Figure 1 is a top plan view of an internal sensor. Suzuki 3:14. The
Examiner finds that
Suzuki discloses a semiconductor acceleration sensor wherein a
proof mass (7a) comprises a first movable surface (15) opposite
to a second fixed surface (16) along a first axis (X), and a second
movable surface (15) opposite to a second fixed surface (16)
along a second axis (Y) perpendicular to the first axis (X). It
would have been obvious to provide third and fourth curved sur-
faces in order to limit movement along a second axis (Y) perpen-
dicular to the first axis (X).
Final Action 4.
Appellant argues that “the embodiment of FIG. 3 of Fukuda already
limits movement along a second axis without any need of further
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modification.” See Appeal Br. 17. In response, the Examiner also
characterizes claim 6 as a duplication of features from claim 5, which “is a
design consideration within the skill of the art.” Answer 8 (citing In re
Harza, 274 F.2d 669 (CCPA 1960)). The Examiner also states that
it would have been obvious to provide an additional device to
limit movement along a second axis (X) which is perpendicular
to the axis (C) of a first pair of surfaces (15, 16) in Fig. 5 of Fu-
kuda, and Suzuki would have suggested providing an additional
device with the axis of the second pair of surfaces perpendicular
to the axis (C) of the first pair of surfaces (15, 16), in order to
further limit movement along the second axis (X).
Id. Appellant does not identify any reversible error in the Examiner’s
finding that a person of ordinary skill in the art would have had reason to
further limit movement along the second axis. See Reply Br. 8. Therefore,
we affirm the Examiner’s rejection of claim 6. See Jung, 637 F.3d at 1365.
Claim 7 depends from claim 6 and requires a third set of surfaces
oriented on the axis of the first pair of surfaces. See Appeal Br. 18, 28. The
Examiner finds that “Suzuki discloses a semiconductor acceleration sensor
wherein a proof mass (7a) comprises a fifth movable surface (15) opposite to
a sixth fixed surface (16) along the first axis (X).” Final Action 4. In the
Answer, the Examiner also explicitly concludes that “[i]t would have been
obvious to so incorporate fifth and sixth surfaces into the device of Fukuda
in order to limit movement along the first axis (C) of Fukuda.” Answer 8.
Appellant argues that “the Examiner has failed to even allege a single
reason for modifying the device of Fukuda based upon the alleged teaching
of Suzuki.” Appeal Br. 18. We find that argument unpersuasive, as the
Examiner has explicitly provided such a reason in the Answer. See Answer
8. Moreover, Appellant has not identified any reversible error in the
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Application 13/673,072

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rejection. See Reply Br. 8. Therefore, we affirm the Examiner’s rejection of
claim 7. See Jung, 637 F.3d at 1365.
Claim 13, which depends from claim 8, as well as claim 19, which
depends from claim 15, state that any contact between the second travel stop
and the proof mass requires contact with either the third or fourth curved
surface. See Appeal Br. 19, 23, 29–31. The Examiner bases the rejection of
claims 13 and 19 on the same findings and conclusion with respect to claims
6 and 7. See Final Action 4. In the Answer, the Examiner also holds that
a travel stop necessarily operates by providing contact between
opposing surfaces in order to stop travel. Note, for example, that
the travel stop (15) in Fig. 5 of Fukuda limits motion (C) by
providing contact between opposing surfaces of the protruding
portion (15) and the recessed portion (16). Consequently, any
contact between the travel stop (15) and the proof mass (3) in-
herently requires contact between opposing surfaces of the pro-
truding portion (15) and the recessed portion (16). And so long
as the opposing surfaces are curved, it necessarily requires con-
tact between opposing curved surfaces. Consequently, such lim-
itation merely articulates the inherent function of a travel stop,
and does not further limit the claimed subject matter.
Answer 9–10.
Appellant argues that “[t]he Examiner has failed to provide any
logical connection between the alleged perpendicular axes and a
configuration wherein any contact between the second travel stop and the
proof mass requires contact with either the third curved surface or the fourth
curved surface.” Appeal Br. 20, 23. We find this argument unpersuasive, as
the Examiner has explicitly provided such a logical connection in the
Answer. See Answer 9–10. Moreover, Appellant has not identified any
reversible error in the rejection. See Reply Br. 8. Therefore, we affirm the
Examiner’s rejection of claims 13 and 19.
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Claims 14 and 20 depends from claims 13 and 19, respectively, and
further requires the two sets of surfaces to be on adjacent sides. See Appeal
Br. 21, 24, 30, 32. The Examiner bases the rejection of claims 14 and 20 on
the same findings and conclusion with respect to claims 6 and 7. Final
Action 4. In the Answer, the Examiner also holds that
Suzuki discloses two sets of surfaces (15, 16), one set for limiting
movement along one axis (X) and the other set for limiting move-
ment along a second axis (Y). As clearly shown in Fig. 1 of Su-
zuki, the two sets of surfaces (15, 16) are arranged on adjacent
sides of the proof mass (7b). Accordingly, the arrangement of
travel stops in Fig. 1 of Suzuki would have suggested arranging
two sets of surfaces on adjacent sides of a proof mass.
Answer 9–10.
Appellant argues that “the Examiner has failed to even allege a single
reason for modifying the device of Fukuda based upon the alleged teaching
of Suzuki.” Appeal Br. 22, 25. Appellant further argues that “the Examiner
has failed [to] provide any rationale for arranging the sets of surfaces on
adjacent sides as required by the claim.” Id. We find these arguments
unpersuasive, as the Examiner has explicitly provided these rationales in the
Answer. See Answer 9–10. Moreover, Appellant has not identified any
reversible error in the rejection. See Reply Br. 8. Therefore, we affirm the
Examiner’s rejection of claims 14 and 20.
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DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv) (2016).

AFFIRMED