Ex Parte Serra et al

Patent Trial and Appeal Board

Aug 4, 2016

13081848 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/602,805 09/04/2012
22897 7590 08/08/2016
Kaplan Breyer Schwarz & Ottesen, LLP
100 Matawan Road, Suite 120
Matawan, NJ 07747
FIRST NAMED INVENTOR
Todd Richard Christenson
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.
515-004US2 5366
EXAMINER
MUSLEH, MOHAMAD A
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
docketing@kbsolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD RICHARD CHRISTENSON1
Appeal2015-000217
Application 13/602,805
Technology Center 2800
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "the Appellant") timely appeals under 35
U.S.C. § 134(a) from a final decision of the Primary Examiner to reject
claims 21-25, 30-37, and 40-43.2 We have jurisdiction under 35 U.S.C.
§ 6. We affirm.
1 The real parties in interest are identified as HT Microanalytical, Inc. and
Coto Technology, Inc. (Appeal Brief, filed 12 March 2014 ("Br."), 3, 11. 1-
2.)
2 Appeal Brief filed March 12, 2014, hereinafter "Br.," 3; Final Office
Action delivered electronically on October 8, 2013, hereinafter "Final Act.,
1.
Appeal2015-000217
Application 13/602,805
A. Introduction
OPINION
The subject matter on appeal relates to a reed switch (claim 21, infra).
The reed switch comprises a first substrate having first and second electrical
contacts, and a first layer of ferromagnetic material including a first anchor
and a first reed having first and second ends (id.). As will be seen, a key
limitation is the hybrid bond structure formed by joining the first substrate
and the first layer, where the first end of the first reed is physically coupled
with the first anchor and the second end of the first reed is in electrical
communication with the first electrical contact via the first anchor (id.).
This bonding step is illustrated in Figure 16, reproduced below
(Specification, hereinafter "Spec.," i-f 35, 11. 1-22).
''•·"··· .. ,.,·,.-1/~ ...
-·- ... ,, __ _ ........ _
61)0
... ·'
Figure 16, Patterned ferromagnetic components 820, 824 are to
be bonded to the main substrate 800 to form two hybrid bond
structures by joining the interface between spacing pattern 826
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Application 13/602,805
and bonding pad 812, and another at the interface between
spacing pattern 828 and bonding pad 814.
According to paragraph 35, lines 9-10, of the Specification, the
bonding can be accomplished by metal diffusion bonding (solid-state
welding), transient liquid phase bonding, brazing, or solder reflow. For
example, the bonding pads 812, 814 of the main substrate 800 comprise a
material suitable for supporting the formation of the hybrid bonds (id. i-f 34,
11. 5-7). In this instance, they contain gold for forming a gold-diffusion
bond (id.). After the bonding operation, two hybrid bonds are formed when
the structures are joined as shown in Figure 17, reproduced below (id. i-f 35,
11. 1-3).
Figure 17, Integrated reed switch after bonding of the reed
components 822, 824.
Claim 21 is representative of the dispositive issues and reads:
A reed switch comprising:
a first substrate that defines a first plane, the first substrate
having a first electrical contact and a second electrical contact;
a first layer of ferromagnetic material, the first layer including a
first anchor and a first reed having a first end and a second end;
wherein the first layer and the first substrate are joined via a
hybrid bond such that (1) a first end of the first reed is
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Application 13/602,805
physically coupled with the first anchor and (2) the second end
of the first reed is in electrical communication with the first
electrical contact via the first anchor.
(Claims App., Br. 18, 11. 2-10; Emphasis added.)
The Examiner maintains the following ground of rejection: 3
A. Claims 21-25, 30-37, and 40-43 stand rejected under
35 U.S.C. § 102(b) in view ofBomand et al. (hereinafter
"Bomand"). 4
B. Discussion
Initially, we find that the Appellant presents arguments for
patentability based on the limitations of claim 21 (Appeal Br. 13-16).
Although the Appellant provides arguments under a separate sub-heading for
claim 35, these arguments are not substantively distinct from the arguments
presented for the rejection of claim 3 5. 5
The Appellant urges the Examiner erred in construing the requirement
of the independent claims, namely, that a first layer of ferromagnetic
material and a first substrate are joined via a hybrid bond (Br. 14, 11. and 15,
11. 1-12). In particular, the Appellant refers (id. at 15, 11. 4--12) to the
rejection of claim 21 on pages 2-3 of the Final Office Action, where the
Examiner explicitly stated:
3 Examiner's Answer delivered electronically on July 18, 2014 ("Ans.").
4 US 5,430,421 issued July 4, 1995.
5 According to the Appellant, "there is a typographical error in claim 35, 1.
11, in which the word 'first' in 'first substrate' is incorrectly written as
'second."' See Br. 16, 11. 14--16.
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Application 13/602,805
Bornand teaches a hybrid fabrication process for forming reed
contactors, such as reeds 219 and 221 shown in FIG. 21. In this
process, the vertical structure of electrodes 204 and 206 is
formed via successive formation and filling of "molds'" on base
layer 2. Specifically, Bomand discloses, "The photoresist is then
configured with the aid of a second mask (not represented to
clear, above the metallization tracks 12, 13, openings 25, 26, 27,
and 28 called molding holds at the location where galvanic
growth will subsequently take place .... "
In the words of the Appellant, "Bomand discloses a single substrate
process (i.e., all process steps are performed on the same 'said
substrate') .... Each successive structural member is GROWN, in place,
within a mold on that single substrate. In fact, Bomand explicitly discloses
that the metal elements are 'grown by electrodeposition"6 (Br. 14, 11. 20-25).
The Appellant argues that these processes described in Bomand are all
performed at a wafer level on a single substrate in which one of ordinary
skill in the art would recognize these processes as "monolithic fabrication"
as distinguished from the "hybrid fabrication" required by the claims (id. at
14, 11. 1-28 and 15, 11. 24--26). According to the Appellant, "[h]ybrid
fabrication is well understood in the Micro Electro Mechanical Systems field
as an 'assembly' process where different structures are formed on different
substrates and 'assembled' to integrate them on a single substrate" (id. at 15,
11. 18-20). As support, the Appellant cites to "'MEMS: Applications,'
edited by Dr. Mohamed Gad-el-Hak, CRC Press, Chapter 7, pg. 7-2
6 Refer to the processes described at col. 2, 1. 66-col. 3, 1. 18; col. 3, 11. 28-
52; and col. 3, 11. 4--6 of Bomand (Br. 13 and 14).
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Application 13/602,805
(2005)," which compares hybrid fabrication to water-level assembly (e.g.,
surface-micromachining), as follows:
All systems, no matter what kind of components they
consist of, must be assembled in some way. That assembly of
complete microsystems can be done either monolithically
(several systems simultaneously assembled at wafer level) or in
a hybrid fashion (by serial assembly of several individual
microcomponents fabricated by different technologies and on
different wafers).
In other words, the Appellant argues that "hybrid bond is performed
between two pre-existent elements; however, elements formed by
electrodepositions in the processes disclosed in Bomand do NOT exist prior
to their material being deposited on the single substrate" (Br. 16, 11. 1--4).
The Appellant concludes that "Bomand does not teach or suggest the
formation of a hybrid bond and, therefore, none of the structures disclosed
by Bomand includes a hybrid bond, as the term would be understood by one
of ordinary skill in the art" (id. at 14, 11. 25-29 and 15, 11. 5-8).
The Appellant's arguments do not identify a reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (an
appellant must identify a reversible error in the rejection although the PTO
retains the burden to show unpatentability).
The Examiner found that Figure 21 of Bomand illustrates the claimed
first ferromagnetic layer joined with the first substrate via hybrid bond (FR),
reproduced below.
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Application 13/602,805
219 56
Bomand's Figure 21 depicts a partially cut-away perspective view of
a "reed" contactor according to a disclosed embodiment (col. 4, 11. 12-
14).
Briefly, Bomand teaches a reed contractor including a base plane 202
comprising two distinct conducting zones 212 and 213, and two contact pins
56 which permit connection of the reed contractor to an exterior electronic
circuit (col. 6, 11. 50-53, col. 9. 11. 10-12; see also Abstract). The contact
pins 56 of the base plan 202 taught by Bomand correspond to the claimed
first and second electrical contacts of the substrate. Supported on the
substrate 202, according to Bomand, are beam (reed) 219 of electrode 204
and beam (reed) 221 of electrode 206 (col. 9, 11. 10-15). Bomand' s beams
of the electrodes correspond to the claimed ferromagnetic material layer.
Bomand also teaches that the reeds 219 and 221 of the electrodes 204 and
206 are formed by alternate levels of photoresist and of metallization, where
the photoresist layer is deposited on the substrate 202; the photoresist layer
is then configured to clear openings called moulding holes at the location
where galvanic growth will subsequently take place; metallic blocks of an
alloy of iron and nickel or of gold are formed in the moulding holes
provided in the photoresist layer by electrodeposition; and at the end of this
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Application 13/602,805
process, the reed contractor structure resembles what is represented in Figure
21 above (col. 6, 11. 44--62 and col. 9, 11. 12-20). The beams of the
electrodes disposed on the substrate, as taught by Bomand, corresponds to
the claimed hybrid structure where ferromagnetic material layer is joined
with the substrate.
The Appellant does not direct our attention to a definition in the
Specification for the term "hybrid bond," nor do we find one. However, the
Specification does disclose that "[t]he bonding can be accomplished by
metal diffusion bonding (solid-state welding), transient liquid phase
bonding, brazing, or solder reflow, for example" (Spec. i-f 35, 11. 9-10). For
instance, the bonding pads 812, 814 of the main substrate 800 illustrated in
the Appellant's Figure 16 comprises gold for forming a gold-diffusion bond
(id. i-f 34, 11. 5-7). Like the Appellant, Bomand teaches that the reeds of the
electrodes 206 and 204 are formed by alternate levels of photoresist and of
metallization; where the photoresist layer is deposited on the substrate 202;
the photoresist layer is then configured to clear openings called moulding
holes at the location where galvanic growth will subsequently take place;
and metallic blocks of an alloy of iron and nickel or of gold are formed in
the moulding holes provided in the photoresist layer by electrodeposition
(col. 6, 11. 44--62 and col. 9, 11. 12-20, emphasis added).
The Examiner also construed the claims to require the hybrid bond
structure as joining the first ferromagnetic layer and the first substrate such
that (1) a first end of the first reed is physically coupled with the first anchor
and (2) the second end of the first reed is in electrical communication with
the first electrical contact via the first anchor (Ans. 2, 11. 12-19). Under the
broadest reasonable interpretation in light of the supporting disclosure, the
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functional "such that" limitation is met when the first end of the first reed
(beam) is physically coupled with the first anchor and the second end of the
first reed is in electrical connection with the first electrical contact of the
substrate, as is shown in Figure 21 of Bomand. The Appellant's argument
based on the definition of "hybrid fabrication" provided by the Appellant
above focuses on the process in which hybrid bonds are formed in the field
of Micro Electric Mechanical System. However, the process in which the
hybrid structure is formed, as argued by the Appellant, has not been shown
to result in a structure that is patentably distinct from Bomand's structure.
Here, the claims are directed to a reed switch, not a method of making the
reed switch. Therefore, patentability is determined by the actual product
made-not the process by which it is made, and the burden was properly
shifted to the Appellant to show that the products are in fact patentably
different. Cf In re Thorpe, 777 F.2d 695, 697 (Fed Cir. 1985).
Hence; we discern no reversible error in the Examiner's determination
that a person having ordinary skill in the art would have expected,
reasonably, that Bomand's reed contact contains the same or substantially
the same structure as the hybrid bond structure recited in the claims.
The Appellant raises no other substantive criticisms of the appealed
rejection. We conclude that the Appellant has not demonstrated harmful
error in the appealed rejection.
C. Order
It is ORDERED that the rejection of claims 21-25, 30-37, and 40-43
is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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