Ex Parte YEN et al

Patent Trial and Appeal Board

Mar 25, 2019

14039024 (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/039,024 09/27/2013 Hsiao-Tsung YEN
95496 7590 03/27/2019
Hauptman Ham, LLP (TSMC)
2318 Mill Road
Suite 1400
Alexandria, VA 22314
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.
T5057-935 3470
EXAMINER
HINSON, RONALD
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
tsmc@ipfirm.com
sramunto@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HSIAO-TSUNG YEN and CHENG-WEI LUO
Appeal2017-005948
Application 14/039,024
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-16 and 21-24. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 We cite the Specification ("Spec.") filed September 27, 2013; Final Office
Action ("Final Act.") dated November 19, 2015; Appellant's Appeal Brief
("App. Br.") filed July 20, 2016; Examiner's Answer ("Ans.") dated
December 23, 2016; and Appellant's Reply Brief ("Reply Br.") dated
February 23, 2017.
2 Appellant is Taiwan Semiconductor Manufacturing Company, Ltd., which
is identified in the Appeal Brief as the real party in interest. App. Br. 2.
Appeal2017-005948
Application 14/039,024
BACKGROUND
The subject matter on appeal relates to inductors. Spec. ,r 1. Claims
1, 10, and 21, which are the independent claims, read as follows:
1. A slow wave inductive structure comprising:
a first substrate;
a first conductive winding over the first substrate; and
a second substrate over the first substrate, the second
substrate having a thickness ranging from about 50 nanometers
(nm) to about 150 nm, wherein a distance between the first
conductive winding and the second substrate ranges from about
1 micron (µm) to about 2 µm.
10. A slow wave inductor comprising:
a first substrate;
a first conductive winding over the first substrate;
a second substrate over the first substrate; and
a plurality of switches in the second substrate, wherein
the first conductive winding is connected to at least one switch
of the plurality of switches.
21. A slow wave inductive structure comprising:
a first substrate;
a first conductive winding over the first substrate;
a second substrate over the first substrate, the second
substrate having a thickness ranging from about 50 nanometers
(nm) to about 150 nm; and
a second conductive winding over the second substrate,
wherein the first conductive winding is configured to be
selectively connected to the second conductive winding.
App. Br. 22, 23, 25 (Claims Appendix) (emphasis added to highlight the
disputed recitations).
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Application 14/039,024
REJECTIONS
I. Claim 1 stands rejected under 35 U.S.C. § I02(a)(l) as anticipated by
Shimazawa. 3
II. Claims 1-5 and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hasegawa4 in view of Shimazawa.
III. Claims 6, 7, and 21-24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hasegawa in view of Shimazawa and Kim. 5
IV. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over
Hasegawa in view of Shimazawa and Lim. 6
V. Claims 10 and 13-16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hasegawa in view of Kim.
VI. Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hasegawa in view of Kim and Shimazawa.
OPINION
Rejection I
The Examiner finds that Shimazawa describes an inductor structure
that meets every feature of claim 1. Final Act. 2-3. Referring to
Shimizawa's Figure 6a, the Examiner finds that the thickness of
Shimizawa's insulating layer 10 defines a distance between a first winding
11 and a second substrate 9. Id. at 13. Shimizawa describes forming three
insulating layers (10, 12, and 14 in Shimizawa's Figure 6A), and states that
"the total thickness of the insulating layers 10, 12 and 14 is 3 to 20 µm."
3 US 2004/0075523 Al, published April 22, 2004.
4 US 4,959,631, issued September 25, 1990.
5 US 6,992,366 B2, issued January 31, 2006.
6 US 2012/0274434 Al, issued November 1, 2012.
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Application 14/039,024
Shimizawa ,r 75. The Examiner finds that Shimizawa's description of 3 µm
for a total thickness of the three insulating layers constitutes a description of
layer 10 having a thickness of about 1 to about 2 µm. See Final Act. 3, 13;
Ans. 13.
Appellant argues that Shimizawa's description of a total thickness for
the three above-mentioned insulating layers fails to describe a thickness of
the layers individually. App. Br. 7-9; Reply Br. 4. Appellant's argument is
not persuasive of reversible error.
Appellant does not dispute the Examiner's finding that Shimizawa
describes an embodiment in which the combined thickness of layers 10, 12,
and 14 is 3 µm. As such, Appellant does not dispute that Shimizawa's layer
10 defines a distance of less than 3 µm. Appellant does not contend that a
distance of less than 3 µm falls outside the scope of "about 2 µm" as
claimed. Moreover, "in considering the disclosure of a reference, it is proper
to take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefreom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). Appellant has
not shown reversible error in the inference that Shimizawa's description of
the three insulating layers having a 3 µm thickness would have resulted in
layer 10------depicted in Figure 6a as the thinnest of the three-having a
thickness in the range of about 1 to about 2 µm.
For the foregoing reasons, Rejection I is sustained.
Re} ections II and IV
Relevant to Appellant's arguments regarding Rejection II, the
Examiner finds that Hasegawa discloses an inductor structure that includes a
first conductive winding Sa and a second substrate 3b, but fails to disclose a
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Application 14/039,024
distance of about 1 to about 2 µm between the first winding and second
substrate. Final Act. 3--4. The Examiner determines that it would have been
obvious to one of ordinary skill in the art to provide the noted 1-2 µm
distance "to design the inductive device to be more compact." Id. at 4.
Appellant generally argues that the Examiner failed to articulate a
sufficient reason why one skilled in the art would provide the claimed
distance in Hasegawa's structure. App. Br. 10-12. See also Reply Br. 6
("[T]he Examiner has failed to provide sufficient evidence to support the
asserted obviousness rejection.").
Hasegawa's Figure 3B shows winding Sa positioned directly on layer
3b. Consistent with that depiction, Hasegawa states that the disclosed
inductor is made by assembling the various structural components and
applying pressure. Hasegawa 9:14--17. From these disclosures, it is
apparent that the components relied upon by the Examiner as the recited first
winding and second substrate----components Sa and 3b in Hasegawa-are
provided with no intervening space or distance. As such, the Examiner's
finding that making Hasegawa's device more compact would have served as
a reason for providing a 1-2 µm distance between Hasegawa's components
Sa and 3b is not supported by a preponderance of evidence.
Accordingly, Rejection II is not sustained. Because the Examiner
applies the same unsupported finding in rejecting claim 8, Rejection IV also
is not sustained.
Rejection III
Each of claims 21-24 requires, inter alia, first and second windings,
"wherein the first conductive winding is configured to be selectively
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Application 14/039,024
connected to the second conductive winding." Claim 6 similarly requires a
switch configured to selectively connect the first and second windings.
Claim 7 requires that the first winding is disconnected from the second
winding. The Examiner's rejection of these claims is premised on the
finding that Kim "discloses at least one switch ( 6) ... configured to
selectively connect the first conductive winding to the second conductive
winding," and that it would have been obvious in light of Kim's disclosure
to modify Hasegawa's inductor such that Hasegawa's first and second
windings would have been selectively connected. Final Act. 5-8.
Appellant argues that Kim first and second windings are permanently
connected and, therefore, fails to disclose a configuration for selective
connection or disconnection of the respective windings. App. Br. 13-16.
Particularly, Appellant points to Kim's Figures 4 and 5, and contends that
these figures show a permanent electrical connection between first and
second windings, and a switch wired in parallel between one of the windings
and a node located on the permanent electrical connection. Id. at 13. We
agree. See Kim 3:29-33 ("[E]ach of upper and lower inductors Ll and L2 is
connected [to] each other by contact electrodes 7, 8, 9. In addition, the
switching element 6 is connected to the inductor L2 in parallel."). Kim
further explains that switching element 6 acts as a resistance when turned on,
and as a capacitor when turned off, as depicted in the equivalent circuits
shown in Kim's Figures 6A and 6B. Kim 4:4--8. The Examiner does not
point to any disclosure in Kim that would support a finding that Kim's
switching element 6 would serve to selectively disconnect Kim's Ll from
L2.
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Application 14/039,024
As such, we are persuaded that the Examiner has not presented
sufficient evidence to support the determination of obviousness.
Rejection III is not sustained.
Rejection V
With regard to Rejection V, Appellant argues claim 10 and does not
separately argue any of claims 13-16. Relevant to Appellant's arguments,
the Examiner finds that Hasegawa discloses an inductor comprising a first
substrate, a first winding over the first substrate, and a second substrate over
the first substrate, but does not disclose a plurality of switches, at least one
of which is connected to the first winding. Final Act. 9. The Examiner finds
that Kim teaches it was known to provide switches connected to a winding
for the purpose of controlling the device to a desired inductance. Id. 9-10.
Appellant argues that Kim provides the disclosed switches in a first
substrate, not a second substrate. App. Br. 19. Particularly, with reference
to Kim's Figure 5, Appellant contends that "Kim shows switching element 6
... in a same substrate that element 35 is over. That is, the asserted plurality
of switches is in the first substrate of Kim, not the second substrate of Kim."
Id. See also Reply Br. 11 (arguing that Kim discloses a single substrate,
with the windings and switches located in various layers over the substrate).
Appellant's arguments are not persuasive of reversible error. First,
Appellant's characterization of the location of switches in Kim does not
address the combined teachings of Hasegawa and Kim relied upon for the
obviousness determination. Appellant's remarks solely directed at Kim do
not present facts or reasoning to challenge the Examiner's determination that
it would have been obvious to provide Kim's switches in a second substrate
in Hasegawa. Second, we are not persuaded that Kim does not teach
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Application 14/039,024
providing switches in a second substrate located over a first substrate. Kim
depicts an embodiment in which a switch 6 is located at least in part in a
second material layer directly above a lower-most substrate. See Kim Fig. 5.
See also App. Br. 19 (acknowledging that Kim's "switching element 6 is
formed on another different layer") ( quoting Kim 3 :39-40). Appellant does
not persuasively argue that Kim's second material layer would not constitute
a second substrate.
Rejection Vis sustained.
Rejection VI
With regard to Rejection VI, Appellant argues only that "Shimazawa
fails to teach or suggest the recited dimensions for reasons analogous to
those set forth above." App. Br. 20. Appellant's only arguments regarding
Shimazawa's dimensions are those presented in connection with Rejection
II-namely, that Shimazawa fails to provide a reason to modify Hasegawa's
to include a 1-2 µm distance between Hasegawa's first winding and second
substrate. App. Br. 10-11. Claim 12 recites a distance of about 1 to about
2 µm between the first winding and second substrate; claim 11 does not. We
find Appellant's argument persuasive with regard to claim 12 for the same
reasons set forth above in connection with Rejection II. However,
Appellant's argument does not identify error with regard to claim 11 because
the argument addresses a feature not found in that claim.
Accordingly, we sustain Rejection IV as applied to claim 11. We do
not sustain Rejection IV as applied to claim 12.
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CONCLUSION
The Examiner's rejection of claim 1 under 35 U.S.C. § 102(a)(l) as
anticipated by Shimazawa is sustained.
The Examiner's rejection of claims 1-5 and 9 under 35 U.S.C. § 103
as unpatentable over Hasegawa in view of Shimazawa is not sustained.
The Examiner's rejection of claims 6, 7, and 21-24 under 35 U.S.C.
§ 103 as unpatentable over Hasegawa in view of Shimazawa and Kim is not
sustained.
The Examiner's rejection of claim 8 under 35 U.S.C. § 103 as
unpatentable over Hasegawa in view of Shimazawa and Lim is not
sustained.
The Examiner's rejection of claims 10 and 13-16 under 35 U.S.C.
§ 103 as unpatentable over Hasegawa in view of Kim is sustained.
The Examiner's rejection of claim 11 under 35 U.S.C. § 103 as
unpatentable over Hasegawa in view of Kim and Shimazawa is sustained.
The Examiner's rejection of claim 12 under 35 U.S.C. § 103 as
unpatentable over Hasegawa in view of Kim and Shimazawa is not
sustained.
DECISION
The Examiner's decision is affirmed-in-part.
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-IN-PART
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