INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Apr 1, 2021

2020003196 (P.T.A.B. Apr. 1, 2021)

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.
13/971,308 08/20/2013 William J. Gallagher YOR920130080US2 5563
48915 7590 04/01/2021
CANTOR COLBURN LLP-IBM YORKTOWN
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
MAI, ANH D
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM J. GALLAGHER,
EUGENE J. O’SULLIVAN, and NAIGANG WANG
____________

Appeal 2020-003196
Application 13/971,308
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1, 3, 8, and 10.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed Aug. 20, 2013 (“Spec.”);
Final Office Action dated Apr. 8, 2019 (“Final Act.”); Advisory Action
dated July 12, 2019 (“Advisory Act.”); Appeal Brief filed Oct. 7, 2019
(“Appeal Br.”); Examiner’s Answer dated Jan. 27, 2020 (“Ans.”); and Reply
Brief filed Mar. 24, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Br. 2.
3 Claim 7 is withdrawn and claims 2, 4–6, 9, 11, and 12 are cancelled. Final
Act. 1, 2; Appeal Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to manufacturing of micro-electromechanical
(MEMS) devices, and more specifically to methods for forming a
component of MEMS inductors, transformers, inductive actuators and/or
inductive sensors. Spec. ¶ 2; Abstract. Claim 1 illustrates the subject matter
on appeal and is reproduced below from the Claims Appendix to the Appeal
Brief:
1. A micro-electromechanical device, comprising:
a wafer substrate;
a first support structure having a first profile formed on
an upper surface of the wafer substrate and a second support
structure having a second profile formed on the upper surface of
the wafer substrate, the second support structure spaced a
distance apart from the first support structure, the first and
second profiles matching one another;
a metal beam attached to the first support structure at a
first end and attached to the second support structure at a
second end, the metal beam suspended above the upper surf ace
of the wafer substrate, wherein the metal beam is made of a
metal that is non-reactive to electroless deposition;
a layer of palladium coating top, bottom and sides of a
middle portion of the metal of the metal beam located between
the first and second support structures, wherein the palladium
is reactive to electroless deposition; and
a soft magnetic material coating top, bottom and sides of
the layer of the palladium located at the middle portion so as to
completely encapsulate both the middle portion of metal beam
and the layer of palladium located at the middle portion,
wherein the soft magnetic material includes a cobalt alloy,
wherein a space between the suspended metal beam and
the upper surface of the wafer substrate directly exposes a
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Application 13/971,308

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bottom portion of the soft magnetic material coating that
completely covers the bottom of the metal beam, and
wherein a first profile of the soft magnetic material that
coats the layer of palladium at the first end of metal beam
matches a second profile of the soft magnetic material that coats
the layer of palladium at the second end of the metal beam.
Appeal Br. 11 (key disputed claim language italicized and bolded).

REFERENCES
The Examiner relies on the following prior art as evidence in rejecting the
claims on appeal:
Name Reference Date
Lin et al. (“Lin”) US 5,167,992 Dec. 1, 1992
Bishop et al. (“Bishop”) US 6,124,650 Sept. 26, 2000
Fujii et al. (“Fujii”) US 6,833,985 B2 Dec. 21, 2004
Wang et al. (“Wang”) US 7,285,492 B2 Oct. 23, 2007

REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:4
1. Claims 1, 3, 8, and 10 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement (“Rejection 1”). Final Act. 2.
2. Claims 1, 3, and 10 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Bishop in view of Lin and Fujii (“Rejection 2”). Final
Act. 4.

4 The Examiner’s § 112 rejection of claim 10 for indefiniteness (Final Act.
3) is withdrawn by the Examiner at page 4 of the Answer.
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3. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Bishop in view of Lin and Fujii, as applied to claim 1 above, and
further in view of Wang (“Rejection 3”). Final Act. 7.

OPINION
Having considered the respective positions the Examiner and Appellant
advance in light of this appeal record, we affirm the Examiner’s § 112 rejection of
claims 1, 3, 8, and 10 for lack of written description (Rejection 1) based essentially
on the factual findings and reasons the Examiner provides in the Answer, Advisory
Action, and Final Office Action. Conversely, for the reasons we discuss below, we
reverse the Examiner’s § 103 rejections of claims 1, 3, and 10 as obvious over
Bishop, Lin, and Fujii (Rejection 2) and claim 8 as obvious over Bishop, Lin, Fujii,
and Wang (Rejection 3).
Rejection 1
The Examiner rejects claims 1, 3, 8, and 10 under § 112 for lack of written
description. Final Act. 2–3. The Examiner determines Appellant’s Specification, as
filed, does not provide written description for “the first and second profiles
matching one another” limitation of claim 1. Id. at 3. The Examiner maintains
Appellant “has not pointed out where the new limitation is supported, nor does
there appear to be a written description of the claimed limitation in the application
as filed” and “the original specification is completely silent regarding [a]
‘matching profile’ of the first and second support[] structures.” Id.
Appellant does not present argument in response to this rejection in the
Appeal Brief. See generally Appeal Br. Rather, in the Reply Brief, Appellant
contends, based on the originally filed drawings,
FIG. 1 shows a first support structure having a first profile (left
106) and a second support structure having a second profile (right
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106). The profile of first support structure (left 106) matches the
second profile of the second support structure (right 106).
Therefore, at least FIG. 1 of Appellant’s originally filed
application supports, “a micro-electromechanical device
comprising a first support structure having a first profile formed
on an upper surface of the wafer substrate and a second support
structure having a second profile formed on the upper surface of
the wafer substrate, the second support structure spaced a
distance apart from the first support structure, the first and
second profiles matching one another.”
Reply Br. 5.
Appellant’s argument, however, is untimely and Appellant has not
established good cause for failing to present that argument in the opening Appeal
Brief. See 37 C.F.R. § 41.41(b)(2). Even it were timely, the argument would be
unpersuasive because it is based on Figure 1 of the originally filed drawings being
drawn to scale and there is no indication within the Specification that the figure
was drawn to scale. See Hockerson-Halberstadt, Inc. v. Avia Group lnt’l, 222 F.3d
951, 956 (Fed. Cir. 2000).
Appellant’s argument would essentially require evaluating Figure 1 for
precise dimensional attributes with respect to first and second support structures
106 it depicts, where the Specification is devoid of any indication that the figure is
drawn to scale. Indeed, our reviewing courts have long since cautioned that
“arguments based on drawings not explicitly made to scale . . . are unavailing.”
Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (citations omitted); see
also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written
description in the specification of quantitative values, arguments based on
measurement of a drawing are of little value.”).
Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 8, and 10
under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph for lack of
written description.
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Rejection 2
The Examiner determines that the combination of Bishop, Lin, and Fujii
suggests a device satisfying the limitations of claim 1 and concludes the
combination would have rendered the claim obvious. Final Act. 4–7.
Regarding “a layer of palladium coating top, bottom and sides of a middle
portion of the metal of the metal beam located between the first and second support
structures” the Examiner relies on Bishop for disclosing that limitation. Id. at 4–6
(citing Bishop, 4:10–12, 5:39–43, Fig. 4). In particular, the Examiner finds Bishop
discloses a metal beam comprising palladium (Bishop, 4:10–12) and although not
explicitly shown in Figure 4 of the reference, that Bishop’s soft magnetic material
24 is formed on the metal beam utilizing electroless deposition (id. at 5:39–43).
Appellant argues the Examiner’s rejection of claim 1 should be reversed
because the cited art does not teach or suggest “a layer of palladium coating top,
bottom and sides of a middle portion of the metal of the metal beam,” as claimed.
Appeal Br. 4–5; Reply Br. 2–3.
In particular, Appellant contends that, in contrast to the MEMS device of
claim 1, which requires a layer of palladium coating the top, bottom, and sides of a
middle portion of the metal of the metal beam, Bishop describes a cantilever
consisting entirely of single metal material and the use and placement of current
conductors that may comprise palladium, which are entirely different elements
than the metal beam. Appeal Br. 5; see also Reply Br. 2 (noting the portion of
Bishop the Examiner identifies “is specifically directed to current conductors 10,
which are entirely different elements from the metal beam” and “describes only
that the current conductors 10 may be selected from metals including palladium
(Pd)”).
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Appellant’s argument is persuasive because, on this appeal record, the
Examiner has not established by a preponderance of the evidence that Bishop
teaches or suggests “a layer of palladium coating top, bottom and sides of a middle
portion of the metal of the metal beam,” as recited in the claim. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on
review of the prior art . . . of presenting a prima facie case of unpatentability.”).
Regarding “a layer of palladium coating top, bottom and sides of a middle
portion of the metal of the metal beam,” the Specification describes:
The layer of palladium may be a few atomic layers in thickness.
The layer of palladium is deposited on the metal beam 102 to
increase the reactivity of the metal beam 102 to the electroless
deposition process. The layer of palladium is generally deposited
on the metal beam 102 when the metal of the metal beam 102 is
made of a metal, such as copper, that is non-reactive to
electroless deposition.
Spec. ¶ 39. In contrast to the Examiner’s rejection, the Specification does not
describe a metal beam consisting of entirely of single metal material and the use of
current conductors that may comprise palladium.
The portions of Bishop the Examiner cites and relies upon in the rejection do
not teach or suggest “a layer of palladium coating top, bottom and sides of a
middle portion of the metal of the metal beam,” as required by the claim. See
Bishop, 4:10–12, 5:39–43, Fig. 4. Although, for example, column 4 of Bishop
describes an embodiment that includes a configuration of latchable current
carrying conductors 10 and that the conductor material may be selected from high
conductivity materials including palladium (Pd) (Bishop, 4:7–14), and Figure 4 of
Bishop depicts a different embodiment in which current conductors 10 and soft
magnetic thin-film material 24 are placed on the same substrate as fixed electrode
18 (Bishop, 6:58–65), the Examiner does not identify or direct us to any specific
disclosure or discussion in Bishop regarding a layer of palladium coating the top,
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bottom, and sides of a middle portion of the metal of the metal beam (cantilever
12) in the manner claimed.
The Examiner also does not identify sufficient evidence or persuasively
explain how or why one of ordinary skill in the art would have understood
Bishop’s disclosure regarding a configuration of latchable current carrying
conductors 10 that may comprise palladium as teaching or suggesting “a layer of
palladium coating top, bottom and sides of a middle portion of the metal of the
metal beam,” as claimed. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (requiring “reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
The Examiner’s comments at page 5 of the Answer and pages 4–6 of the
Final Office Action, without more, are insufficient because the Examiner does not
meaningfully address Appellant’s principal argument that Bishop’s disclosures
regarding latchable current carrying conductors 10 that may comprise palladium do
not teach or suggest “a layer of palladium coating top, bottom and sides of a
middle portion of the metal of the metal beam,” as claimed. Although the
Examiner asserts that “[s]ince the metal beam of Bishop comprises palladium (Pd),
thus, the limitation . . . is met” (Ans. 5), the Examiner does not direct us to
persuasive evidence or provide adequate technical reasoning to sufficiently support
any such finding. The Examiner also does not address the technical feasibility or
provide any discussion as to whether the device Bishop depicts in Figure 4
including current conductors 10 would increase the reactivity of the metal beam to
the electroless deposition process, as Appellant’s Specification describes. See
Spec. ¶ 39.
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Contrary to what the Examiner’s rejection seems to imply, the fact that it
may have been technically possible for Bishop’s device to have been modified to
include “a layer of palladium coating top, bottom and sides of a middle portion of
the metal of the metal beam,” without more, does not necessarily mean or suggest
it would have been obvious to one of ordinary skill in the art to do so in view of
Bishop’s disclosures regarding use of current conductors. See Belden Inc. v. Berk-
Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether
a skilled artisan not only could have made but would have been motivated to make
the combinations or modifications of prior art to arrive at the claimed invention.”)
(emphasis in original).
Thus, on this appeal record, we are not persuaded the portions of Bishop the
Examiner cites and relies upon in the rejection disclose or suggest “a layer of
palladium coating top, bottom and sides of a middle portion of the metal of the
metal beam,” as required by the claim.
We, therefore, do not sustain the Examiner’s rejection of claim 1. Because
claims 3 and 10 depend from claim 1, we also do not sustain the Examiner’s
rejection of those claims for the same reasons as claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1, 3, and 10
under 35 U.S.C. § 103(a) as obvious over Bishop, Lin, and Fujii.

Rejection 3
Claim 8 depends from claim 1 and further recites “wherein the soft magnetic
material is cobalt-tungsten-phosphorus.” Appeal Br. 12 (Claims Appendix). The
Examiner rejects claim 8 under § 103(a) as obvious over Bishop, Lin, Fujii, and
Wang. Final Act. 7.
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Because claim 8 depends from claim 1 and the foregoing deficiencies in the
Examiner’s findings and conclusions regarding the Bishop reference’s disclosures
are not remedied by the Examiner’s findings regarding the additional reference or
combination of references, for principally the same reasons we discuss above for
Rejection 2, we reverse the Examiner’s rejection of claim 8 under 35 U.S.C.
§ 103(a) as obvious over Bishop, Lin, Fujii, and Wang (Rejection 3).

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 8, 10 112(a) or
112, 1st para.
Written description 1, 3, 8, 10
1, 3, 10 103(a) Bishop, Lin, Fujii

1, 3, 10
8 103(a) Bishop, Lin,
Fujii, Wang
8
Overall
Outcome
1, 3, 8, 10

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED