INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardApr 1, 20212020003196 (P.T.A.B. Apr. 1, 2021) Copy Citation 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 Appeal Br. 2. 3 Claim 7 is withdrawn and claims 2, 4–6, 9, 11, and 12 are cancelled.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. Appeal 2020-003196 Application 13/971,308 2 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 Appeal 2020-003196 Application 13/971,308 3 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. Appeal 2020-003196 Application 13/971,308 4 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 Appeal 2020-003196 Application 13/971,308 5 106). 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. Appeal 2020-003196 Application 13/971,308 6 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)”). Appeal 2020-003196 Application 13/971,308 7 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, Appeal 2020-003196 Application 13/971,308 8 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. Appeal 2020-003196 Application 13/971,308 9 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. Appeal 2020-003196 Application 13/971,308 10 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 Copy with citationCopy as parenthetical citation