InvenSense, Inc.

Patent Trials and Appeals BoardSep 29, 2021

2021003031 (P.T.A.B. Sep. 29, 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. 15/586,497 05/04/2017 Alexander Castro 000123-0014-101/IVS-730 2158 153866 7590 09/29/2021 Haley Guiliano LLP (InvenSense) 75 Broad Street Suite 1000 New York, NY 10004 EXAMINER PARCO JR, RUBEN C ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 09/29/2021 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): DocketRequests@hglaw.com haleyguiliano_PAIR@firsttofile.com hgpatentdocket@hglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER CASTRO, MATTHEW THOMPSON, LEONARDO BALDASARRE, SARAH NITZAN, and HOURI JOHARI-GALLE Appeal 2021-003031 Application 15/586,497 Technology Center 2800 Before JAMES R. HUGHES, ERIC S. FRAHM, and BETH Z. SHAW, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1–4, 9, 10, and 16–18 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 Claims 5, 6, 11–15, and 19–22 were withdrawn. See Final Act. 1–2; Appeal Br. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as InvenSense, Inc. See Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed May 4, 2017 (claiming benefit of US 62/462,519, filed Feb. 23, 2017); Appeal Brief (“Appeal Br.”), filed Oct. 15, 2020; and Reply Brief (“Reply Br.”), filed Appeal 2021-003031 Application 15/586,497 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, relates generally to microelectromechanical system (MEMS) sensors for motion sensing such as accelerometers and gyroscopes. Spec. ¶¶ 2–4. More specifically, Appellant’s claims are directed to systems for capacitive sensing of an external force on a MEMS device. The system includes a substrate and a movable MEMS device layer coupled to the substrate. The system also includes a sense electrode disposed on the substrate, and a capacitive sensing element formed between the movable MEMS device layer and the sense electrode. The sense electrode includes multiple slots that extend between two non-adjacent sides of the sense electrode, and which slots comprise between 8% and 20% of the surface area of the sense electrode. See Spec. ¶¶ 5–7, 83, 93; Abstr. Claim 1, is reproduced below and is illustrative of the claimed subject matter: 1. A system for providing for capacitive sensing of an external force on a microelectromechanical system (MEMS) device, the system comprising: a substrate located in a first plane; a movable component of a MEMS device layer, the MEMS device layer coupled to the substrate, wherein the movable component moves along a first axis in response to the external force; and a sense electrode disposed on the substrate in the first plane, wherein a first capacitive sensing element is formed between the movable component and the first sense electrode, wherein the first capacitive sensing element is configured to be responsive to the motion of the movable component along the first axis, Apr. 2, 2021. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed July 26, 2019; and Answer (“Ans.”) mailed Feb. 5, 2021. Appeal 2021-003031 Application 15/586,497 3 wherein the sense electrode comprises a plurality of slots that substantially extend between two non-adjacent sides of the sense electrode, and wherein the plurality of slots comprise at least 8% of the surface area of the sense electrode and less than 20% of the surface area of the sense electrode. Appeal Br. A-1 (Claims App.) (emphasis added). REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Kato et al. (“Kato”) US 7,225,675 B2 June 5, 2007 REJECTIONS3 1. The Examiner rejects claims 1–4, 9, 10, and 16–18 under 35 U.S.C. § 103 as being unpatentable over Kato. See Final Act. 2–6. 2. The Examiner rejects claims 1–4, 9, 10, and 16–18 under 35 U.S.C. § 103 as being unpatentable over Kato.4 See Final Act. 6–10. ANALYSIS Obviousness Rejection of Claims 1–4, 9, 10, and 16–18 The Examiner rejects independent claim 1 (as well as dependent claims 2–4, 9, 10, and 16–18) as being obvious over Kato. See Final Act. 2– 4; Ans. 3–6. The Examiner finds Kato describes a capacitive sensing microelectromechanical system (MEMS) device including a sense electrode 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date after the AIA’s effective (March 16, 2013), this decision refers to 35 U.S.C. § 103. 4 The Examiner’s rejection is substantially identical to the first rejection, but the Examiner uses a different electrode configuration from Kato. Appeal 2021-003031 Application 15/586,497 4 with multiple slots. See Final Act. 3. The Examiner concedes that Kato does not describe the slots comprising the recited percentage range of surface area (at least 8% and less than 20%), but concludes that the recited percentage range of surface area of the slots is a recitation of relative dimensions that would not perform differently than the prior art device. See Final Act. 3–4; Ans. 3–6 (citing MPEP § 2144.04 (IV) and Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984)). The Examiner further concludes that the recited percentage range of surface area would have been obvious through routine experimentation. See Ans. 5. Appellant contends that Kato does not teach the disputed limitations of claim 1. See Appeal Br. 5–16; Reply Br. 3–6. Specifically, Appellant contends, inter alia, that that the instant Specification explains an entirely different purpose for the electrode slots and percentage range of surface area of the slots recited in the claim than that described in Kato (which explicitly describes the purpose of the electrode patterns (and resulting gaps) is for the minimization of hillocks on the electrode surface). See Appeal Br. 5–16; Reply Br. 3–6. Appellant further contends that the Examiner’s unsupported hindsight reasoning ignores the express teachings in Kato and a person having ordinary skill in the art would not have looked to Kato to arrive at the recited electrode much less the specific percentage range of surface area of the slots of the electrode. See Appeal Br. 7–16; Reply Br. 3–6. We agree with Appellant that Kato does not teach or suggest the specific percentage range of surface area of the slots of the electrode. In particular, as conceded by the Examiner (supra), Kato does not teach any percentage range of surface area for its slots. Kato, however, discusses at length reducing the size of the electrode to minimize hillocks and increase Appeal 2021-003031 Application 15/586,497 5 capacitive sensitivity. See Ans. 3–6 (citing Kato et seq.). As explained by Appellant, the surface area range recited in claim 1 optimizes capacitive sensitivity by preventing crack propagation while maximizing sense area. See Appeal Br. 5, 11–13. The Examiner essentially disregards the recited surface area range. We are persuaded by Appellant’s contentions that one having ordinary skill in the art would not have looked to Kato for the claimed electrode arrangement. The Examiner does not clearly explain how one would arrive at the recited surface area range or provide persuasive evidence supporting the Examiner’s position that the instant claimed device would not function differently than Kato’s device. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that Kato renders obvious Appellant’s claim 1. Claims 2–4, 9, 10, and 16–18 depend from and stand with claim 1. Thus, we do not sustain the Examiner’s obviousness rejection of claims 1–4, 9, 10, and 16–18. Second Obviousness Rejection The Examiner also rejects claims 1–4, 9, 10, and 16–18 as being obvious over a second embodiment of Kato. See Final Act. 6–10. The second obviousness rejection over Kato uses the same reasoning as the first rejection (supra). For the same reasons as claim 1, Appellant persuades us of error in the Examiner’s second obviousness rejection of claims 1–4, 9, 10, and 16–18 in view of Kato. Therefore, we reverse the Examiner’s second obviousness rejection of these claims. Appeal 2021-003031 Application 15/586,497 6 CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1–4, 9, 10, and 16–18 under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s rejections of claims 1–4, 9, 10, and 16–18. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 9, 10, 16–18 103 Kato 1–4, 9, 10, 16–18 REVERSED