DETAILED ACTION
This office action addresses Applicant’s response filed on 3 December 2025. Claims 1, 4-12, and 14- 23 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 5-7, 10-12, 15, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz (US 2018/0314785) in view of Lu (US 2015/0364359), Licausi (US 2018/0174895), and Shah (US 9,070,552).
Regarding claim 1, Schultz discloses an integrated circuit (IC) structure comprising: an IC cell comprising a semiconductor structure having a cell width in a first direction and a cell height in a second direction perpendicular to the first direction (Figs. 1-3; ¶¶3, 4, 28);
a first plurality of metal segments extending in a first metal layer in the first direction, comprising a first metal segment electrically connected to the semiconductor structure, and having a first pitch in the second direction, perpendicular to the first direction (Figs. 1-3, Metal 0 or 1).
a second plurality of metal segments extending in a second metal layer in the second direction, comprising a second metal segment electrically connected to the first metal segment, and having a second pitch in the first direction (Figs. 1-3, Metal 1 or 2); and
a third plurality of metal segments extending in a third metal layer in the first direction, comprising a third metal segment electrically connected to the second metal segment, and having a third pitch in the second direction (Figs. 1-3, Metal 2 or 3), wherein
the second metal layer is a next consecutive layer overlying the first metal layer, the third metal layer is a next consecutive layer overlying the second metal
layer (Figs. 1-3).
Schultz does not appear to explicitly disclose that a ratio of the second pitch in the second direction to the third pitch in the first direction has a value ranging from 1.1 to 1.5. Lu discloses these limitations (¶¶20, 27, 32), and also further discloses the claimed routed first, second, third, and fourth metal segments in corresponding metal layers overlying and adjacent to each other (Fig. 13, segments in each metal layer). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz and Lu, because doing so would have involved merely the routine use of a known technique to improve similar devices in the same way to achieve the predictable results of decreased resistance/improved performance by using larger pitches for a given metal layer. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu teaches that performance and yield can be improved by relaxing pitches in a metal layer. The teachings of Lu are directly applicable to Schultz, so that Schultz’s routing of metal layers would similarly relax the pitch of a metal layer to improve performance and yield.
Schultz does not appear to explicitly disclose that a ratio of the cell height to the first pitch is equal to or less than five. However, the ratio of the cell height to the first pitch is a conventional measure of cell height, such that cells are referred to as a ‘5 track cell’, ‘9 track cell’, etc., and the height of the cell can be chosen by circuit designers to satisfy desired specifications. Furthermore, Licausi teaches that a ratio of the cell height to the first pitch is equal to or less than five (¶4). If Licausi is found to be unclear regarding the first pitch, Shah discloses the same (col. 3, lines 44-50). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, and Shah, because doing so would have involved merely the routine combination of known elements according to known techniques to produce merely the predictable results of using known 5-track cells in a cell layout based on design requirements. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1395. Schultz discloses placing cells in a layout and routing metal segments on associated tracks. Licausi teaches that cells have heights of five tracks, and Shah teaches tracks having the first pitch. The teachings of Licausi and Shah are directly applicable to Schultz in the same way, so that Schultz would similarly use known 5-track cells based on the first pitch to meet design requirements.
Regarding claim 5, Schultz discloses that the first metal segment of the first plurality of metal segments overlies a polysilicon or active region of the semiconductor structure (Figs. 1-3; ¶26).
Regarding claims 6 and 15, Schultz discloses that at least one of the first metal segment and one or more additional metal segments of the first plurality of metal segments are coextensive in the second direction, the second metal segment and one or more additional metal segments of the second plurality of metal segments are coextensive in the first direction, or the third metal segment and one or more additional metal segments of the third plurality of metal segments are coextensive in the second direction (Figs. 1-3, coextensive Metal 0-3 segments).
Regarding claim 7, Schultz discloses that a plurality of metal layers comprises the first through third metal layers (Figs. 1-3), but does not appear to explicitly disclose that the plurality of metal layers comprises a number of metal layers ranging from ten to fifteen. Lu discloses these limitations (¶2). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz and Lu, because doing so would have involved merely the routine combination of known elements according to known techniques to produce merely the predictable results of permitting additional routing. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1395. Schultz discloses an IC structure having at least four metal layers (M0-M3). Lu teaches that the number of layers may specifically be up to ten. The teachings of Lu are directly applicable to Schultz, so that Schultz would similarly have up to ten layers to provide sufficient layers for routing complex designs.
Regarding claims 10 and 16, Schultz discloses at least one of a first via overlying and electrically connected to a metal segment of the first plurality of metal segments; a second via overlying and electrically connected to a metal segment of the second plurality of metal segments; or a third via overlying and electrically connected to a metal segment of the third plurality of metal segments (Figs. 1-3 vias between Metals 0-3).
Regarding claim 11, Schultz discloses that the semiconductor structure comprises a component of a processing device (¶¶3, 4, 26, 28).
Regarding claim 12, Schultz discloses an integrated circuit (IC) structure comprising: an IC cell comprising a semiconductor structure having a cell width in a first direction and a cell height in a second direction perpendicular to the first direction (Figs. 1-3; ¶¶3, 4, 28);
a first metal layer comprising a first plurality of metal segments extending in the first direction, comprising a first metal segment electrically connected to the semiconductor structure, and having a first pitch in the second direction (Figs. 1-3, Metal 0 or 1).
a second metal layer comprising a second plurality of metal segments extending in the second direction, comprising a second metal segment electrically connected to the first metal segment, and having a second pitch in the first direction (Figs. 1-3, Metal 1 or 2); and
a third metal layer comprising a third plurality of metal segments extending in the first direction, comprising a third metal segment electrically connected to the second metal segment, and having a third pitch in the second direction (Figs. 1-3, Metal 2 or 3), wherein
the second metal layer is a next consecutive layer overlying the first metal layer, the third metal layer is a next consecutive layer overlying the second metal
layer (Figs. 1-3), and the semiconductor structure is a component of a processing device (¶¶3, 4, 26, 28).
Schultz does not appear to explicitly disclose that a ratio of the second pitch in the second direction to the third pitch in the first direction has a value ranging from 1.1 to 1.5. Lu discloses these limitations (¶¶20, 27, 32), and also further discloses the claimed routed first, second, third, and fourth metal segments in corresponding metal layers overlying and adjacent to each other (Fig. 13, segments in each metal layer). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz and Lu, because doing so would have involved merely the routine use of a known technique to improve similar devices in the same way to achieve the predictable results of decreased resistance/improved performance by using larger pitches for a given metal layer. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu teaches that performance and yield can be improved by relaxing pitches in a metal layer. The teachings of Lu are directly applicable to Schultz, so that Schultz’s routing of metal layers would similarly relax the pitch of a metal layer to improve performance and yield.
Schultz does not appear to explicitly disclose that a ratio of the cell height to the first pitch is equal to or less than five. However, the ratio of the cell height to the first pitch is a conventional measure of cell height, such that cells are referred to as a ‘5 track cell’, ‘9 track cell’, etc., and the height of the cell can be chosen by circuit designers to satisfy desired specifications. Furthermore, Licausi teaches that a ratio of the cell height to the first pitch is equal to or less than five (¶4). If Licausi is found to be unclear regarding the first pitch, Shah discloses the same (col. 3, lines 44-50). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, and Shah, because doing so would have involved merely the routine combination of known elements according to known techniques to produce merely the predictable results of using known 5-track cells in a cell layout based on design requirements. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1395. Schultz discloses placing cells in a layout and routing metal segments on associated tracks. Licausi teaches that cells have heights of five tracks, and Shah teaches tracks having the first pitch. The teachings of Licausi and Shah are directly applicable to Schultz in the same way, so that Schultz would similarly use known 5-track cells based on the first pitch to meet design requirements.
Claim(s) 4, 14, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz, Lu, Licausi, Shah, and Li (US 2016/0336324).
Regarding claims 4 and 14, Schultz discloses that the first metal layer is a metal zero layer (Figs. 1-3, Metal 0). Furthermore, persons having ordinary skill in the art would recognize that the cell height in a direction is based on the track pitch in that direction, either metal zero (M0) or metal one (M1), which are the first interconnect layers in their respective directions, since M0 and M1 are orthogonal. Thus, where layer having a pitch in the second direction is the M0 layer, the cell track height in the second direction would use the M0 pitch as the reference, whereas if the layer having a pitch in the second direction is the M1 layer, the cell track height in the second direction would use the M1 pitch as the reference. Nevertheless, Li additionally discloses interchangeable M0/M1 pitch (¶65, Table 1). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, and Li, because doing so would have involved merely the routine combination of known elements according to known techniques to produce merely the predictable results of designating cell heights based on cell interconnect layer pitch in the correct direction. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1395. Schultz discloses placing cells in a layout and routing metal segments on associated tracks. Licausi teaches that cells have heights of five tracks, Shah teaches tracks having the first pitch, and Li teaches that the first pitch is an M0 pitch. The teachings of Licausi, Shah, and Li are directly applicable to Schultz in the same way, so that Schultz would similarly designate cell dimensions based on track pitch in the correct direction.
Regarding claim 17, Schultz discloses an integrated circuit (IC) structure comprising: an IC cell comprising a semiconductor structure having a cell width in a first direction and a cell height in a second direction perpendicular to the first direction (Figs. 1-3; ¶¶3, 4, 28);
a metal zero layer comprising a first plurality of metal segments extending in the first direction, comprising a first metal segment electrically connected to the semiconductor structure, and having a first pitch in the second direction (Figs. 1-3, Metal 0).
a metal one layer comprising a second plurality of metal segments extending in the second direction, comprising a second metal segment electrically connected to the first metal segment, and having a second pitch in the first direction (Figs. 1-3, Metal 1); and
a metal two layer comprising a third plurality of metal segments extending in the first direction, comprising a third metal segment electrically connected to the second metal segment, and having a third pitch in the second direction (Figs. 1-3, Metal 2).
Schultz does not appear to explicitly disclose that a ratio of the second pitch in the second direction to the third pitch in the first direction has a value ranging from 1.1 to 1.5. Lu discloses these limitations (¶¶20, 27, 32), and also further discloses the claimed routed first, second, third, and fourth metal segments in corresponding metal layers overlying and adjacent to each other (Fig. 13, segments in each metal layer). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz and Lu, because doing so would have involved merely the routine use of a known technique to improve similar devices in the same way to achieve the predictable results of decreased resistance/improved performance by using larger pitches for a given metal layer. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu teaches that performance and yield can be improved by relaxing pitches in a metal layer. The teachings of Lu are directly applicable to Schultz, so that Schultz’s routing of metal layers would similarly relax the pitch of a metal layer to improve performance and yield.
Schultz does not appear to explicitly disclose that a ratio of the cell height to the first pitch is equal to or less than five. However, the ratio of the cell height to the first pitch is a conventional measure of cell height, such that cells are referred to as a ‘5 track cell’, ‘9 track cell’, etc., and the height of the cell can be chosen by circuit designers to satisfy desired specifications. Furthermore, Licausi teaches that a ratio of the cell height to the first pitch is equal to or less than five (¶4). If Licausi is found to be unclear regarding the first pitch, Shah discloses the same (col. 3, lines 44-50). Furthermore, persons having ordinary skill in the art would recognize that the cell height in a direction is based on the track pitch in that direction, either metal zero (M0) or metal one (M1), which are the first interconnect layers in their respective directions, since M0 and M1 are orthogonal. Thus, where layer having a pitch in the second direction is the M0 layer, the cell track height in the second direction would use the M0 pitch as the reference, whereas if the layer having a pitch in the second direction is the M1 layer, the cell track height in the second direction would use the M1 pitch as the reference. Nevertheless, Li additionally discloses interchangeable M0/M1 pitch (¶65, Table 1).
It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, and Li, because doing so would have involved merely the routine combination of known elements according to known techniques to produce merely the predictable results of using known 5-track cells, with the track pitch reference being in the correct direction, in a cell layout based on design requirements. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1395. Schultz discloses placing cells in a layout and routing metal segments on associated tracks. Licausi teaches that cells have heights of five tracks, Shah teaches tracks having the first pitch, and Li teaches that the first pitch is an M0 pitch. The teachings of Licausi, Shah, and Li are directly applicable to Schultz in the same way, so that Schultz would similarly use known 5-track cells, based on track pitch in the correct direction, to meet design requirements.
Regarding claim 18, Schultz does not appear to explicitly disclose that the ratio of the first pitch to the second pitch is greater than 1.25; Lu discloses these limitations (¶¶20, 27, 32). Motivation to combine remains consistent with claim 17.
Regarding claim 19, Schultz discloses at least one of a metal zero via electrically connected to a metal segment of the first plurality of metal segments; a metal one via electrically connected to a metal segment of the second plurality of metal segments; or a metal two via electrically connected to a metal segment of the third plurality of metal segments (Figs. 1-3, vias between Metal 0-3).
Regarding claim 20, Schultz discloses that the semiconductor structure comprises a component of a processing device (¶¶3, 4, 26, 28).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz in view of Lu, Licausi, Shah, and Tehranipoor (US 2014/0365148).
Regarding claim 8, Schultz does not appear to explicitly disclose that with the exception of the ratio of the second pitch being greater than one, each metal layer of the plurality of metal layers has a pitch greater than or equal to a pitch of each underlying metal layer of the plurality of metal layers. However, these limitations are a typical arrangement for IC metal layers, as taught by Lu (¶3); in the event that Lu is found to be unclear regarding these limitations, Tehranipoor also discloses the same (¶68).
It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, and Tehranipoor, because doing so would have involved merely the routine use of a known technique to improve similar devices in the same way to achieve the predictable results of hierarchical wiring to reduce resistance of upper level metal lines. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses an IC structure having stacked metal layers. Lu and Tehranipoor teach typical hierarchical wiring in which metal layers have equal or greater pitch than layers below them, which improves resistance. The teachings of Lu and Tehranipoor are directly applicable to Schultz in the same way, so that Schultz’s metal layers would similarly follow typical hierarchical wiring with upper layers having greater pitch and thus lower resistance.
Regarding claim 9, Schultz does not appear to explicitly disclose that a ratio of the second pitch to the first pitch is greater than one; Lu (¶3) and Tehranipoor (¶68) also discloses the same. Motivation to combine remains consistent with claim 8.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz in view of Lu, Licausi, Shah, Ray (US 2018/0004886), and Noguchi (US 2003/0032292).
Regarding claim 21, Schultz does not appear to explicitly disclose a fifth plurality of metal segments extending in a fourth metal layer in the second direction, comprising a fourth metal segment electrically connected to the third metal segment, and having a fourth pitch in the first direction. However, these limitations are conventional, as taught by Lu (¶3; Fig. 13, M4). If Lu is found to be unclear regarding the fourth pitch in the first direction, Ray discloses the same (Fig. 1C). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu Licausi, Shah, and Ray, because doing so would have involved merely the combination of known elements according to known techniques, and/or the routine use of a known technique to improve similar devices in the same way, to achieve the predictable results of improving performance by using wider pitches on orthogonal upper metal layers. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu and Ray teach upper metal layers in alternating orthogonal directions that can have wider pitch than lower metal layers to improve performance. The teachings of Lu and Ray are directly applicable to Schultz in the same way, so that Schultz would similarly route orthogonal upper metal layers with wider pitches than lower metal layers to improve performance.
Schultz does not appear to explicitly disclose that a ratio of the fourth pitch to the third pitch is greater than or equal to 1.3. Lu discloses these limitations (Fig. 13, P5 to P4). If Lu is found to be unclear regarding these limitations, Noguchi discloses the same (¶174). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, Ray, and Noguchi, because doing so would have involved merely the routine use of a known technique to improve similar devices in the same way to achieve the predictable results of improving performance by using wider pitches on upper metal layers. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu and Noguchi teach upper metal layers that can have wider pitch than lower metal layers to improve performance, with Noguchi providing a specific example where the ratio of upper pitches to lower pitches is greater than or equal to 1.3. Persons having ordinary skill in the art would readily recognize that specific pitch ratios would be chosen by designers according to design requirements. The teachings of Lu and Noguchi are directly applicable to Schultz in the same way, so that Schultz would similarly route upper metal layers with pitches greater than or equal to 1.3 times the pitches of lower metal layers to improve performance.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz in view of Lu, Licausi, Shah, and Tseng (US 2014/0195997).
Regarding claim 22, Schultz does not appear to explicitly disclose the at least one of the first via, the second via, or the third via comprises a slot via. Tseng discloses these limitations (¶27). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, and Tseng, because doing so would have involved merely the routine substitution of an element with a known equivalent according to known techniques to produce merely the predictable results of connecting metal lines using known via types. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1395. Schultz discloses routing metal segments which are connected by vias. Tseng teaches that slot vias are a known type of via for connecting metal segments. The teachings of Tseng are directly applicable to Schultz in the same way, so that Schultz would similarly connecting metal segments using known slot vias.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz in view of Lu, Licausi, Shah, Ray, and Noguchi.
Regarding claim 21, Schultz does not appear to explicitly disclose a fourth metal layer comprising a fourth plurality of metal segments extending in the second direction, comprising a fourth metal segment electrically connected to the third metal segment, and having a fourth pitch in the first direction. However, these limitations are conventional, as taught by Lu (¶3; Fig. 13, M4). If Lu is found to be unclear regarding the fourth pitch in the first direction, Ray discloses the same (Fig. 1C). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, and Ray, because doing so would have involved merely the combination of known elements according to known techniques, and/or the routine use of a known technique to improve similar devices in the same way, to achieve the predictable results of improving performance by using wider pitches on orthogonal upper metal layers. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu and Ray teach upper metal layers in alternating orthogonal directions that can have wider pitch than lower metal layers to improve performance. The teachings of Lu and Ray are directly applicable to Schultz in the same way, so that Schultz would similarly route orthogonal upper metal layers with wider pitches than lower metal layers to improve performance.
Schultz does not appear to explicitly disclose that a ratio of the fourth pitch to the third pitch is greater than or equal to 1.3. Lu discloses these limitations (Fig. 13, P5 to P4). If Lu is found to be unclear regarding these limitations, Noguchi discloses the same (¶174). It would have been obvious to persons having ordinary skill in the art before the effective filing date of the application to combine the teachings of Schultz, Lu, Licausi, Shah, Ray, and Noguchi, because doing so would have involved merely the routine use of a known technique to improve similar devices in the same way to achieve the predictable results of improving performance by using wider pitches on upper metal layers. KSR Int’l Co. v. Teleflex Inc., 82 U.S.P.Q.2d 1385, 1396. Schultz discloses placement and routing of standard cells and associated metal layers. Lu and Noguchi teach upper metal layers that can have wider pitch than lower metal layers to improve performance, with Noguchi providing a specific example where the ratio of upper pitches to lower pitches is greater than or equal to 1.3. Persons having ordinary skill in the art would readily recognize that specific pitch ratios would be chosen by designers according to design requirements. The teachings of Lu and Noguchi are directly applicable to Schultz in the same way, so that Schultz would similarly route upper metal layers with pitches greater than or equal to 1.3 times the pitches of lower metal layers to improve performance.
Response to Arguments
Applicant's arguments filed 3 December 2025 have been fully considered but they are not persuasive.
Applicant asserts that the examiner’s reliance on the “known technique” KSR rationale for combining Schultz with Lu is invalid, because the use of that rationale requires that the reference solve the same problem, and Schultz and Lu are directed to different problems. Remarks 9. The examiner disagrees. There is no requirement that the references solve the same problem in order to use the “known technique” KSR rationale; in fact, such a requirement would be nonsensical. As stated in MPEP 2143.01(I)(C), “The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations” (emphasis added). Persons having ordinary skill in the art, aware of a known technique for improving the durability of a tabletop, for example, would not have any reason to limit their application of that technique only to tables that were disclosed to address the problem of tabletop durability. Under Applicant’s reasoning, the technique for improving tabletop durability could not be applied to tables with added casters that address the problem of table immobility, or tables with height-adjustable legs that address the problem of satisfying differing user height preferences. Clearly, this defies common sense; anyone would recognize that a technique for improving a device is broadly applicable to similar devices, whether or not those devices were directed to solving the same problem. Here, Lu’s technique of using non-hierarchical metal layers, where a lower metal layer has larger pitch than a layer above it, to improve performance and cost of integrated circuits, is broadly applicable to integrated circuit (IC) metal layers, even if those ICs are disclosed in references that also solve other problems.
Applicant quotes Intel Corp. v. PACT XPP Schweiz stating that both references addressing the same problem is precisely the reason that there’s a motivation to combine under KSR, but the Court did not create a requirement that the references address the same problem, or otherwise state that there would not be motivation to combine under KSR if the references addressed different problems. The Court in Intel reversed a finding by the Patent Trial and Appeal Board that there was no motivation to combine prior art references when the references addressed the same problem; specifically, the Board found that since the primary reference already addressed the problem, persons having ordinary skill in the art would not regard the second reference’s technique for addressing the same problem to be an obvious improvement. Thus, the quoted statement in Intel that the prior art references addressing the same problem is “precisely the reason that there’s a motivation to combine under KSR” is a refutation of the Board’s specific reasoning that there was no motivation to combine because the references addressed the same problem, rather than the creation of a new requirement that the references must address the same problem in order to be combinable. In other words, the Court found that the “known technique” rationale applies even if the references address the same problem, not that the rationale applies only if they do.
Indeed, the Court in Intel reiterates the well-established principle that “the motivation-to-combine analysis is a flexible one”, quoting KSR and emphasizing that “Any need or problem known in the field of endeavor … can provide a reason for combining” prior art teachings, and that “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton”, who would “be able to fit the teachings of multiple patents together like pieces of a puzzle”, such that “the motivation-to-combine analysis ‘need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ’.” The Court further stated that “‘universal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” The Court even found that the use of the “known technique” rationale does not require showing that the combination would be “an ‘improvement’ in the categorical sense”, and that the technique being a “suitable option” was sufficient. None of the Court’s reasoning, supporting a “flexible” approach to the motivation-to-combine analysis that rejects the treatment of persons having ordinary skill in the art as automatons, is consistent with Applicant’s assertion that the “known technique” rationale somehow requires that the references address the same problem despite KSR not setting forth such a requirement.
Applicant asserts that because Applicant has demonstrated the criticality of specific limitations in claim 1, MPEP § 2144(III) bars the use of KSR as the sole rationale to combine Schultz and Lu. Remarks 11. Specifically, Applicant relies on the MPEP’s statement that “if the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection” (emphasis in original), and assumes that the impropriety of ‘sole reliance’ on a court’s rationale is referring to KSR’s “combining prior art elements rationale” discussed in the same section. The examiner disagrees.
It is clear from reading MPEP § 2144 as a whole that ‘sole rationale’ refers to the use of legal precedent on its own, without teachings from supporting secondary references, to establish obviousness. MPEP § 2144 explicitly “discusses supporting a rejection under 35 U.S.C. 103 by reliance on scientific theory and legal precedent”. Specifically, § 2144 states that “in keeping with the flexible approach to obviousness under KSR … Office personnel may invoke legal precedent as a source of supporting rationale … So, for example, automating a manual activity, making portable, making separable, reversing or duplicating parts, or purifying an old product may form the basis of a rejection” (emphasis added). The statement in § 2144(III) relied on by Applicant, that “it would not be appropriate to rely solely on the rationale used by the court …” corresponds to § 2144.04, which states:
an examiner may utilize legal precedent as a source of supporting rationale when warranted and appropriately supported. In formulating any rejection invoking legal precedent, the examiner must take care to ensure that the rationale is explained and shown to apply to the facts at hand. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below. If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection.
(emphasis added). As is clear from the entirety of § 2144.04, the ‘sole reliance on rationale’ that would be inappropriate is the use of legal precedent such as finding that mere aesthetic design changes, omission of an element and its function, automating a manual activity, changes in size/shape/sequence, etc., based on case law, are obvious, based solely on case law without supporting teachings from a secondary prior art reference. The discussed obviousness rationales have nothing to do with KSR motivations to combine the teachings of prior art references.
Applicant’s interpretation is further contradicted by essentially every case that uses KSR as the ‘sole motivation’ for combining prior art references, of which prior-cited Intel is an example. If KSR motivations for combining references, such as the “known technique” rationale, could not be used as the sole motivation to combine references, then the references in Intel could not have been combined using the “known technique” rationale to begin with. Applicant’s interpretation would render KSR effectively inapplicable in practice, since combining references that teach any substantive claim limitation would require finding other, non-KSR motivations to combine. KSR does not restrict its holdings to apply only to claims with non-critical limitations, nor does KSR require that the provided rationales for combining references be used in combination with other rationales in order to properly show obviousness. In fact, KSR largely holds the opposite: that any one of a number of rationales would motivate persons having ordinary skill in the art to combine prior art teachings, without requiring specific motivations in the prior art.
The technical context of the present case also supports the appropriateness of using the “known technique” KSR rationale for obviousness. Applicant’s allegedly critical feature is the claimed pitch ratio between the second metal layer and the third metal layer above the second metal layer, particularly that the pitch on the third metal layer is smaller than the pitch on the second metal layer. Remarks 11. This feature was already clearly and explicitly taught by Lu and is thus a known technique for improving ICs. The cell and interconnect structure is conventional: traditional IC designs comprise cells routed using several metal layers in ‘Manhattan’ configurations where adjacent layers are routed in alternating X/Y orientations with inter-layer vias connecting wires on adjacent layers; Schultz is one clear example of such a structure. Thus, Applicant’s claimed invention involves applying the pitch relationship between layers, taught by Lu, to IC routing structures as shown in Schultz, which is a textbook case of the “known technique” KSR rationale that any persons having ordinary skill in the art would find obvious.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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14 December 2025
/ARIC LIN/ Examiner, Art Unit 2851
/JACK CHIANG/ Supervisory Patent Examiner, Art Unit 2851