KNOWLES ELECS. LLC v. CIRRUS LOGIC, INC, 16-2010, decided March 1, 2018

U.S. Patent No. 6,781,231, directed to MEMS with a shielded microphone.

The reexamination proposed claim requires a MEMS package where the solder pads are “configured to mechanically attach and electrically connect the package to a surface of an external printed circuit board using solder reflow process” (page 12).  The specification teaches solder pads for electrical connection to a board and that leads are formed by plating a through-hole in a circuit board of which one half will eventually form the pathway to the solder pad (page 13).  The specification does not mention connection of the solder pads by any particular process (page 13).  Various processes to connect solder pads were known at the time (page 13).  While solder reflow was well known to be capable of connection to solder pads, the specification failure to teach this particular type of connection is a failure to disclose the reflow process (pages 13-14).  Through-hole plating, pads on the bottom, and thermal concerns taught in the specification are not enough to indicate a reflow process (pages 14-15).  The claim is an apparatus claim with the taught solder pads being “capable” of connection by reflow, but the capability context is an indefiniteness concern, not written description (page 16).  Thus, the specification does not provide written description for solder reflow process (page 13).

Hindsight:  The easy answer is check the specification and only claim that which is expressly mentioned, a paraphrase, generic to multiple examples, and/or inherent.  The more difficult approach is to include alternatives even of well known or basic things when drafting the specification.  The application is directed to packaging, which includes the solder pads, so as long as connection is discussed, the types of connection could have been included.  There must be an end to including anything well known related to each mention in the specification though, or applications will be treatises.