Ex Parte Allers et alDownload PDFPatent Trial and Appeal BoardSep 29, 201614042037 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/042,037 09/30/2013 48154 7590 10/03/2016 SLATER MATSIL, LLP 17950 PRESTON ROAD SUITE 1000 DALLAS, TX 75252 FIRST NAMED INVENTOR Karl-Heinz Allers 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 ATTORNEY DOCKET NO. CONFIRMATION NO. INF 2003 P 53196 US02 7982 EXAMINER BERHANU, SAMUEL ART UNIT PAPER NUMBER 2859 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): docketing@slatermatsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARL-HEINZ ALLERS and REINER SCHWAB 1 Appeal2015-005653 Application 14/042,037 Technology Center 2800 Before ROMULO H. DELMENDO, JEFFREY W. ABRAHAM, and JEFFREY R. SNAY, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the decision of the Examiner finally rejecting claims 1-20. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm. 1 According to the Appeal Brief, the Real Party in Interest is Infineon Technologies AG. App. Br. 2. Appeal2015-005653 Application 14/042,037 BACKGROUND Appellants' claimed invention relates to a capacitor arrangement in a semiconductor component, whereby the capacitor is operated in a bipolar manner, significantly extending the lifetime of the capacitor. Spec. i-fi-1 2, 21. Claim 1 is illustrative, and is reproduced below from the Claims Appendix: 1. A method for driving a capacitor m a semiconductor component, the method comprising: (a) generating a first voltage between a first node and a second node; (b) for a first period of time, applying the first voltage to the capacitor by coupling a first capacitor electrode to the first node and coupling a second capacitor electrode to the second node, such that a voltage difference between the first and second capacitor electrodes is the first voltage; ( c) for a second period of time after the first period of time, applying the first voltage to the capacitor by coupling the first capacitor electrode to the second node and coupling the second capacitor electrode to the first node, such that the voltage difference between the first and second capacitor electrodes is the first voltage, wherein a first switch couples the first node to the first capacitor electrode in a first position and to the second capacitor electrode in a second position; and ( d) automatically repeating steps (b) and ( c ). The Examiner maintains the following rejections: 1. Claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 8,547,070; 2 Appeal2015-005653 Application 14/042,037 2. Claims 1, 10, and 19 as unpatentable under 35 U.S.C. § 103(a) over Hashimoto2 and Endo; 3 3. Claims 2-5 and 11-14 as unpatentable under 35 U.S.C. § 103(a) over Hashimoto, Endo, and Okada; 4 and 4. Claims 6-9, 12, 15-18, and 20 as unpatentable under 35 U.S.C. § 103(a) over Hashimoto, Endo, and Nork. 5 OPINION Rejections under 35 USC§ 103(a) Independent claims 1, 10, and 19 each recite a method for driving a capacitor that requires, inter alia, applying a voltage to a capacitor. The Examiner finds that Hashimoto discloses a battery power supply and charging circuit for reconditioning the battery. Ans. 2. The Examiner finds Hashimoto does not explicitly disclose a capacitor, but otherwise discloses all of the limitations of the independent claims. Final Act. 4 (citing Hashimoto Figs. 3, 4, 4:45-57, 4:64---68, 5: 1-3; 5:57---60). The Examiner finds that Endo discloses that "a capacitor can be regarded as a power supply analogous to a battery [noted that the air gap between the capacitor electrodes are considered as a dielectric]." Id. at 5. The Examiner determined that it would have been obvious to modify Hashimoto' s apparatus by replacing the battery in Hashimoto with a capacitor because 2 Hashimoto et al., US 4,691,158, issued Sept. 1, 1987. 3 Endo et al., US 4,056,764, issued Nov. 1, 1977. 4 Okada, US 5,684,386, issued Nov. 4, 1997. 5 Nork et al., US 6,411,531 Bl, issued June 25, 2002. 3 Appeal2015-005653 Application 14/042,037 Id. the prior art element is an equivalent and performs the identical function specified in the claim in substantially the same way, and produces substantially the same result, since there is no chemical reactions involved in the capacitor the charge/discharge reactions can be cycled many more times without affecting the useful life time of the capacitor. Appellants argue that the Examiner erred by determining that it would have been obvious to substitute a capacitor for Hashimoto's battery. App. Br. 7. According to Appellants, Endo teaches the use of two types of batteries, an E-battery and a P-battery. Id. Appellants acknowledge that Endo states that "[a] capacitor can be regarded as a power supply analogous to the P-battery," but asserts that Endo's discussion of a capacitor in this regard is used to describe the difference between an E-Battery and a P- Battery. Id. at 7-8; Endo 1:37-38. Moreover, Appellants argue that all of Endo's embodiments use batteries, not capacitors. App. Br. 8. Thus, Appellants argue that Endo "never teaches that a capacitor could be substituted for a P-battery." Id. We are persuaded by Appellants' arguments. "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner concludes that a capacitor is equivalent to, and can be used interchangeably for, a battery as a power source in Hashimoto. Final Act. 5; Ans. 2. The Examiner, however, has not provided adequate evidence or a technical explanation supporting this conclusion. For example, the Examiner has not 4 Appeal2015-005653 Application 14/042,037 explained adequately how or why a capacitor, which involves no chemical reactions, would work in Hashimoto' s "secondary battery operating method for charging and discharging a secondary battery using zinc as the negative electrode active material." Hashimoto, Abstract. Nor has the Examiner explained sufficiently why a capacitor would function in substantially the same way and produce substantially the same result as a battery if it were used in Hashimoto's battery system. See, e.g., Ans. 2. The Examiner has thus failed to satisfy the initial burden of presenting evidence of a prima facie case of obviousness. Accordingly, we reverse the Examiner's rejection of independent claims 1, 10, and 19 under 35 U.S.C. § 103 (a). Because the other prior art references upon which the Examiner relies, Okada or Nork, do not cure this deficiency, we also reverse the Examiner's rejections of dependent claims 2-9, 11-18, and 20 under 35 U.S.C. § 103(a). Double Patenting Rejection Appellants do not address the Examiner's double patenting rejection, other than to state that "Appellant previously requested that this nonstatutory double patenting rejection be held in abeyance until all pending claims deemed allowable under 35 U.S.C. §§ 102 and 103." App. Br. 6. Because the Examiner did not withdraw this rejection, and Appellants offer no substantive response, we affirm the Examiner's rejection. CONCLUSION For the reasons set forth above, we reverse the decision of the Examiner to reject claims 1-20 under 35 U.S.C. § 103(a) and affirm the 5 Appeal2015-005653 Application 14/042,037 decision of the Examiner to reject claims 1-20 on the ground of nonstatutory double patenting. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation