Ex parte Brown

Board of Patent Appeals and Interferences

Dec 9, 1999

08319913 (B.P.A.I. Dec. 9, 1999)

Application for patent filed October 7, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CLEM H. BROWN
____________
Appeal No. 1997-1186
Application No. 08/319,9131
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING and HECKER, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 19.
The disclosed invention is directed to a differential
pressure sensor which includes a mounting flag, a sensor die
and a molded housing. More specifically, the mounting flag is
Appeal No. 1997-1186
Application No. 08/319,913
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detachable from a lead frame and has a flag opening for
receiving a first pressure. The molded housing has a first
port positioned over the flag opening and the sensor die for
receiving the first pressure and a second port positioned over
the sensor die for receiving a second pressure. In addition,
the molded housing surrounds the mounting flag to secure it in
a floating manner following its detachment from the leadframe.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A differential pressure sensor, comprising:
a mounting flag detachable from a leadframe and having a
flag opening for receiving a first pressure;
a sensor die having a eutectic surface mounted to a
bonding surface of said mounting flag for providing a hermetic
seal between said sensor die and said mounting surface and
coupled for receiving said first pressure; and
a molded housing having a first port positioned over said
flag opening and said sensor die for receiving said first
pressure, said molded housing having a second port positioned
over said sensor die for receiving a second pressure, and said
molded housing surrounding a portion of said mounting flag to
secure said mounting flag in a floating manner following
detachment from said leadframe to provide stress relief for
said sensor die.
The references relied on by the examiner are:
Hingorany 3,629,668 Dec. 21, 1971
Hynecek (Hynecek) 4,023,562 May 17, 1977
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Tominaga (Tominaga) 4,287,501 Sep. 1,
1981
Wamstad 4,399,707 Aug. 23, 1983
Ishibashi 5,394,751 Mar. 7,
1995
(filed Jan. 22, 1993)
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Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hingorany and Ishibashi in view of
Tomigana and Wamstad and further in view of Hynecek.
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the rejection of claims 1 through 19.
The grant of a patent is precluded “if the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person of
ordinary skill in the art.” See 35 U.S.C. Section 103(a).
Factual determinations of a prima facie case of obviousness
include: (1) the scope and content of the prior art; (2) the
level of ordinary skill in the prior art; (3) the differences
between the claimed invention and the prior art; and (4)
objective evidence of nonobviousness. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 466-67 (1966). To
establish a prima facie case of obviousness based on a
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combination of the content of various references, there must
be some teaching, suggestion or motivation in the prior art to
make the specific combination proposed by the examiner. In re
Raynes, 7 F.3d 1037, 1039, 28 USPQ2d 1630, 1631 (Fed. Cir.
1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1445 (Fed. Cir. 1992). Obviousness cannot be established by
hindsight combination to produce the claimed invention. In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991). Here, the examiner has failed to establish a prima
facie case of obviousness.
Simply put, Hingorany, the primary reference upon which
the examiner has relied, discloses a semiconductor package
which includes a mounting flag (28) made of a material
different from that of leadframe (12), the mounting flag being
supported at the base of cavity (34) so that additional
support is provided for the mounting flag. A semiconductor
device (38) such as an integrated circuit is disposed on the
mounting flag (Figures 2-5). Ishibashi discloses a
semiconductor pressure sensor which includes a mounting flag
(211) detachable from a leadframe (200) and a sensor die (31)
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bonded to glass base (32) which is in turn mounted on the
mounting flag (Figures 1 and 3). The examiner has determined
that “neither Hingorany nor Ishibashi discloses the mounting
flag with an opening to receive a first pressure (since it is
not a differential pressure sensor), a housing with first and
second ports for receiving first and second pressures, a
sensor die eutectically mounted to provide a hermetic seal
between the sensor die and mounting flag, nor [sic, or] the
use of gold as a bonding surface” (Answer, page 5).
The examiner has relied on Tominaga, Wamstad and Hynecek
as secondary references to make up for the above-noted
deficiencies in Hingorany and Ishibashi. Tominaga discloses a
differential pressure sensor (Figure 2) wherein an alumina
base 22 has an opening upon which a sensor die is disposed.
The examiner has taken the position that it would have been
obvious to one of ordinary skill in the art to use a pressure
sensor as the semiconductor device in Hingorany “as is shown
by Ishibashi, and to further provide openings in the mounting
flag to receive a first pressure, as well as separate openings
in the housing to receive a first and second pressure, as
disclosed by Tominaga (‘501), in order to configure the sensor
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as a differential pressure sensor” (Answer, page 6). The
examiner has also employed Wamstad and Hynecek, which disclose
“a eutectic bond” and “a bonding surface”, respectively, in
order to overcome such deficiencies in Hingorany and
Ishibashi.
Appellant has argued that the alumina base in Tominaga is
not a mounting flag detachable from a leadframe as claimed and
he has maintained that “[t]he fact that Tominaga discloses a
hole in its alumina base does not lead one of ordinary skill
in the art to form an opening in the mounting surfaces of
Hingorany or Ishibashi. Hingorany and Ishibashi have no need
for such an opening, hence, the combination makes no sense”
(Brief,
pages 5-6). We agree with the appellant.
Given the differences in structures and functions between
appellant’s claimed invention and the devices of Hingorany and
Ishibashi, the examiner has not adequately explained, and we
cannot discern, how he has proposed to modify Hingorany and
Ishibashi in view of the teachings of Tominaga, Wamstad and
Hynecek to arrive at the claimed invention. In contrast to
the appellant’s device, Hingorany is directed to a
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semiconductor package which comprises a mounting flag made of
material different from that of the leadframe, and the
mounting flag is not detached from the leadframe. The
examiner’s proposed modification of Hingorany would not have
arrived at the claimed invention because such a modified
device would not have “a mounting flag detachable from a
leadframe.” In addition, the mounting flag (28) in Hingorany
is mounted at the base of the cavity (34) so that additional
support is provided for the mounting flag; therefore, the
mounting flag cannot be secured “in a floating manner” as
called for in the claimed invention.
By the same token, Ishibashi pertains to a semiconductor
pressure sensor (not a differential pressure sensor), the
modification of which as suggested by the examiner would not
have arrived at the claimed invention because the glass base
(32) underneath the sensor die (31) would have prevented a
second pressure, if any, from reaching the sensor die (31).
In the absence of the second pressure, Ishibashi can not
operate as a differential pressure sensor. Moreover, a flag
opening in the mounting flag and a second port for receiving a
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second pressure would not have changed Ishibashi’s pressure
sensor into a differential pressure sensor, absent further
modifications, such as those related to the pressure sensor
circuitry and the glass base (32).
Accordingly, it is clear to us that the examiner's
proposed modification of Hingorany and Ishibashi (Answer,
pages 4-7) would not have resulted in the claimed invention.
Furthermore, assuming Hingorany and Ishibashi may be
capable of being modified so as to result in the claimed
invention, there must be some teaching, suggestion or
motivation in the prior art references to do so. “The mere
fact that the prior art could be so modified would not have
made the modification obvious unless the prior art suggested
the desirability of the modification.”
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). We see no such suggestion. Here, the examiner
has relied upon hindsight analysis by reading into the prior
art appellant’s own teachings to arrive at the determination
of obviousness. It is impermissible to use hindsight, i.e.,
use the claimed invention as a template to piece together the
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teachings of prior art to establish obviousness. In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991).
In short, since the examiner has not established a prima
facie case of obviousness, we will not sustain the examiner’s
rejection under 35 U.S.C. §103(a) of claims 1 through 19.
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DECISION
The decision of the examiner rejecting claims 1 through
19 under 35 U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
jrg
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Vincent B. Ingrassia
Motorola, Inc. Intellectual Prop. Dept.
P. O. Box 10219
Suite R3108
Scottsdale, AZ 85271-0219
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