Ex parte Clemente

Board of Patent Appeals and Interferences

Jan 10, 2000

08337550 (B.P.A.I. Jan. 10, 2000)

Application for patent filed November 10, 1994. 1
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journal and (2) is not binding precedent of the Board.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
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Ex parte STEFANO CLEMENTE
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Appeal No.1997-4038
Application 08/337,5501
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ON BRIEF
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Before FLEMING, GROSS and FRAHM, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 11, 12 and 19. Claims 1 through
10 and 13 through 18 have been allowed.
Appeal No. 1997-4038
Application 08/337,550
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The present invention is concerned with the accurate determination of temperature of a discrete
power semiconductor device using an analog integrated circuit that is copackaged with the power
semiconductor device on a heat sink.
Independent claim 11 is reproduced as follows:
11. A method for determining the steady state temperature of a discrete power semiconductor
device using an analog integrated circuit that is co-packaged with the power semiconductor device on a
heat sink, given knowledge of the thermal resistance between the power semiconductor device and the
analog integrated circuit, the thermal resistance between the power semiconductor device and the heat
sink and the thermal resistance between the analog integrated circuit and the heat sink, the method
comprising:
determining the voltage across the power semiconductor device and the current through the
power semiconductor device, thereby determining the power dissipated in the power semiconductor
device;
determining the temperature of the analog integrated circuit;
determining the heat sink temperature; and
using said heat sink temperature, the power dissipated in the power semiconductor device, the
temperature of the analog integrated circuit and the thermal resistances between the power
semiconductor device and the analog integrated circuit, between the power semiconductor device and
the heat sink, and between the analog integrated circuit and the heat sink to determine the temperature
of the discrete power semiconductor device.
The Examiner relies on the following reference:
Young 4,001,649 Jan. 4, 1977
Appeal No. 1997-4038
Application 08/337,550
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Claims 11, 12 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Young.
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
brief and answer for the respective details thereof.
OPINION
We will not sustain the rejection of claims 11, 12 and 19 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally,
when determining obviousness, the claimed invention should be considered as a whole; there is no
legally recognizable 'heart' of the invention." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc., 73
F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996),
citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 3 through 6 of the brief, Appellant argues that Young does not teach or suggest
"determining the temperature of the analog integrated circuit" as recited in Appellant's claims. On pages
6 through 8 of the brief, Appellant argues that Young does not teach or suggest
Appeal No. 1997-4038
Application 08/337,550
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"using said heat sink temperature, the power dissipated in the power semiconductor device, the
temperature of the analog integrated circuit and the thermal resistances between the power
semiconductor device and the analog integrated circuit, between the power semiconductor device and
the heat sink, and between the analog integrated circuit and the heat sink to determine the temperature
of the discrete power semiconductor device," as recited in Appellant's claims.
On page 4 of the answer, the Examiner acknowledges that Young does not disclose a
copackaged power semiconductor and analog circuit, nor does Young explicitly state the thermal
resistances needed to determine temperature. The Examiner seems to reason that if one of ordinary
skill in the art were to copackage a power semiconductor and analog circuit that the method and
apparatus as claimed by the Appellant would have been inherent.
"Inherency and obviousness are distinct concepts." W.L. Gore & Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 314 (Fed. Cir. 1983) citing In re Spormann, 363
F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966). Furthermore, "[t]o establish inherency, the
extrinsic evidence 'must make clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary skill.'" In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing Continental
Can Co v. Monsanto Co., 948 F.3d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
"Inherency, however, may not be established by probabilities or possibilities. The mere
Appeal No. 1997-4038
Application 08/337,550
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fact that a certain thing may result from a given set of circumstances is not sufficient." Id. at 1269, 20
USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
Upon a close inspection of Young, we find that Young teaches determining the temperature of a
semiconductor device junction shown as a diode 11 in figure 1. We further find that Young does not
teach or even contemplate that the analog circuits shown in figure 1 would be copackaged with the
semiconductor device, diode 11. Therefore, we fail to find that the Examiner established inherency
because from the teachings of Young the missing descriptive matter is not necessarily present in
theYoung temperature monitoring apparatus. Therefore, we find that Young does not inherently teach
determining the temperature of the analog integrated circuit as recited in Appellant's claims, nor does
Young inherently teach using the heat sink temperature, the power dissipated in the power
semiconductor device, the temperature of the analog integrated circuit and the thermal resistances
between the power semiconductor device and the analog integrated circuit, between the power
semiconductor device and the heat sink, and between the analog integrated circuit and the heat sink to
determine the temperature of the discrete power semiconductor device as recited in Appellant's claims.
We are not inclined to dispense with proof by evidence when the proposition at issue is not
supported by a teaching in a prior art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to establish a prima facie case. In
re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re Knapp-
Appeal No. 1997-4038
Application 08/337,550
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Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668,
148 USPQ 268, 271-72 (CCPA 1966). Our reviewing court states in In re Piasecki, 745 F.2d at
1472, 223 USPQ at 788, the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966), focused on
the procedural and evidentiary processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted as continuing to place the "burden of proof on
the Patent Office which requires it to produce the factual basis for its rejection of an application under
section 102 and 103". Citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA
1967).

Furthermore, the Federal Circuit states that "[t]he mere fact that the prior art may be modified
in the manner suggested by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
Upon our review of Young, we fail to find that Young suggests to those skilled in the art to
provide the modification proposed by the Examiner. Young fails to contemplate the problem being
solved by the Appellant which is determining the temperature of a discrete power semiconductor device
using an analog integrated circuit that is copackaged with the power semiconductor device on a heat
sink.
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Application 08/337,550
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In view of the foregoing, we have not sustained the rejection of claims 11, 12 and 19 under 35
U.S.C. § 103. Accordingly, the Examiner's decision is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )
MRF/dal
Appeal No. 1997-4038
Application 08/337,550
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OSTROLENK, FABER, GERB
and SOFFEN
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