Ex Parte Copetti et al

Board of Patent Appeals and Interferences

Nov 6, 2003

09734807 (B.P.A.I. Nov. 6, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.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 CARLO COPETTI, MARTIN FLEUSTER
and FRANCISCUS SANDERS

Appeal No. 2004-0022
Application No. 09/734,807

ON BRIEF

Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5.
Claim 1 is illustrative:
1. A module provided with a thin-film circuit on a substrate
(1) of an insulating material which comprises at least one
passive component having at least a first (2) and a second (4)
electrically conducting layer and a dielectric (3), and in which
at least one electrically conducting layer (2, 4) has a
structured surface with recesses,
a protective layer (5), and
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Application No. 09/734,807
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at least one contact hole (6) which passes through the
module and
a structured metallization which covers the module and the
contact hole (6)
The examiner relies upon the following references as
evidence of obviousness:
Lewis 1,580,057 Apr. 6, 1926
Ohyama et al. (Ohyama) 4,437,140 Mar. 13, 1984
Guertin 4,470,096 Sep. 4, 1984
Pedder 5,604,658 Feb. 18, 1997
McMillan et al. (McMillan) 6,297,458 Oct. 2, 2001
(Feb. 11, 1997)
Appellants' claimed invention is directed to a module having
a thin-film circuit on an insulating substrate. The module
includes a passive component having at least a first and second
electrically conducting layer and a dielectric layer, wherein at
least one of the conducting layers has a structured surface with
recesses. The recesses "have the result that the passive
component is composed of various capacitors connected in
parallel," which result in the capacitance of the passive
component being equal to the sum of the capacitance values of the
parallel capacitors (page 2 of Brief, last paragraph).
Appealed claim 1 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Ohyama in view Guertin. Claims 2 and 3
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Ohyama in view of Guertin and Lewis, whereas claim 4 stands
Appeal No. 2004-0022
Application No. 09/734,807
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rejected under § 103 as being unpatentable over the combination
of Ohyama and Guertin further in view of Nomura. In addition,
claim 5 stands rejected under § 103 as being unpatentable over
Ohyama in view of Guertin, Pedder and McMillan.
Appellants submit at page 4 of the Brief that "[w]ith regard
to the rejection of Claims 1-5 under 35 U.S.C. § 103, the claims
stand or fall together." Accordingly, since appellants provide
substantive arguments only for the examiner's rejection of
claim 1 over the combined teachings of Ohyama and Guertin, all
the appealed claims stand or fall together with claim 1, and we
will limit our consideration to the examiner's rejection of
claim 1.
We have thoroughly reviewed each of appellants' arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
prima facie obvious to one of ordinary skill in the art within
the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the examiner's rejections for
essentially those reasons expressed in the Answer, and we add the
following primarily for emphasis.
Appellants do not dispute the examiner's factual
determination that Ohyama discloses a module provided with a
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Application No. 09/734,807
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thin-film circuit having all the features recited in claim 1 on
appeal, with the exception that at least one of the electrically
conducting layers has a structured surface with recesses.
However, we agree with the examiner that Guertin establishes that
it was known in the art to employ such electrically conducting
layers having recesses of the type presently claimed.
Accordingly, we find no fault in the examiner's rationale that it
would have been obvious for one of ordinary skill in the art to
utilize recesses in the electrically conducting layer of Ohyama
for the purpose of adjusting the capacitance. We note that
appellants have not refuted the examiner's finding that "Guertin
discloses a capacitor formed of two conductive layers (16, 18a)
with a dielectric (15) therebetween wherein at least one of the
layers has a [sic] trimmable recesses (Figure 1) to adjust the
capacitance" (sentence bridging pages 7 and 8 of Answer). Nor
have appellants rebutted the examiner's reasoning that one of
ordinary skill in the art "would have been motivated to have one
of the layers of Ohyama included [sic, including] trimmable
recesses to enable adjustment of the capacitor" (page 8 of
Answer, first paragraph).
Rather than address the examiner's rationale that it would
have been obvious for one of ordinary skill in the art to form
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recesses in the electrically conducting layers of Ohyama in order
to adjust the capacitance, appellants contend that the
combination of Ohyama and Guertin is inappropriate inasmuch as
the conductor layers of Ohyama are printed and formed with a
paste material, whereas the conducting layers of Guertin are
formed with a screened ink-like substance. However, appellants
fail to explain the specific difference between a paste material
and an ink-like substance and, more importantly, why any such
distinction would have militated against forming recesses in the
conductor layers of Ohyama for the purpose of adjusting
capacitance. While appellants maintain that "[o]ne of ordinary
skill in the art would fail to recognize that the paste layers of
Ohyama could include surfaces with recesses as in Guertin"
(page 5 of Brief, penultimate paragraph), appellants fail to
provide the requisite reasoning in support of this conclusion.
As a final point, we note that appellants base no argument
upon objective evidence of nonobviousness, such as unexpected
results.
In conclusion, based on the foregoing and the reasons set
forth by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
ECK:clm
Appeal No. 2004-0022
Application No. 09/734,807
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