Ex parte Dennis

Board of Patent Appeals and Interferences

Jun 30, 1999

08157580 (B.P.A.I. Jun. 30, 1999)

Application for patent filed November 24, 1993. 1
Amendment of June 23, 1994.2
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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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILLIAM K. DENNIS
______________
Appeal No. 96-2068
Application 08/157,5801
_______________
ON BRIEF
_______________
Before CAROFF, WARREN and OWENS, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 13 and 19 through 26.2
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of claims 13 and 19 through 26 under 35 U.S.C. § 103 over Moyle in
Appeal No. 96-2068
Application 08/157,580
The references relied on by the examiner are listed at page 2 of the answer. 3
As appellant points out in the reply brief, claim 13 was separately rejected over Moyle in view of4
Hirata et al., while claims 19 through 26 were rejected over Moyle in view of Hirata et al., in further
view of Palmer, in the final rejection of September 26, 1994 (Paper No. 6).
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view of Hirata et al., in further view of Palmer, advanced by the examiner on appeal. It is well settled3 4
that the examiner may satisfy his burden of establishing a prima facie case of obviousness under § 103
by showing some objective teachings or suggestions in the prior art taken as a whole or that knowledge
generally available to one of ordinary skill in the art would have led that person to combine the relevant
teachings of the applied prior art in the proposed manner to arrive at the claimed invention, including
each and every limitation of the claims, without recourse to the teachings in appellant’s disclosure. See
generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)
(Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The
examiner has failed to carry his burden.
As pointed out by appellant in his brief and again in his reply brief, the examiner has not
advanced on this record any evidence or scientific reasoning establishing that the claimed method of
manufacturing a light transparent window in a package for an integrated circuit having elements erasable
by light comprising at least the steps specified in the appealed claims was within the ordinary skill in this
art at the time the claimed invention was made. We find that even if the combined teachings of Moyle,
Hirata et al. and Palmer would have reasonably suggested to one of ordinary skill in this art to modify
either the package and the manufacturing thereof disclosed by Moyle (e.g., Moyle Fig. 4E), or the prior
art package and manufacturing thereof described by this reference (col. 3, line 64, to col. 4, line 11,
and Moyle Fig. 3), by the teachings of Hirata et al. and Palmer to accommodate an EPROM, the
resulting package would have a transparent plate on top of transparent material as taught by Hirata et
al. (col. 4, and Fig. 4, numerals 31 and 32) and manufactured by the process of that reference or the
process of Palmer. With respect to the methods of manufacture taught by the applied references, we
agree with appellant that Palmer does not support the examiner’s allegation that the specific process
steps of the appealed claims constitute a “conventional technique” known in the art as these steps are
Appeal No. 96-2068
Application 08/157,580
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not found in that reference or, indeed, in either of the other references. Thus, it is inescapable that the
combined references applied by the examiner taken as a whole would not have resulted in the claimed
method. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-
41 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Accordingly, it is manifest that the only direction to
appellant’s claimed invention as a whole on the record before us is supplied by appellant’s own
specification. Fine, supra; Dow Chem., supra.
The examiner’s decision is reversed.
Reversed
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-2068
Application 08/157,580
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Texas Instruments Incorporated
P.O. Box 655474, M/S 219
Dallas, TX 75265