Ex Parte Frederick et al

Patent Trial and Appeal Board

Jun 17, 2016

12568816 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/568,816 0912912009
28997 7590 06/21/2016
HARNESS, DICKEY, & PIERCE, PLC
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Bruce A. Frederick
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.
9676A-0001 l l/US 7127
EXAMINER
KOVAL, MELISSA J
ART UNIT PAPER NUMBER
2866
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE A. FREDERICK and KWONG KEI CHIN
Appeal2014-006482 1
Application 12/568,8162
Technology Center 2800
Before LARRY J. HUME, JUSTIN BUSCH, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3-16, 18, and 21-25, which are all of the claims
pending in this application. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The record will be updated to include a transcript of the oral hearing held
May 17, 2016 (hereinafter "Hr'g Tr.").
2 According to Appellants, the real party in interest is Astec International
Limited. App. Br. 2.
3 Claims 2, 17, 19, and 20 have been canceled. App. Br. 23, 25.
Appeal2014-006482
Application 12/568,816
fNVENTION
Appellants' disclosed and claimed invention relates to assemblies and
methods for sensing current through semiconductor device leads. Abstract.
Claim 1 is illustrative and reads as follows:
1. An assembly comprising:
a semiconductor device having a lead;
a carrier mounted to the semiconductor device lead, the
carrier including output terminals and defining an opening, the
semiconductor device lead extending through the opening; and
a current sensor supported by the carrier and electrically
coupled to the output terminals, the current sensor extending
around at least a portion of the semiconductor device lead for
providing a signal to the output terminals representing current
flowing in the semiconductor device lead.
REJECTIONS
Claims 1, 3-5, 7, 8, 11, 13-16, 18, 21-23, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Windham Jr. et
al. (US 5,277,612; issued Jan. 11, 1994), Aratani (US 2009/0128129 Al;
published May 21, 2009), and Radun (US 5,015,945; issued May 14, 1991).
Claims 10, 12, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Windham, Aratani, Radun, and Chin
(US 6,753,749 Bl; issued June 22, 2004).
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Windham, Aratani, Radun, and Fernandez et al.
(US 6,081,180; issued June 27, 2000).
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Application 12/568,816
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Windham, Aratani, Radun, and Barry et al.
(US 5,789,712; issued Aug. 4, 1998).
ANALYSIS
We have considered Appellants' arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken. We provide the following explanation for
emphasis.
Claims 1, 3-5, 8, 11, 13-16, 18, 22, and 23
With respect to claim 1, Appellants contend the cited portions of
Windham, Aratani, and Radun do not disclose a current sensor extending
around at least a portion of a semiconductor device lead, as claim 1 requires.
App. Br. 5-9. Appellants specifically argue that, in Radun, the current
sensor extends around an intervening conductor, not around the collector
terminal that is connected to conductor. Id. at 8-9 (citing Radun, col. 1,
1. 67---col. 2, 1. 5; col. 5, 11. 18-24; col. 6, 11. 8-13; Fig. 1; Abstract).
Appellants further argue that Figure 1 of Radun illustrates an electrical
arrangement, not a structural arrangement, of electrical components. Id.
at 10. Appellants also argue that claim amendments the Examiner
previously proposed are nearly identical to the pending claims and
demonstrate that the present claims are allowable. Id. at 11-15.
We first note that proposed claim amendments are not before us, as
they are not in the prosecution record and were never entered by the
Examiner. See Ans. 24; Hr'g Tr. 4:3-24. Moreover, at the time the
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Application 12/568,816
amendments were proposed, the claims stood rejected under a different
combination of prior art references. App. Br. 14; Ans. 24.
We also note that the rejection of the claims before us is for
obviousness under§ 103, and not anticipation. The test for obviousness is
not what each reference individually discloses, but rather what the
combination of references would have suggested to one of ordinary skill in
the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSRint'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
We agree with the Examiner's factual findings and legal conclusion
that it would have been within the level of skill of one skilled in the art to
combine the known techniques in Windham, Aratani, and Radun to use a
current sensor, such as that disclosed by Radun and Aratani, mounted in a
holder as disclosed by Aratani, with sockets to mount semiconductor devices
disclosed by Windham. See KSR, 550 U.S. at 417 ("[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill" (citations omitted)). We are not persuaded that combining the
respective familiar elements of the cited references in the manner proffered
by the Examiner would have been "uniquely challenging or difficult for one
of ordinary skill in the art" at the time of Appellants' invention. Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
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Application 12/568,816
We also agree with the Examiner that an artisan of ordinary skill
would have appreciated that extending a current sensor around at least a
portion of a semiconductor device lead, rather than a conductor connected to
the device lead, would have reduced the amount of circuit board space
required for current sensing components, reduced resistance and/ or
inductance of the current path, and reduced the number of solder
connections, resulting in a smaller, more economical assembly. See Ans. 17;
App. Br. 7; Hr'g Tr. 7:17-8:7.
Appellants acknowledge that Radun's conductor 20 is electrically
identical to the semiconductor device lead recited in claim 1. See Ans. 17-
21; Hr' g Tr. 15: 1-11. Moreover, Appellants present no persuasive
explanation or evidence to rebut the Examiner's findings that claim 1 recites
a combination of parts known in the prior art, and the combination does not
perform any function that is contrary to well understood principles and
expectations of the art. Ans. 16-17; see also Hr'g Tr. 7: 17-8:7.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Windham, Aratani, and Radun teaches or
suggests the limitations of claim 1.
Accordingly, we sustain the Examiner's obviousness rejection of
claim 1, as well as independent claims 8 and 13 and dependent claims 15
and 16, which Appellants argue are patentable for similar reasons. App.
Br. 5-11, 19-20. We also sustain the Examiner's rejection of dependent
claims 3-5, 11, 14, 18, 22, and 23, for which Appellants present no further
arguments.
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Application 12/568,816
Claim 7
Appellants contend the combination of Windham, Aratani and Radun
does not teach or suggest a switching type regulator containing "a power
converter," as claim 7 requires, because Radun's semiconductor power
switching device is a switch. App. Br. 15-16, 20-21.
The Examiner explains that the apparatus of Radun acts as a power
converter because it converts the voltage between the open terminals of the
coil to current supplied at the output at voltage Vout· Ans. 26 (citing Radun,
Fig. 1 ). The Examiner also concludes that an artisan of ordinary skill would
have recognized that the "bidirectional switching device" referred to in the
Abstract of Radun makes clear that the circuit is part of a switching regulator
circuit. Id. Appellants offer no persuasive explanation or evidence to rebut
the Examiner's findings and conclusion.
Therefore, on the record before us, we are not persuaded that the
Examiner has erred in finding that the combination of Windham, Aratani,
and Radun teaches or suggests the limitations of claim 7, and we sustain the
Examiner's obviousness rejection of claim 7. 4
Claim 21
Appellants contend the combination of Windham, Aratani, and Radun
does not teach or suggest that the semiconductor device is an integrated
circuit, as claim 21 requires. App. Br. 17-18. Appellants specifically argue
4 In the event of further prosecution of this application, we invite the
Examiner's attention to the question of whether claims 7 and 12 are
patentable under 35 U.S.C. § 112, fourth paragraph. Claims 7 and 12 fail to
specify further limitations of the subject matter of claims 1 and 8 to which
they respectively refer because claims 7 and 12 are completely outside the
scope of these claims. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284,
1292 (Fed. Cir. 2006).
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that Windham does not teach or suggest that transistors or other
semiconductor devices attached to the carrier are integrated circuits. Id.
In response, the Examiner offers dictionary definitions to show that
the definition of "semiconductor device" encompasses integrated circuits.
Ans. 28-29. In the Reply Brief, Appellants do not address the Examiner's
proffered definitions, and offer no persuasive explanation or evidence to
rebut the Examiner's findings and interpretation.
For these reasons, we are not persuaded that the Examiner has erred in
finding that the combination of Windham, Aratani, and Radun teaches or
suggests the limitations of claim 21, and we sustain the Examiner's
obviousness rejection of claim 21.
Claim 25
Appellants contend the combination of Windham, Aratani, and Radun
does not teach or suggest that a central axis of the carrier opening extends
substantially perpendicular to a circuit board when the output terminals of
the carrier are mounted to the circuit board, as claim 25 requires. App.
Br. 18-19. Appellants specifically argue that Windham's carrier 10 includes
openings 66 that have a central axis perpendicular to the PCB 34, but
Windham's carrier 10 does not have output terminals that are mounted to the
PCB 34. Id. Appellants further argue that, even assuming Aratani's
terminals 7 are configured to couple to a circuit board, the central axis of the
main body's opening would extend parallel, not perpendicular, to a circuit
board when the terminals 7 are mounted to the circuit board. Id.
The Examiner explains that Windham teaches or suggests the disputed
limitation because the mounting holes of the device holder allow the leads of
the device to be inserted vertically into the mounting holes. Ans. 29-30
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(citing Windham, Fig. 5). Appellants offer no persuasive explanation or
evidence to rebut the Examiner's findings.
Therefore, we are not persuaded that the Examiner erred in finding
that the combination of Windham, Aratani, and Radun teaches or suggests
the limitations of claim 25, and we sustain the Examiner's obviousness
rejection of claim 25.
Claims 6, 9, 10, 12 and 24
Appellants contend the combination of Windham, Radun, Aratani,
and Fernandez fails to disclose "a carrier including a plurality of tabs
positioned about and contacting a perimeter of the current sensor to retain
the current sensor in contact with the carrier," as recited in claim 6. App. Br.
19. Appellants also contend the combination of Windham, Radun, Aratani,
and Barry fails to disclose "a nonconductive material including a
nonconductive nylon material," as recited in claim 9. Id. at 19--20.
Appellants also contend the combination of Windham, Aratani, Radun, and
Chin does not teach or suggest "a carrier including a plurality of tabs
configured to inhibit contact between the current sensor and a circuit board
when the assembly is mounted to the circuit board," "a carrier defining at
least one slot and the semiconductor device includes at least one other lead
positioned in the slot to inhibit rotation of the carrier relative to the
semiconductor device" and/or "a power supply including a circuit board," as
recited by claims 10, 12, and/or 24. Id. at 20.
Appellants have not supported these contentions with persuasive
evidence or reasoning. Simply asserting the cited art fails to teach or
suggest this limitation is insufficient to establish that the Examiner erred.
3 7 C.F .R. § 41.3 7 ("A statement which merely points out what a claim
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Application 12/568,816
recites will not be considered an argument for separate patentability of the
claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
Regarding claim 12, Appellants further contend the combination of
Windham, Aratani, Radun, and Chin does not teach or suggest "a power
supply." App. Br. 21. Appellants rely on the same arguments made for
claim 7. See id. at 15. For the reasons discussed above with regard to claim
7, we are not persuaded the Examiner erred.
Accordingly, we sustain the Examiner's obviousness rejection of
claims 6, 9, 10, 12, and24.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-16, 18,
and 21-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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