Ex parte Gempe et al.

Board of Patent Appeals and Interferences

Sep 27, 1999

08345917 (B.P.A.I. Sep. 27, 1999)

Application for patent filed November 28, 1994.1
According to appellants, this application is a continuation of
Application 08/072,016, filed June 07, 1993.
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(2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HORST A. GEMPE
and GARY W. HOSHIZAKI
________________
Appeal No. 1996-4073
Application 08/345,9171
________________
ON BRIEF
________________
Before MARTIN, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
The brief misstated the finally rejected claims as2
claims 30 through 32. This misstatement was repeated in the
answer. However, paper no. 17, received Aug. 28, 1995,
canceled claims 21 through 29 and 34 through 38, leaving
claims 30 through 33 as the remaining pending claims. Of
these remaining claims, claim 30 is directed to a non elected
invention, and not included in this appeal.
2
Appeal No. 1996-4073
Application No. 08/345,917
This is a decision on appeal from the final
rejection of claims 31 through 33 . 2
The invention is directed to a linear opto-coupler
circuit that is used to electrically isolate one circuit from
another. As shown in Figure 1, linear opto-coupler 12
includes a light emitting diode 13 and a detector diode 18 to
linearize the circuit, which is connected to an input circuit
including amplifier 19. The output circuit has photo detector
17 for optical isolation. In particular, referring to Figure
6 for the details of light emitting diode 13 and detector
diode 18, an epitaxial layer 43 is formed on a planar side of
semiconductor substrate 40. Epitaxial layer 43 forms an anode
of light emitting diode 41. A terminal 48 couples to
epitaxial layer 43. Semiconductor substrate 40 forms a
cathode of light emitting diode 41. On a planar side opposite
from which epitaxial layer 43 is formed, an epitaxial layer 44
Appeal No. 1996-4073
Application No. 08/345,917
3
is formed on semiconductor substrate 40. Epitaxial layer 44
forms an anode of detector diode 42. Semiconductor substrate
40 also forms a cathode of detector diode 42. Looking at
Figure 8, an integrated light emitting diode 62/detector diode
63 is mounted on a lead frame
51 at mounting area 59, and photo detector diode 61 is at
mounting area 58. Mounting areas 58 and 59 are coplanar.
Independent claim 31 is reproduced as follows:
31. A linear integrated optocoupler comprising:
an integrated light emitting diode and detector
diode wherein said detector diode detects light emitted by
said light emitting diode and provides a signal for
linearizing a response of said light emitting diode, said
integrated light emitting diode and detector diode comprising:
a semiconductor substrate;
a first epitaxial layer formed on a first side of
said semiconductor substrate;
a second epitaxial layer formed on a second side of
said semiconductor substrate, said first and second sides of
said
semiconductor substrate oppose one another, said first
epitaxial layer is an anode of said light emitting diode, said
second epitaxial layer is an anode of said detector diode, and
said semiconductor substrate is a common cathode of said
integrated light emitting diode and detector diode;
a photodetector diode for receiving light emitted by
said light emitting diode;
a lead frame including a first area and a second
Appeal No. 1996-4073
Application No. 08/345,917
Any citation to this reference will be with respect to a3
translation in the file, by Schreiber Translations, Inc.,
dated May 1999.
4
area, said first and second areas being coplanar, said
integrated light emitting diode and detector diode being
conductively mounted to said first area of said lead frame and
said photodetector diode being conductively mounted to said
second area, said
photodetector diode is electrically and physically isolated
from said integrated light emitting diode and detector diode;
a light flux coupling material placed on and between
said first and second areas of said lead frame for coupling
light emitted by said light emitting diode to said
photodetector diode wherein said light flux coupling material
covers said integrated light emitting diode and detector diode
on said first area and said photodetector diode on said second
area; and
a protective enclosure formed around said first and
second areas and said light flux coupling material for
enclosing said light emitting diode and detector diode, and
said photodetector diode.
The Examiner relies on the following references:
Rutz 3,229,104 Jan. 11, 1966
Rideout et al. 3,881,113 Apr. 29, 1975
Oimura et al. 4,675,518 Jun. 23, 1987
Suzuki JP 58-48481 Mar. 22, 19833
Fujisawa JP 59-222973 Dec. 14, 1984 3

Claims 31 through 33 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Rutz or Rideout in view of
Suzuki or Oimura and Appellants’ prior art admissions or
Fujisawa.
Appeal No. 1996-4073
Application No. 08/345,917
5
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the brief and answer
for the respective details thereof.
OPINION
After a careful review of the evidence before us, we
will not sustain the rejection of claims 31 through 33 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 reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan 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
Appeal No. 1996-4073
Application No. 08/345,917
6
invention."
Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085,
1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995) (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)).
With regard to claim 31 Appellants argue:
[A]ppellants claim “a semiconductor substrate, a
first epitaxial layer formed on a first side of said
semiconductor substrate, a second epitaxial layer
formed on a second side of said semiconductor
substrate, said first and second sides of said
semiconductor substrate oppose one another, said
first epitaxial layer is an anode of said light
emitting diode, said second epitaxial layer is an
anode of said detector diode, and said semiconductor
substrate is a common cathode of said integrated
light emitting diode and detector diode”. In
particular, the light emitting diode is integrated
with the detector diode, both share a common cathode
(substrate). (Brief-page 5.)
Looking at all references cited by the Examiner, we
find none that teach or suggest, individually or in
combination, the claimed structure recited supra. No
reference has a common substrate cathode with an epitaxial
anode on each side of the substrate. Rutz and Rideout have
separate cathodes and anodes for each diode on each side of a
Appeal No. 1996-4073
Application No. 08/345,917
7
substrate. Their common substrates are not a common cathode.
Oimura and Suzuki teach the use of a common cathode, but the
anodes are not epitaxial layers on opposite sides of a
substrate. There is no suggestion or teaching in any of these
references that would lead one to make the common substrate of
Rutz or Rideout into a common cathode structure akin to Oimura
or Suzuki. The common substrates of Rutz and Rideout are
insulators and isolators, not active components.
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). "Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
Since Appellants’ specification provides the only
Appeal No. 1996-4073
Application No. 08/345,917
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teaching that would lead one to combine the references in the
manner proposed by the Examiner, we will not sustain the
rejection of claim 31 under 35 U.S.C. § 103. Likewise we will
not sustain the rejection of dependent claims 32 and 33 since
they contain the same unmet claim limitations.
We note that Fujisawa teaches the remaining claim
limitations in figure 2 where light emitting diode 21 and
photo detector diode 22 are mounted on two coplanar areas of
lead frame 25. A light flux coupling material 23 is provided
and a protective enclosure 24 is formed around the components.
We have not sustained the rejection of claims 31
through 33 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
Appeal No. 1996-4073
Application No. 08/345,917
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John C. Martin )
Administrative Patent Judge )
)
)
) BOARD OF
)
Michael R. Fleming ) PATENT
Administrative Patent Judge )
) APPEALS AND
)
)
INTERFERENCES
)
Stuart N. Hecker )
Administrative Patent Judge )
SH/dm
Vincent B. Ingrassia
Motorola Inc.
Intellectual Property Department
P. O. Box 10219
Appeal No. 1996-4073
Application No. 08/345,917
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Scottsdale AZ 85271-0219