Ex Parte Green et al

Board of Patent Appeals and Interferences

Nov 28, 2006

10209746 (B.P.A.I. Nov. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte BRUCE M. GREEN, ELLEN LAN, and
PHILLIP LI
___________

Appeal No. 2006-3106
Application No. 10/209,746
Technology Center 2800
___________

ON BRIEF
___________

Before DIXON, SAADAT, and MACDONALD, Administrative Patent
Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the examiner's

final rejection of claims 1-20, which are all of the claims pending in this

application.

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Application 10/209,746

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We REVERSE.

BACKGROUND

The Appellants’ invention relates to a field plate transistor with
reduced field plate resistance. An understanding of the invention can be
derived from a reading of exemplary claim 1 which is reproduced below.
1. A transistor, the transistor comprising:
a source;
a gate;
a drain;.
a field plate located between the gate and the drain, wherein
said field plate comprises a plurality of connection locations;
and
a plurality of electrical connectors connecting said plurality
of connection locations to a potential.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Herbert et al. (Herbert) 5,898,198 Apr. 27, 1999
Oguri et al. (Oguri) 6,329,677 Dec. 11, 2001
D'Anna et al. (D'Anna) 6,521,923 Feb. 18, 2003
(Filed May 25, 2002)

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REJECTIONS
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejections, we make
reference to the Examiner's answer (mailed May 9, 2006) for the reasoning
in support of the rejections, and to Appellants’ brief (filed Apr. 18, 2006)
and reply brief (filed Jun. 29, 2006) for the arguments thereagainst.
Claims 1, 2, 4, 5, 7-16 and 18-20 stand rejected under 35 U.S.C.
§ 102 as being anticipated by D'Anna. Claim 3 stands rejected under
35 U.S.C. § 103(a) as being unpatentable over D'Anna in view of Oguri.
Claims 6 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over D'Anna in view of Herbert.

OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.

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A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631,
2 USPQ2d 1051, 1053 (Fed. Cir.). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference. As set forth by
the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ
781, 789 (Fed. Cir. 1983), it is only necessary for the claims to "'read on'
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or 'fully met' by it." While all elements of the
claimed invention must appear in a single reference, additional references
may be used to interpret the anticipating reference and to shed light on its
meaning, particularly to those skilled in the art at the relevant time. See
Studiengesellschaft Kohle, m.b.H v. Dart Indus., Inc., 726 F.2d 724, 726-
727, 220 USPQ 841, 842 (Fed. Cir. 1984).
We must point out, however, that anticipation under 35 U.S.C. § 102
is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of a
claimed invention. See RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).

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Further, as pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the claim.” In
re Hiniker Co., 150 F.3d 1362, 1368-69, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998). Therefore, we look to the limitations as recited in independent claim
1 and find that claim 1 requires that for a single transistor that there be
“field plate comprises a plurality of connection locations and a plurality of
electrical connectors connecting said plurality of connection locations to a
potential.” Appellants argue that D’Anna does not teach more than one
connection to a potential for the field plate (Br. 4).
We agree with Appellants and find that the Examiner has not shown
an express teaching in D’Anna for the plurality of connection locations and
that these plural connections are to a [singular/same] potential. The
Examiner maintains that columns 4 and 13 of D’Anna teach the plural
connections which would be to the backside and to the source (Answer 7-8).
We do not find that the express language or the figures of D’Anna expressly
supports the Examiner’s position. Additionally, the Examiner maintains that
“[t]his additional disclosure [of D’Anna] strongly suggests to the ordinary
artisan that shield plate has two connections, one to the backside and another
to the source region.” We are left with the conclusion that the Examiner
may actually be relying upon obviousness by the above statement yet the
Examiner rejected the claims under 35 U.S.C. § 102. With that said, we
make no findings concerning obviousness to independent claims 1 and 11

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since the Examiner did not make a rejection under obviousness. We do note
that independent claim 1 recites that the plurality of connections are to “a
potential” which we find to be the same or a singular potential which the
backside and source connections would not necessarily be to the same
potential.
To agree with the Examiner’s stated rejection would require us to rely
upon speculation as to what the ordinary skilled artisan would find by the
sparse description and drawings of D’Anna. We cannot extend 35 U.S.C.
§ 102 that far for the Examiner. We cannot find that the express teachings
of D’Anna teach plural connections to a potential in a single transistor as
recited in independent claim 1. Therefore, we cannot sustain the rejection of
independent claim 1 and its dependent claims.
Similarly, we find that D’Anna does not teach the recited plural
connections to a potential in a single transistor as recited in independent
claim 11 and its dependent claims.
With respect to the rejection under 35 U.S.C. § 103, the Examiner has
not identified any teaching, suggestion or convincing line of reasoning
which remedies the noted deficiency. Therefore, we cannot sustain the
rejection of dependent claims 3, 6, and 17.

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CONCLUSION
To summarize, the rejections of claims 1-20 under 35 U.S.C. §§ 102
and 103 have not been sustained.

REVERSED

JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

JLD/pgc

Appeal No. 2006-3106
Application 10/209,746

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