Ex Parte Guenther et al

Patent Trial and Appeal Board

May 25, 2016

11664304 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/664,304 0110912009
27799 7590 05/27/2016
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Ewald Karl Michael Guenther
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.
5367-296PUS\299646 9541
EXAMINER
TRINH,HOAB
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EWALD KARL MICHAEL GUENTHER,
JORG ERICH SORG, and NORBERT STATH
Appeal2015-000077
Application 11/664,304
Technology Center 2800
Before, KAREN M. HASTINGS, GEORGE BEST and
JENNIFER GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 2-12, 25-27, 29, 30, 32, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined prior art of at least Yukio
et al. (Yukio hereinafter) (JP 11-191642 (A)) in view ofYoshinobu et al.
1 The Real Party in Interest is stated to be "OSRAM OPTO
SEMICONDUCTOR, GmbH." (App. Br. 2).
Appeal2015-000077
Application 11/664,304
(hereinafter as Yoshinobu) (vVO 2004-082036 Al). 2 \Ve have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 34, the sole independent claim, is illustrative of the claimed
subject matter (emphasis added):
34. An optoelectronic component which emits radiation
in a main radiation direction, comprising:
a semiconductor chip having a first main area, a first
contact area, and a second main area, opposite the first main
area, with a second contact area;
a carrier body having first and second electrical
connection regions insulated from one another, the
semiconductor chip being fixed by the first main area on the
carrier body and the first contact area being electrically
conductively connected to the first connection region;
a transparent, electrically insulating encapsulation layer
formed on the semiconductor chip and the carrier body,
wherein the radiation emitted in the main radiation direction is
coupled out through the encapsulation layer, and wherein the
encapsulation layer is a glass layer; and
a contact connection formed by an electrically conductive
layer extendingfrom the second contact area over a region of
the encapsulation layer to the second electrical connection
region of the carrier body, and electrically conductively
connecting the second contact area to the second connection
region;
wherein an insulating cover layer is applied to the
electrically conductive layer; and
wherein the cover layer is a glass layer.
2 The rejection of claim 9 further includes Asakura et al. (US 2003/0095224
Al) (Final Act. 7), while the rejection of claims 29 and 30 further includes
Chen (US 6,531,328 B 1) (Final Act. 8).
2
Appeal2015-000077
Application 11/664,304
OPil-JION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with
approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The fact finder must be aware "of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning."
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
( 1966) (warning against a "temptation to read into the prior art the teachings
of the invention in issue")).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellants'
assertions that the Examiner's rejection is based on improper hindsight in
proposing to modify Yukio to have the additional layer of glass over the
encapsulant layer comprised of glass wherein a conductive layer is present
over the encapsulant and under the additional layer of glass as required by
claim 34.
As detailed in Appellants' Briefs, Yukio fails to teach the claimed
features that (i) the encapsulation layer is a glass layer, (ii) an insulating
cover layer is applied to the electrically conductive layer, and (iii) the cover
layer is a glass layer (Reply Br. 2; Yukio, e.g., Fig. 1; abstract).
3
Appeal2015-000077
Application 11/664,304
The Examiner concludes that it would have been obvious to modify
Yukio to include an additional layer over the top of the conductive layer, and
make both the encapsulant and additional layer of glass based on
Yoshinobu's disclosure of a device comprising an encapsulating layer being
made of glass material and covering the device's components (Ans. 9;
Yoshinobu, e.g., Fig. l(a)), "because the glass material is readily available in
the art ... [and] a known material on the basis of its suitability for the
intended use as a matter of obvious design choice" (Ans. 4; see also Final
Act. 4) and further "to protect the components from the environmental
debris and to allow light to emit therethrough." (Ans. 9).
Y oshinobu, however, teaches forming conductive connections
underneath a semiconductor chip as opposed to adding a conductive layer
after application of encapsulant as taught in Yukio (Reply Br. 4; Yoshinobu,
e.g., Fig. l(a)). Contrary to the Examiner's position that the application of a
cover layer applied after the conductive layer is added to the encapsulant is
obvious (Ans. 9), Appellants detail why the additional glass layer is not
obvious in light of Y oshinobu wherein the first glass encapsulant layer
completely covers semiconductor chip comprising conductive connections
underneath and an additional cover layer is not required (e.g., Reply Br. 4).
The Examiner has not come forward with an adequate explanation
indicating why one of ordinary skill in the art would have incorporated the
specific configuration of Yukio' s device comprising an encapsulant layer
with a conductive layer applied above the encapsulant layer with
Yoshinobu's semiconductor device comprising a singular glass layer
encapsulant with the conductive layer below. That is, the Examiner has not
adequately explained why one would have added another layer of glass over
4
Appeal2015-000077
Application 11/664,304
Yukio's conductive layer based on the teachings ofYoshinobu (e.g., App.
Br. 4--5; Reply Br. 2--4).
Accordingly, we agree with Appellants that the Examiner has not
articulated a sufficient reason for modifying Yukio with Yoshinobu, absent
use of impermissible hindsight. KSR, 550 U.S. at 421.
Thus, we reverse the Examiner's§ 103 rejections on appeal.
CONCLUSION
In summary, the appealed rejections are reversed.
REVERSED
5