Ex Parte HillDownload PDFBoard of Patent Appeals and InterferencesAug 8, 201210818520 (B.P.A.I. Aug. 8, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/818,520 04/06/2004 Wolfgang Hill US 27 4218 7590 08/09/2012 Wolfgang Hill Ortenbergstrasse 3 Karlsruhe, D-76135 GERMANY EXAMINER BENSON, WALTER ART UNIT PAPER NUMBER 2837 MAIL DATE DELIVERY MODE 08/09/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte WOLFGANG HILL ____________________ Appeal 2010-004104 Application 10/818,520 Technology Center 2800 ____________________ Before SALLY C. MEDLEY, KEVIN F. TURNER, and JENNIFER S. BISK, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004104 Application 10/818,520 2 DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-9, 11, and 15-17. 1 Claims 10, 12-14, and 18 have been objected to. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention relates to “a power stage for driving an electric machine.” Spec. 1. Claim 1, reproduced below with emphases added, is illustrative of the claimed subject matter: 1. Power stage for driving an electric machine or a power supply, wherein said power stage comprises: at least two metallic conductor parts and at least two discrete active semiconductor power switches which are designed as semiconductor chips that are triggered by a control logic, said discrete active semiconductor power switches being connected to each other by at least one metallic bridge conductor which is an discrete metallic conductor part, thereby forming a half bridge of said power stage, in which said discrete active semiconductor power switches are area contacting with a first of their contact surfaces one of said discrete metallic conductor parts, 1 Appellant lists claim 9 as being finally rejected and appealed. Br. 2. Claim 9 is also listed as rejected on the cover page of the Final Rejection. And the Answer agrees that the Appellant’s statement of the status of claims is correct. Ans. 2. However, claim 9 is not listed in either of the two rejections—either in the heading or the body—of either the Final Rejection or the Answer. Since the Appellant argues only that claim 9 is patentable for the same reasons argued for claim 1, on which claim 9 depends, we assume that this omission by the Examiner was inadvertent and harmless and we assume that claim 9 was included in the first rejection. Appeal 2010-004104 Application 10/818,520 3 and in which at least one of said bridge conductors is connected to an electric terminal of said power stage, said at least one bridge conductor is area contacting at least one said discrete active semiconductor power switches at a second contact surface which is disposed oppositely to said first contact surface connected with one of said discrete conductor parts and said conductor parts or said bridge conductors are designed as solid plates. THE REJECTIONS 1. Claims 1-6, 8, 9, 11, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dufour (US 6,426,650 B1; July 30, 2002) and Grzybowski (US 4,218,694; Aug. 19, 1980). Ans. 3-6. 2. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dufour, Grzybowski, and Deam (US 5,579,217; Nov. 26, 1996). Ans. 6-7. THE OBVIOUSNESS REJECTION OVER DUFOUR AND GRZYBOWSKI The Examiner finds that Dufour teaches every limitation except “at least one bridge conductor is area contacting the semiconductor switches at a second contact surface which is disposed oppositely to the first contact surface connected with one of the conductor tracks.” Ans. 3-4. The Examiner cites Grzybowski as teaching this limitation. Id. Appellant argues that this rejection should be reversed because Dufour does not disclose several limitations of representative claim 1, including: (1) “Power stage for driving an electric machine or a power supply”; (2) “at least two discrete active semiconductor power switches which are designed as semiconductor chips”; (3) “at least one of said bridge Appeal 2010-004104 Application 10/818,520 4 conductors is connected to an electrical terminal of said power stage”; and (4) “said conductor parts or said bridge conductors are designed as solid plates.” Br. 8. Appellant also argues that Dufour and the claimed invention are in different “technical environment[s].” Id. We do not find Appellant’s arguments persuasive for the reasons set forth below. First, we are not persuaded by Appellant’s argument that this rejection should be reversed because Dufour does not teach a “power stage for driving an electric machine or a power supply” because “[n]o one skilled in the art will interpret an integrated circuit having a metal programmable logic cell as a power stage.” Br. 8. The Examiner responds that “for driving an electric machine” is not a limitation of the claim because it only appears in the preamble and merely states an intended use for the claimed power stage without resulting in a structural difference. Ans. 12. We agree with the Examiner. “[A] preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks omitted). Second, we are not persuaded by Appellant’s argument that Dufour does not teach “…at least one of said bridge conductors is connected to an electrical terminal of said power stage.” The Examiner finds that Dufour teaches at least one of said bridge conductors (307, 308; IN1 IN2) are connected to electrical terminal (VDD/VDS) of the power stage. Ans. 10 (citing Dufour Figures 4 and 5A). The Examiner also interprets the claim term “connected” broadly to include indirect connections. The Examiner’s claim interpretation and finding based on that interpretation are reasonable. Claim 1 uses the construction “comprising” in the preamble. This Appeal 2010-004104 Application 10/818,520 5 construction permits the inclusion of more than the recited elements. Claim 1 does not require that the bridge conductors are directly connected to an electrical terminal; only that there is a connection (i.e., either directly or indirectly). Appellant does not point to any language in the Specification that limits the term “connected to” to be a direct connection. Third, we are not persuaded by Appellant’s argument that Dufour does not disclose “said conductor parts or said bridge conductors are designed as solid plates.” Br. 6-8. The Examiner finds that Dufour teaches that “conductors (301, 303) form a metal layer above the transistors” and broadly interprets the claim term “solid plate” as including the “metal layer” described by Dufour. Ans. 11 (citing Dufour col. 5, ll. 2-4). We agree with this finding and interpretation. Appellant asserts that “[s]omeone skilled in the art knows that a ‘metal layer’ on the surface of an integrated circuit is very thin and far away from a solid plate.” Br. 6-7, 9. However, Appellant does not direct us to evidence to support this assertion. Neither does Appellant point to any language in the Specification that limits the term “solid plates” to something other than a metal layer. Fourth, we are not persuaded by Appellant’s argument that because Dufour describes only one semiconductor circuit chip, it does not disclose “at least two discrete active semiconductor power switches which are designed as semiconductor chips.” Br. 6. According to Appellant, “Dufour describes only one discrete chip (an IC = one chip).” Br. 8. The Examiner interprets the claim term “discrete” to mean “separate” and finds that the transistors (T1 and T2) described by Dufour are equivalent to the claimed “two active semiconductor power switches.” Ans. 8 (citing Dufour col. 1, ll. 35-43; col. 4, ll. 14-18 and 29-39). Further, the Examiner finds that Dufour teaches that the two transistors are designed as semiconductor chips. Ans. 8 Appeal 2010-004104 Application 10/818,520 6 (citing Dufour col. 1, ll. 35-43; col. 4, ll. 14-18). While Appellant appears to argue that this rejection should be reversed because Dufour does not specifically teach that each of the two transistors are on separate chips, as opposed to being consolidated on one single semiconductor chip, we are not persuaded that one of ordinary skill in the art would not, at the time of the invention, have found it obvious that the transistors could be on either the same, or separate chips, based on the teachings of Dufour. This determination is further supported by record evidence, since Appellant’s own Specification’s “Description of Prior Art” section, states that a power stage comprising “several semiconductor switches designed as transistor chips, of which two each are joined by bond wires” is “known in the field.” Spec. 1. Finally, Appellant argues that Dufour and the claimed invention are in different “technical environment[s].” Br. 8. To the extent that Appellant is arguing that Dufour is not analogous art, we are not persuaded. The Examiner finds that Dufour teaches an inverter, which is used for driving a power supply or electric machine. Ans. 12. Appellant does not address this finding. Moreover, two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Because Appellant provides no persuasive evidence or reasoning to support the assertion that Dufour is not in the same field of endeavor or pertinent to the problem with which the Appeal 2010-004104 Application 10/818,520 7 inventor is involved, we are not persuaded that this rejection should not be sustained. We have considered all of Appellant’s arguments for the patentability of claim 1 and found them unpersuasive. For these reasons, we conclude that Appellant has not sufficiently rebutted the Examiner’s prima facie case of obviousness for independent claim 1. Appellant relies on the arguments made with respect to claim 1 for the patentability of dependent claims 2, 4-6, 8, 9, 11, 15, and 17. App. Br. 18- 19. In addition, Appellant argues that the Examiner did not sufficiently consider or address amendments and arguments made during prosecution. We exercise no general supervisory power over the examining corps, and decisions of primary examiners to issue final rejections and the completeness of those rejections are not subject to our review. See MPEP §§ 706.07(c), 1002.02(c) and 1201 (8th ed., Jul. 2010). Instead, this is an issue relating to the process or procedure of examination that is reviewable by petition. See 37 C.F.R. 1.181(a)(3). Thus, the relief sought by the Appellant would have properly been presented by a petition to the Commissioner under 37 C.F.R. § 1.181. Accordingly, we will not further comment on or consider this issue. Thus, for the reasons discussed above, we sustain the rejection of claims 2, 4-6, 8, 9, 11, and 15. THE OBVIOUSNESS REJECTION OVER DUFOUR, GRZYBOWSKI, AND DEAM The Examiner found that Dufour and Grzybowski disclose all the limitations of claims 7 and 16 except a metallic heat sink plate. Ans. 6-7. The Examiner cites Deam as teaching this limitation. Id. All of Appellant’s Appeal 2010-004104 Application 10/818,520 8 arguments regarding the patentability of claims 7 and 16 rely on the arguments made with respect to claim 1. Br. 13. For the reasons discussed above, we sustain the rejection of claims 7 and 16. DECISION The Examiner’s decision rejecting claims 1-9, 11, and 15-17 is affirmed; however, since our rationale differs from the rationale of the Examiner, our affirmance is designated as a new rejection. 37 C.F.R. § 41.50(b)(2006). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner …. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record …. Should the Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. Appeal 2010-004104 Application 10/818,520 9 If the Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 37 C.F.R. § 41.50(b) rwk Copy with citationCopy as parenthetical citation