Ex Parte Hill

Board of Patent Appeals and Interferences

Aug 8, 2012

10818520 (B.P.A.I. Aug. 8, 2012)

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.
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Application 10/818,520
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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
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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
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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
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(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
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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
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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.
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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)

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