Ex Parte Karrer

Patent Trial and Appeal Board

Sep 25, 2014

12142099 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HEINRICH KARRER
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Appeal 2012-010961
Application 12/142,099
Technology Center 2800
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Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–3, 5–9, and 12–14. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a surface-mountable electronic device. Claim 1
is illustrative:
1. A surface-mountable electronic device (13) free of leads which has
a plurality of solderable connection surfaces (17) at its lower side (11),
wherein at least one of the connection surfaces (17) has a rectangular
portion (19) whose outline corresponds to a connection surface of the
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JEDEC Standard MO-236 according to which the respective connection
surface should not extend directly up to a side edge of the lower device
side, said rectangular portion having a side which is spaced inwardly from
and generally parallel to said side edge;
wherein the at least one connection surface (17) furthermore has an
extension section (21) which extends, starting from the rectangular portion
(19), in the direction of said side edge (23) of the lower side (11) of the
device, said extension section having a length in the direction of said side
edge less than the length of said side of said rectangular portion in the
direction of said side edge of the lower side of the device.

The References
Hasebe US 6,713,849 B2 Mar. 30, 2004
Adachi US 2004/0103530 A1 June 3, 2004
Kawai US 2006/0087388 A1 Apr. 27, 2006
Berolini US 2008/0165468 A1 July 10, 2008
(filed Dec. 18, 2007)
The Rejections
The claims stand rejected as follows: claims 1, 3, 5–9 ,and 13 under
35 U.S.C. § 102(b) over Adachi, claims 1, 3, 5–8, and 12 under
35 U.S.C. § 102(e) over Berolini, claim 2 under 35 U.S.C. § 103 over
Adachi or Berolini, in view of Kawai, claim 9 under 35 U.S.C. § 103 over
Berolini in view of Adachi, claims 12 and 14 under 35 U.S.C. § 103 over
Adachi in view of Hasebe and claims 1, 3, 5–9, and 12–14 under
35 U.S.C. § 103 over Hasebe in view of Adachi.
OPINION
The rejections are affirmed as to claims 1–3, 5–9, and 13 and reversed
as to claims 12 and 14.

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Rejections of claims 1, 3, 5–9, and 13 under 35 U.S.C. § 102(b)
over Adachi and claim 2 under 35 U.S.C. § 103
over Adachi in view of Kawai
The Appellant argues claims 1, 3, 5–9, and 13 as a group and does not
argue the rejection of claim 2 (App. Br. 4–5). We therefore limit our
discussion to one claim among claims 1, 3, 5–9, and 13, i.e., claim 1.
Claims 2, 3, 5–9, and 13 stand or fall with that claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255–56 (Fed. Cir. 1989).
Adachi discloses a magnetic sensor (1) comprising a plurality of
leads (4) (which the Examiner relies upon as corresponding to the
Appellant’s at least one connection surface having an extension (Ans. 2–3))
for electrically connecting magnetic sensor chips (2, 3) to an external device
(¶ 131; Fig. 1).
The Appellant argues that Adachi’s “connection surface or contact 4
does not extend along the bottom of the device, but rather protrudes laterally
outwardly from the side” (App. Br. 5).
Each of Adachi’s leads (4) not only has a portion protruding laterally
outwardly from the magnetic sensor (1)’s side but also has a portion at the
magnetic sensor (1)’s lower surface (5a) below the magnetic sensor (1)’s
molded resin casing (5) (¶ 132; Fig. 2).
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Hence, we are not persuaded of reversible error in the rejection of
claims 1, 3, 5–9, and 13 under 35 U.S.C. § 102(b) over Adachi or claim 2
under 35 U.S.C. § 103 over Adachi in view of Kawai.
Rejections of claims 1, 3, 5–8, and 12 under 35 U.S.C. § 102(e)
over Berolini, claim 2 under 35 U.S.C. § 103 over Berolini
in view of Kawai and claim 9 under 35 U.S.C. § 103
over Berolini in view of Adachi
The Appellant argues claims 1, 3, 5–8, and 12 as a group and does not
argue the rejections of claims 2 and 9 (App. Br. 6–7). We therefore limit our
discussion to one claim among claims 1, 3, 5–8, and 12, i.e., claim 1.
Claims 2, 3, 5–9, and 12 stand or fall with that claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Berolini discloses an electronic device comprising a conductive
layer (740) (which the Examiner relies upon as corresponding to the
Appellant’s at least one connection surface having an extension (Ans. 6–7))
at its bottom portion (¶¶ 117, 119; Fig. 7c).
The Appellant argues that Berolini’s conductive layer (740) is an
electromagnetic shield on top of the device rather than a connection surface
on the bottom of the device (App. Br. 7).
Berolini states (¶ 119) and shows (Figs. 7c-e) that the conductive
layer (740) is on the bottom of the device. Because, like the Appellant’s
connection surface (Spec. ¶ 3), Berolini’s conductive layer (740) is
electrically conductive, it appears that, like the Appellant’s connection
surface, it is solderably connectable.
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The Appellant argues that Berolini’s “termination material 768 is not
formed on the bottom surface as required by the claims in the instant
application, but rather on the sides” (App. Br. 6).
The Examiner relies upon Berolini’s conductive layer (740), not the
termination material (768), as corresponding to the Appellant’s connection
surface (Ans. 6–7). The conductive layer (740) is on the device’s bottom
surface (Figs. 7c-e).
We therefore are not convinced of reversible error in the rejection of
claims 1, 3, 5–8, and 12 under 35 U.S.C. § 102(e) over Berolini, claim 2
under 35 U.S.C. § 103 over Berolini in view of Kawai or claim 9 under
35 U.S.C. § 103 over Berolini in view of Adachi.
Rejection of claims 1, 3, 5–9, and 13 under 35 U.S.C. § 103
over Hasebe in view of Adachi
We affirm the rejection of claims 1, 3, 5–9, and 13 under
35 U.S.C. § 103 over Hasebe in view of Adachi for the reason given above
regarding the rejection of those claims under 35 U.S.C. § 102(b) over
Adachi.1
Rejections of claims 12 and 14 under 35 U.S.C. § 103 over
the combined disclosures of Adachi and Hasebe
Claims 12 and 14 require that the extension section does not protrude
outwardly from the side edge of the device.
Adachi discloses leads (4) having an extension section which
protrudes outwardly from the side edge of the device (¶ 131; Fig. 1).

1 Anticipation is the epitome of obviousness. See In re May, 574 F.2d 1082,
1089 (CCPA 1978); In re Skoner, 517 F.2d 947, 950 (CCPA 1975); In re
Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
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Hasebe discloses a semiconductor device comprising leads (7) which
have mounting surfaces (14) on their bottom sides and are below the side
edges of a quadrangular package (2) (col. 7, ll. 54–57). Hasebe states that
the outer ends of “leads 7 extend up to the peripheral edges of the
package 2” (col. 7, ll. 57–59). Hasebe, however, illustrates the leads (7) as
projecting outwardly from the package (2)’s side edge (Figs. 1, 2, 6, 17, 18,
20) and states that the leads “project slightly outwards from rising edges 2a
of the package 2” (col. 8, ll. 7–10) but are “cut at their portions deviated
from the package 2. For example, the projection length is not larger than
0.1 mm from the rising edges 2a” (col. 8, ll. 10–13). In an example,
“length, a, from the tips of leads 7 on one side to the tips of leads 7 on the
opposite side is 6.20 mm, an external size, b, of the package 2 is 6.00 mm”
(col. 15, ll. 40–42; Fig. 21).
The Examiner acknowledges that “Adachi does not disclose wherein
the bottom mounting pad does not protrude outwardly from said respective
side edge of the device” (Ans. 13–14) and argues that Hasebe’s “bottom
terminal pad does not protrude outwardly from said respective side edge of
the device (the bottom mounting pads flat with side edge of the package
resin, fig. 4)” (Ans. 14).
That argument is not persuasive because the Examiner does not
establish that the totality of Hasebe’s disclosures indicate that lead (7) does
not project outwardly from the side edge of the package (2).
The Examiner argues that it would have been prima facie obvious to
one of ordinary skill in the art, in view of Hasebe, to eliminate the projection
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of Adachi’s leads (4) beyond the side edge of the device to better protect the
leads when mounting the device (Ans. 14).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner has not established that it would have been apparent to
one of ordinary skill in the art in view of the applied references that better
protection of Adachi’s leads (4) during mounting is needed or that
eliminating the projection of Adachi’s leads (4) beyond the side edge of the
device would better protect the leads (4). The Examiner has provided mere
speculation to that effect, and such speculation is not a sufficient basis for a
prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA 1962).
The Examiner argues that it would have been prima facie obvious as a
matter of design choice to one of ordinary skill in the art, in view of Adachi,
to provide Hasebe’s leads (7) with an extension having a length in the
direction of the package (2)’s side edge less than that of the side of the
rectangular portion of the leads (7) in that direction (Ans. 17).
The Examiner has not established that the applied references would
have provided one of ordinary skill in the art with an apparent reason to
make that modification. See KSR, 550 U.S. at 418. The Examiner’s mere
assertion that one of ordinary skill in the art would have made that
modification as a matter of design choice is mere speculation, and such
speculation is inadequate for establishing a prima facie case of obviousness.
See Warner, 379 F.2d at 1017; Sporck, 301 F.2d at 690.
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For the above reasons we reverse the rejections of claims 12 and 14
over the combined disclosures of Adachi and Hasebe.
DECISION/ORDER
The rejections of claims 1, 3, 5–9, and 13 under 35 U.S.C. § 102(b)
over Adachi, claims 1, 3, 5–8, and 12 under 35 U.S.C. § 102(e) over
Berolini, claim 2 under 35 U.S.C. § 103 over Adachi or Berolini, in view of
Kawai and claim 9 under 35 U.S.C. § 103 over Berolini in view of Adachi
are affirmed. The rejection of claims 12 and 14 under 35 U.S.C. § 103 over
Adachi in view of Hasebe is reversed The rejection of claims 1, 3, 5–9,
and 12–14 under 35 U.S.C. § 103 over Hasebe in view of Adachi is affirmed
as to claims 1, 3, 5–9, and 13 and reversed as to claims 12 and 14.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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