Ex Parte Ker et al

Board of Patent Appeals and Interferences

Jun 11, 2007

09944171 (B.P.A.I. Jun. 11, 2007)

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for publication and is not binding precedent of the Board.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 MING-DOU KER, HUN-HSIEN CHANG, and
WEN-TAI WANG
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Appeal 2007-1095
Application 09/944,171
Technology Center 2800
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Decided: June 11, 2007
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Before JOSEPH L. DIXON, ALLEN R. MACDONALD, and
JAY P. LUCAS, 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 1-17.

We AFFIRM-IN-PART.
Appeal 2007-1095
Application 09/944,171

BACKGROUND

Appellants’ invention relates to ElectroStatic Discharge (ESD)
protection circuit with very low input capacitance for high-frequency I/O
ports. An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. An electrostatic discharge (ESD) protection circuit
with low input capacitance, suitable for an I/O pad, comprising
a plurality of diodes, stacked and coupled between a first power
line and the I/O pad, wherein during normal operation, the
diodes are reverse-biased, and, when an ESD event occurs
between a second power line and the I/O pad, the diodes are
forward-biased to conduct ESD current.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
WATT US 5,623,156 Apr. 22, 1997
JUN US 6,406,948 B1 Jun. 18, 2002
REJECTIONS
Claims 1, 13, 14, 16 and 17 are rejected under 35 U.S.C. 102(e) as
being anticipated by Jun.
Claims 2-4 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Jun.
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Claims 5-12 and 15 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Jun as applied to claim 1 above, and further in view of
Watt.

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 Mar. 22, 2006) for the
reasoning in support of the rejections, and to Appellants’ Brief (filed Jan. 4,
2006) and Reply Brief (filed Apr. 21, 2006) for the arguments thereagainst.
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.

35 U.S.C. § 102
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. 1987). 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, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), it is only necessary for the claims to “‘read on’
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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 v. Dart Indus., Inc., 726 F.2d 724, 726-727, 220
USPQ 841, 842-843 (Fed. Cir. 1984).
From our review of the Examiner’s rejection of independent claim 1,
we find that the Examiner has at least established a requisite initial showing
of anticipation of independent claim 1 and shown that Fig. 10 of Jun clearly
teaches all of the limitations as recited in independent claim 1. Therefore,
we look to Appellants’ arguments to show error in the Examiner’s showing.
Appellants state “Admittedly, Fig. 10 of the patent itself could be a
basis for this rejection.” But Appellants contend that Fig. 10 contradicts the
remaining parts of the patent specification (Br. 5). Appellants speculate that
the symbols used in the figure have been used to indicate a large area of
diodes instead of a stacked arrangement (Br. 5). Appellants then go through
a lengthy analysis of the remainder of Jun patent and circuitry of Fig. 9.
While the analysis appears to be accurate, it is with reference to a mere two
dimensional slice of a larger three dimensional circuit which would be used
to function as depicted in Fig. 10 (Br. 5-8). While we find Appellants’
analysis helpful, we cannot agree that Appellants’ speculation on the
operation of the circuit in Fig. 9 is determinative that the clear and definitive
teachings of Fig. 10 are in error. While we do find the text of Jun addressing
the circuit of Fig. 10 to be very brief, the circuit on its face is clear and the
brief description of the circuit does not identify any clear error in the circuit
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diagram. Therefore, we cannot agree with Appellants that the Examiner has
erred in rejecting independent claim 1, and we will sustain the rejection of
independent claim 1.
With respect to dependent claim 13, Appellants contend that Jun does
not teach the claimed “the diode includes a PN junction diode formed by a
PN junction between a first source/drain and a substrate of a MOS.” The
Examiner maintains that the Examiner has interpreted the claim broadly and
that the PN junction and that the PN junction is in a location between the
source/drain and the substrate. We agree with the Examiner that the PN
junction is in the claimed location. Appellants may have intended that the
PN junction is formed with those recited elements, but the language is broad
enough to be reasonably interpreted as done by the Examiner. Therefore,
Appellants' argument is not persuasive, and we will sustain the rejection of
dependent claim 13 and dependent claims 12-17 included therewith by
Appellants.
35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103,
the Examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
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knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness’ . . . . [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l v.
Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting
In re Kahn, 441 F.3d at 988 (Fed. Cir. 2006)).
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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, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998). Therefore, we look to the limitations as recited and disputed in
dependent claim 2. Claim 2 recites “each diode is a PN junction diode
formed by placing a doped area of a first conductivity type in a first well of a
second conductivity type, a deep well of the first conductivity type formed
under the first well to isolate the first well from a substrate of the second
conductivity type.”
With respect to dependent claim 2, the Examiner maintains that Jun
teaches the use of a well within a well (Answer 13) and that it would have
been obvious to one skilled in the art at the time of the invention. While we
agree with the Examiner that Jun suggests a well within a well, the Examiner
has not provided a convincing line of reasoning why it would have been
obvious to one skilled in the art at the time of the invention to have used the
specific combination of four wells as recited in dependent claim 2.
Therefore, we do not find that the Examiner has established the requisite
initial showing required under 35 U.S.C. § 103(a). Therefore, we cannot
sustain the rejection of dependent claim 2 and claim 3-4 that depend
therefrom.
With respect to dependent claim 5, Appellants argue that the clamp
circuits of Watt are not between the two power lines (Br. 9). The Examiner
maintains that the clamp circuit does extend between two power lines
(Answer 13-14). We agree with both the Examiner and with Appellants, but
it is the language of dependent claim 5 which controls. Here, the Examiner
has relied upon a general teaching of clamp circuits between two power lines
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which we find to teach and fairly suggest the invention as claimed. We note
that the language of dependent claim 5 does not specifically refer back to
“said first power line” and “said second power line” as recited in
independent claim 1. Rather, dependent claim 5 again introduces “a first
power line” and “a second power line.” While Appellants may have
intended the specific reference to the previously recited power lines, we
cannot import this limitation into the express language of the claim.
Therefore, we cannot find that the Examiner erred, and we will sustain the
rejection of dependent claim 5 and claims 6-12 grouped therewith by
Appellants (Br. 9).
With respect to dependent claim 12, Appellants indicate that the
Examiner has not indicated why it would have been obvious to one skilled in
the art at the time of the invention to connect the gate in the claimed manner
(Br. 9). The Examiner further details the reason in the responsive arguments
at page 14 of the Answer and Appellants have not provided further
argument/comment. Therefore, we accept the Examiner further discussion
and sustain the rejection of dependent claim 12.
We note that Appellants seem to argue dependent claim 15 at page 9
of the Brief, but claim 15 is not included in the heading for the section and
had further been grouped with claims 13-17. Therefore, we have already
addressed this claim above.
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CONCLUSION
To summarize, we have sustained the rejection of claims 1, 13, 14, 16,
and 17 under 35 U.S.C. § 102; we have reversed the rejection of claims 2-4
under 35 U.S.C. § 103(a); and we have sustained the rejection of claims 5-12
and 15 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
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AFFIRMED-IN-PART

eld

BIRCH STEWART KOLASCH & BIRCH
PO BOX 747
FALLS CHURCH, VA 22040-0747
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