Ex parte Kobayashi

Board of Patent Appeals and Interferences

Jan 21, 1999

08243839 (B.P.A.I. Jan. 21, 1999)

Attorney docket no. P94,0978.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This decision is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MIKIYA KOBAYASHI
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Appeal No. 96-3603
Application No. 08/243,8391
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ON REHEARING
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Before THOMAS, JERRY SMITH, and TORCZON, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant's request on rehearing for withdrawal (Paper
No. 19 at 2) of our prior decision on appeal (Paper No. 18) is
denied.
BACKGROUND
Appellant discloses a semiconductor device using fuses or
diodes to protect the remaining circuitry from electrostatic
damage. (Paper No. 1 at 2-3 and 5-6.) In the decision under
rehearing, we reversed two rejections based on our finding
that a resistor would not meet the claim requirement for an
"opening structure". We affirmed, however, the rejection of
Appeal No. 96-3603 Page 2
Application No. 08/243,839
all claims under 35 U.S.C. § 103 in view of Appellant's
admitted prior art (Figures 5 and 6) and:
Ukai et al. (Ukai) 5,068,748 26 Nov. 1991
Our conclusion of obviousness was based in part on our finding
that a diode, such as those taught in Ukai, would meet the
claim requirement for an opening structure. According to
Appellant,
The Board then asserted that it would have been
obvious to combine the diodes of Ukai with the
structure of the admitted prior art in order to
result in the claimed invention. The fundamental
error in this analysis is that Ukai does not teach
or suggest the use of an "opening structure" as
claimed because diodes, which are structures that
prevent the transmission of electrical current in a
single direction, are not suggestive of opening
structures that prevent the transmission of
electrical current in either direction.
(Paper No. 19 at 1.) Note that Appellant is not contesting
the combination but rather the finding that diodes are opening
structures and the claim construction that permits that
finding.
DISCUSSION
As we noted in our decision (Paper No. 18 at 2), during
prosecution a claim must be construed as broadly as is
reasonably possible in light of the disclosure and the related
prior art. E.g., In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). This practice reflects the broad
Appeal No. 96-3603 Page 3
Application No. 08/243,839
latitude applicants have during prosecution to amend their
claims to clarify their intent and to avoid prior art. Id.;
In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed.
Cir. 1997).
The starting point for claim construction is always the
language of the claim itself. Comark Comm. Inc. v. Harris
Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed. Cir.
1998); Desper Prods. Inc. v. QSound Labs. Inc., 157 F.3d 1325,
1332, 48 USPQ2d 1088, 1093 (Fed. Cir. 1998). Appellant stated
that all of the appealed claims stood or fell together.
(Paper No. 11 at 3.) Pursuant to 37 CFR § 1.192(c)(7), we
selected claim 4 as representative of the group. (Paper No.
18 at 1-2.) Claim 4 requires "an opening structure in said
connection pattern." The claim itself does not define
"opening structure" beyond the functional limitation that it
open something at sometime and the structural limitation that
it be in the connection pattern. Nothing in the language of
claim 4 excludes a diode as an opening structure or requires
the use of a fuse pattern. Both the specification and the
related art support our construction that an opening structure
may be a diode.
In the specification, Appellant explains the opening
structure as follows:
Appeal No. 96-3603 Page 4
Application No. 08/243,839
The present invention is characterized in that the
connection pattern has opening structures for
dealing with an external overcurrent provided on
both sides of the division lines. Specifically[,]
the opening structures are constituted by fuse
patterns. Alternatively, the opening structure may
be constituted by diodes having a reduced gate
width.
(Paper No. 1 at 6, emphasis added; see also Paper No. 1 at 11
(explaining how the diodes open in response to an overcurrent
before the transistors of the internal circuit are damaged).)
The genus of opening structures is bounded by the fact that
each "must have a property such that predetermined
conductivity is maintained unless an overcurrent is applied
and it opens when such an overcurrent is applied." (Paper No.
1 at 12.) As indicated, however, a diode meets these
requirements. The specification expressly contradicts
Appellant's argument on rehearing that the opening structure
cannot be a diode.
Ukai also supports our construction of opening
structures. Appellant has not contested our finding (Paper
No. 18 at 4) that Ukai is directed to the same problem (see
Ukai at 2:20-3:36), i.e., protecting display circuits from
electrostatic discharge. Ukai uses coupling elements 42 in
connection patterns between two guard rings 31, 32 to protect
display circuits from static electricity. (4:49-60.) The
Appeal No. 96-3603 Page 5
Application No. 08/243,839
coupling elements may be non-linear elements, e.g., diodes.
(4:37-44.) As we noted in our decision (Paper No. 18 at 4),
Appellant's brief on appeal did not address these non-linear
elements. Ukai's diodes shunt static discharge from
terminals 20 to the internal short circuiting bus 32. As
Appellant notes (Paper No. 19 at 1), however, the orientation
of the diode determines whether the diode appears to be an
open circuit or a short circuit in the presence of a high
voltage. Claim 4 does not specify a direction in which the
opening structure must be open, nor does it exclude an
internal short-circuiting bus to which static discharge may be
shunted as in Ukai.
Appellant belatedly refers to claim 13 on rehearing
(Paper No. 19 at 2). Claim 13 was not separately argued in
the original appeal nor is its use now consistent with
Appellant's election to have the claims stand or fall
together. The limitations of claim 13 cannot be read into the
other claims. In any case, Appellant does not explain how the
limitations of claim 13 are inconsistent with our construction
of claim 4. Nothing in claim 13 excludes diodes, requires a
fuse, or specifies any direction of conductance.
Appeal No. 96-3603 Page 6
Application No. 08/243,839
Fundamentally, we disagree with Appellant's construction
of his claim. Appellant urges that
the use of a diode that conducts in a given
direction neither teaches nor suggests the use of a
fuse that will conduct in neither direction upon the
occurrence of an overcurrent condition but that will
conduct in either direction prior to such an event.
(Paper No. 19 at 2.) Assuming, arguendo, the truth of that
statement, it does not represent the entire scope of the
subject matter that Appellant has claimed.
DECISION
Appeal No. 96-3603 Page 7
Application No. 08/243,839
Appellant's request on rehearing for withdrawal of our
prior decision (Paper No. 18) is
DENIED
JAMES D. THOMAS )
Administrative Patent Judge )
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) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
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RICHARD TORCZON )
Administrative Patent Judge )
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