Ex parte KURIYAMA

Board of Patent Appeals and Interferences

Sep 15, 1999

08267433 (B.P.A.I. Sep. 15, 1999)

Application for patent filed June 29, 1994.1
1
Paper No. 20
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte CHOJIRO KURIYAMA
______________
Appeal No. 1997-1336
Application 08/267,4331
_______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and RUGGIERO, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-11. Pending claims
12-14 stand withdrawn from consideration as being directed to
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Application 08/267,433
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a nonelected invention. An amendment after final rejection
was filed on May 20, 1996 but was denied entry by the
examiner.
The disclosed invention pertains to a surface mounting
type electronic component. More particularly, an electronic
element and a safety fuse wire are connected together and
enclosed within a resin package. One end of the safety fuse
wire is exposed at a face of the resin package and is covered
by a layer-like terminal in electrical connection with the
exposed end of the fuse wire.
Representative claim 1 is reproduced as follows:
1. A surface mounting type electronic component
comprising:
an electronic element;
a safety fuse wire having one end electrically connected
to the electronic element; and
a resin package enclosing the electronic element together
with the fuse wire;
wherein the other end of the fuse wire is exposed at a
face of the resin package, said face of the resin package
together with the exposed end of the fuse wire being covered
by a layer-like terminal in electrical connection with the
exposed end of the fuse wire.
The examiner relies on the following references:
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Application 08/267,433
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Wislocky 3,566,003 Feb. 23, 1971
Bougger 4,926,542 May 22, 1990
Breen et al. (Breen) 5,296,833 Mar. 22, 1994
Yamane et al. (Yamane) 0 306 809 Mar. 15, 1989
(European Application)
Neal (European Application) 0 392 087 Oct. 17, 1990
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The following rejections have been made by the examiner:
1. Claims 1, 2, 6, 7, 9 and 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Yamane in view of Bougger.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Yamane in view of
Bougger and further in view of Wislocky.
3. Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Yamane in view of Bougger
and further in view of Neal.
4. Claims 8 and 11 stand rejected under 35 U.S.C. § 103
as being unpatentable over the teachings of Yamane in view of
Bougger and further in view of Breen.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
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Application 08/267,433
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into consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1-11. Accordingly, we affirm.
We consider first the rejection of claims 1, 2, 6, 7, 9
and 10 under 35 U.S.C. § 103 as unpatentable over the
teachings of Yamane in view of Bougger. These claims stand or
fall together except for claim 7 which is argued separately
[brief, page 12]. As a general proposition in an appeal
involving a rejection under 35 U.S.C. § 103, an examiner is
under a burden to make out a prima facie case of obviousness.
If that burden is met, the burden of going forward then shifts
to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d
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Application 08/267,433
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1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
At the outset, we note that appellant’s initial argument
is that the examiner has failed to make out a prima facie case
of obviousness. Appellant should not confuse the prima facie
case with the ultimate determination of the relative
persuasiveness of the substantive arguments in support of the
rejection. In order to satisfy the burden of presenting a
prima facie case of obviousness, the examiner need only
identify the teachings of the references, identify the
differences between the prior art and the claimed invention,
and provide a reasonable analysis of the obviousness of the
differences which an artisan might find convincing in the
absence of rebuttal evidence or arguments.
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With respect to independent claim 1, the examiner notes
that Yamane teaches the claimed invention except for the fuse
wire being exposed or extended from a face of the resin
package. The examiner cites Bougger as a teaching that it was
conventional to bond electronic components at the face of a
resin package. The examiner concludes that it would have been
obvious to extend the Yamane fuse element to the face of the
resin package to implement an electrical connection as taught
by Bougger [final rejection, pages 3-4]. In our view, the
examiner’s analysis is sufficiently reasonable that we find
that the examiner has satisfied the burden of presenting a
prima facie case of obviousness. That is, the examiner’s
analysis, if left unrebutted, would be sufficient to support a
rejection under
35 U.S.C. § 103. The burden is, therefore, upon appellant to
come forward with evidence or arguments which persuasively
rebut the examiner’s prima facie case of obviousness.
Appellant has presented several substantive arguments in
response to the examiner’s rejection. Therefore, we consider
obviousness based upon the totality of the evidence and the
relative persuasiveness of the arguments.
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Appellant and the examiner do not disagree on what is
specifically disclosed by Yamane and Bougger. Appellant
argues that there is no suggestion to replace the axial leads
16 of Bougger with a wire fuse as claimed. Appellant also
argues that the applied prior art would have suggested to the
artisan that the fuse element of a fused, surface mounting
type electronic component must be encapsulated by an
insulating material [brief, pages 13-14].
It should be noted that the examiner does not propose
to replace Bougger’s axial leads with a fuse wire. Rather,
the examiner proposes to make the electrical connection
between a cathode lead and a fuse element of a surface
mounting type capacitor occur at the face of a resin package
which is where the electrical connection in Bougger is made.
Thus, the examiner in considering the scope of claim 1 has
considered the obviousness of extending the contact point
between fuse element 31 and cathode terminal 23 of Yamane to
the edge of resin package 51 to make an edge electrical
contact as taught by Bougger.
We agree with the examiner that the artisan would have
appreciated the obviousness of making the electrical
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connection between the fuse element and cathode terminal of
Yamane occur at the edge of the resin package as suggested by
the Bougger electrical connection. The artisan would have
recognized the obviousness of connecting the fuse element 31
and the cathode terminal 23 of Yamane at any point along
terminal 23, including the point where the edge of package 51
contacts terminal 23.
Appellant’s arguments seem to suggest that the claimed
fuse wire should be considered as different from other
electronic components. We are not persuaded by appellant’s
bare assertion that teachings which might apply to other
electronic components would not apply to a fuse wire as
claimed. There is nothing in this record to suggest that an
apparent obvious movement of the connection point between a
fuse element and a cathode terminal would not equally apply to
a fuse wire. Appellant is not precluded from presenting
additional evidence or arguments which might provide secondary
indicia of the nonobviousness of the claimed subject matter.
Our decision simply confirms that, on the record before us,
the invention as broadly recited in claim 1 would have been
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obvious to the artisan for the reasons asserted by the
examiner.
For all the reasons discussed above, we sustain the
rejection of claim 1 as proposed by the examiner. We also
sustain the rejection of claims 2, 6, 9 and 10 which are
grouped with claim 1. Claim 7 recites that the end of the
fuse wire projects slightly from the face of the resin
package. The connection in Bougger relies on such a slight
projection from the face of the resin package [note lead 44].
Therefore, we also sustain the rejection of claim 7.
With respect to the different rejections of claims 3-5,
appellant makes no additional arguments in support of the
patentability of these claims, and instead, appellant relies
on the arguments made with respect to claim 1 [brief, pages
15-16]. Since we have sustained the examiner’s rejection of
claim 1 and since no additional arguments are presented, we
also sustain the rejection of claims 3-5.
Claims 8 and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Yamane in view of Bougger and further in
view of Breen. Only claim 8 is argued by appellant. Claim 8
recites that the end of the fuse wire is flush with the face
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Application 08/267,433
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of the resin package. The examiner cites Breen for teaching a
connection in which the ends of a fuse are flush with the
enclosing package [final rejection, page 5]. Appellant argues
that Breen does not disclose a fuse element which has one end
connected to an electronic component and another end flush
with a resin package [brief, page 17]. This argument is not
persuasive because Yamane is relied on for the teaching of
connecting a fuse element between an electronic component and
a cathode terminal. Breen is relied on only to show that an
electrical connection can be made to a fuse by connecting it
at the flush surface of an enclosing package. When we
consider the scope of claim 8, we agree with the examiner that
the invention as set forth therein would have been obvious to
the artisan in view of the teachings of Yamane, Bougger and
Breen. Therefore, we sustain the rejection of claims 8 and 11
as proposed by the examiner.
In summary, we have sustained each of the examiner’s
rejections of the claims. Therefore, the decision of the
examiner rejecting claims 1-11 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
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§ 1.136(a).
AFFIRMED
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph F. Ruggiero )
Administrative Patent Judge )

JS/cam
Appeal No. 1997-1336
Application 08/267,433
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Michael D. Bednarek, Esq.
Crowell & Moring, LLP
1001 Pennsylvania Avenue, N.W.
Washington, DC 20004-2595