Ex parte MANDAI et al.

Board of Patent Appeals and Interferences

Dec 4, 1998

08054074 (B.P.A.I. Dec. 4, 1998)

Application for patent filed April 27, 19931
1
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(2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAAKI MANDAI, HITOSHI TAKEUCHI,
YUTAKA SAITO, and TOMOYUKI YOSHINO
_____________
Appeal No. 96-1406
Application 08/054,0741
______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT, and FLEMING, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
Appeal No. 96-1406
Application No. 08/054,074
2
from the examiner’s rejection of claims 1, 4-22, 30 and 32-34,
which constitute all the claims remaining in the application.
An amendment after final rejection was filed on June 14, 1995
and was entered by the examiner.
The disclosed invention pertains to a semiconductor
sensor device in which a plurality of semiconductor sensor
chips are disposed adjacent to one another. A plurality of
coupling chips are provided for effecting mechanical and
electrical connection between adjacent sensor chips.
Representative claim 1 is reproduced as follows:
1. A semiconductor sensor device comprising
a plurality of semiconductor sensor chips disposed
adjacent one another; and
a plurality of coupling chips for mechanically and
electrically connecting said sensor chips together, a
respective coupling chip mechanically coupling a respective
pair of adjacent sensor chips together and having means for
electrically connecting said adjacent sensor chips to one
another so that said sensor chips form a single semiconductor
sensor device.
The examiner relies on the following references:
LeBlanc (European) 0,424,062 Apr. 24, 1991
Hatada et al. (Hatada), “LED array modules by New method
Micron Bump Bonding Method,” IEEE/CHMT IEMT Symposium,
September 1989, pages 230-233.
Appeal No. 96-1406
Application No. 08/054,074
3
Claims 1, 4-22, 30 and 32-34 stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner
offers Hatada in view of LeBlanc.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection 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 not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1, 4-22, 30 and 32-34. Accordingly, we
reverse.
Appeal No. 96-1406
Application No. 08/054,074
4
With respect to independent claim 1, the examiner
basically takes the position that Hatada teaches the invention
of claim 1 except for the use of sensor chips. The examiner
cites LeBlanc as a teaching of connecting a plurality of
sensor chips in side-by-side relation to each other. The
examiner concludes that it would have been obvious to the
artisan to attach the sensor chips of LeBlanc together in the
manner taught by Hatada [answer, pages 3-4].
Appellants argue that neither of the applied
references discloses a device having a plurality of coupling
chips, with each coupling chip mechanically coupling a
respective pair of adjacent sensor chips together and having
means for electrically connecting the adjacent sensor chips to
one another as recited in independent claim 1. Appellants
argue that each of Hatada and LeBlanc uses a single substrate
to mechanically interconnect the circuit chips to one another.
Thus, appellants argue that the plurality of coupling chips
recited in claim 1 are not taught or suggested by Hatada and
LeBlanc, either singly or in combination [brief, pages 4-8].
The examiner responds that the plurality of semiconductor
integrated circuit chips on the support board act as “a
Appeal No. 96-1406
Application No. 08/054,074
5
plurality of coupling chips” for the LSI drivers and LED chips
of Hatada’s array module [answer, page 5].
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 is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the
prior art as a whole or knowledge generally available to one
having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed.
Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
Appeal No. 96-1406
Application No. 08/054,074
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examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
As indicated by the cases just cited, the examiner has
at least two responsibilities in setting forth a rejection
under
35 U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art. In our view, the
examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
We agree with appellants that neither Hatada nor
LeBlanc teaches the claimed plurality of coupling chips as
recited in claim 1. It is also clearly apparent that the
collective teachings of these references cannot suggest
something which is not apparent from either of the references.
There simply is no suggestion in the applied prior art that a
Appeal No. 96-1406
Application No. 08/054,074
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plurality of semiconductor sensor chips should be connected by
coupling chips as recited in claim 1.
The examiner seems to have accepted that the glass
substrate of Hatada and LeBlanc cannot be considered a
plurality of coupling chips by now seeking to call the
integrated circuit chips on the support board as the plurality
of coupling chips. We cannot follow this reasoning at all.
There is no way that the integrated circuit chips on the
support board of Hatada or LeBlanc can be said to mechanically
connect adjacent sensor chips to each other.
The collective teachings of Hatada and LeBlanc do not
support the rejection proposed by the examiner. Although we
cannot say whether there is better prior art available than
the prior art applied by the examiner, we can say that the
evidence of obviousness produced by the examiner fails to
support the rejection of independent claim 1. Therefore, the
applied prior art also does not support the rejection of the
claims which depend from claim 1.
The decision of the examiner rejecting claims 1, 4-22,
Appeal No. 96-1406
Application No. 08/054,074
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30 and 32-34 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
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