Ex Parte Na et al

Patent Trial and Appeal Board

Nov 1, 2016

13187380 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/187,380 07/20/2011
22830 7590 11/01/2016
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
FIRST NAMED INVENTOR
Hanjoo Na
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PA5690US 6155
EXAMINER
GRAYBILL, DAVIDE
ART UNIT PAPER NUMBER
2894
MAILDATE DELIVERY MODE
11/01/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANJOO NA and SANTOSH KUMAR
Appeal2015-003844
Application 13/187,380
Technology Center 2800
Before TERRY J. OWENS, MARK NAGUMO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claimed invention is directed toward "small outline
packaging for surface mount integrated circuits" (Spec. i-f 1 ). Claims 1 and 6
are illustrative:
1. A small outline package for supporting a
semiconductor, the package comprising:
a case enclosing the semiconductor; and
an "L" shaped lead-frame connected to the
semiconductor and supported by the case, the lead-frame
Appeal2015-003844
Application 13/187,380
having a horizontal portion attached to a substrate and a vertical
portion that extends vertically adjacent to a side of the case to
create a separation between the case and the horizontal portion,
the separation providing clearance for mounting a device in a
footprint of the case.
6. An electronic device comprising:
an integrated circuit;
a case enclosing the integrated circuit;
an "L" shaped lead in electronic communication with the
integrated circuit, a vertical portion of the lead extending from
an edge of the case about perpendicular to a first surface of the
case, a horizontal portion of the lead extending inward about
parallel to the first surface of the case; and
a separation between the first surface of the case and the
horizontal portion of the lead.
Derouiche
Tsuji
The References
us 5,754,408
US 6,603,404B1
May 19, 1998
Aug. 5, 2003
Nov. 19, 2009 Tsui US 2009/0283919 Al
The Rejections
The claims stand rejected as follows: claims 1, 2, 4--8, 10-15, 17,
and 18 under 35 U.S.C. § 102(b) over Derouiche, claims 3, 9, and 16 under
35 U.S.C. § 103 over Derouiche, claims 4 and 19 under 35 U.S.C. § 103
over Derouiche in view of Tsui, claims 1-18 under 35 U.S.C. § 103 over
Derouiche in view of Tsuji and claims 4 and 19 under 35 U.S.C. § 103 over
Derouiche in view of Tsuji and Tsui.
OPINION
We reverse the rejections.
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Application 13/187,380
Rejection under 35 U.S. C. § 102(b)
"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).
We need address only the independent claims (1, 6, and 12). Claims 1
and 12 require an L-shaped lead1 having a vertical portion extending
vertically adjacent to a side of a case. Claims 6 and 12 require an L-shaped
lead having a horizontal portion extending inwardly about parallel to a first
surface of a case (claim 6) or package (claim 12).
Derouiche discloses a pair of integrated circuit packages ( 50a, 50b)
either 1) both having gull-wing leads (52a, 52b) extending therefrom
outwardly, then vertically, then outwardly, or 2) a top package (50a) having
such gull-wing leads (52a) and a bottom package (50b) having J-shaped
leads (col. 3, 11. 60-62; col. 4, 11. 63---66; Figs. 7, 9, 13).2
The Examiner finds that Derouiche discloses leads having "a vertical
portion (of 112a, illustrated in figure 13, not labeled) that extends vertically
adjacent to a side of the case" (Ans. 3).
"' [D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.'" In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). The Appellants illustrate their
1 The Appellants give the terms "lead frame" and "lead" the same meaning
(Spec. ii 3).
2 The Examiner states that "Derouiche is not applied in the examiner's
answer for a disclosure of' J' shaped leads" (Ans. 27).
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Application 13/187,380
leads' vertical portion (206, 406, 506) as being against the side of the
case (102, 202) (Figs. 2-5), and contrast that vertical portion with a
gull-wing lead (104)'s vertical portion extending from the case outwardly
then vertically (Spec. i-f 23; Fig. 4). The Examiner does not establish that the
broadest reasonable interpretation of the Appellants' claim term "vertically
adjacent" consistent with that disclosure includes the vertical portion of
Derouiche's gull-wing leads.
Regarding the claim requirement that the lead has a horizontal portion
extending inwardly the Examiner finds that "there is a frame of reference
wherein the horizontal portion of the lead of Derouiche is oriented extending
inward" (Ans. 29-30).
That vague finding does not establish that Derouiche discloses a lead
having an inwardly-extending horizontal portion.
The Examiner finds that "Derouiche references more than leads of
gull-wing shape and J shape, e.g., the scope of the Derouiche claim 1 lead
shape is not limited to a gull-wing and/or J shape lead" (Ans. 23).
The Examiner does not establish that the lack of a recitation of a
gull-wing shaped lead or a J-shaped lead in that claim is a disclosure of a
lead which extends vertically adjacent to a side of a case or has a horizontal
portion extending inwardly.
Thus, the Examiner does not establish that Derouiche discloses every
limitation of the rejected claims, either expressly or under principles of
inherency. We therefore reverse the rejection under 35 U.S.C. § 102(b).
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Application 13/187,380
Rejections under 35 U.S.C. § 103
We need address only the independent claims (1, 6, and 12). 3
Tsuji discloses a light emitting display device having leads (1) which
can be bent perpendicularly outwardly or, to enhance space efficiency on a
mounting board or to enable arrangement of devices laterally closer to each
other, can be bent perpendicularly inwardly (col. 7, 11. 5-9; col. 12, 11. 40-
49; Figs. la---c, lOa, lla, llb).
The Examiner finds that "one skilled in the art would recognize, and
as cited, Tsuji discloses, that the horizontal portion of the lead of Tsuji and
the horizontal portion of a lead substantially similar to that of Derouiche (see
figure lOa) are alternatives and/or equivalents known in the art" (Ans. 12-
13) and concludes that 1) "it would have been obvious to substitute/combine
the horizontal portion of the lead of Tsuji for/with the horizontal portion of
the lead of Derouiche because it would facilitate provision of the horizontal
portion of the lead ofDerouiche, and substitution/combination of a known
element based on its suitability for its intended use has been held to be prima
facie obvious" (Ans. 12), 2) "it would have been obvious to
substitute/combine the horizontal portion of the lead of Tsuji with the
horizontal portion of the lead of Derouiche because the substitution of, or
combination with, one known alternative element for or with another would
have yielded predictable results to one of ordinary skill in the art at the time
of the invention" (Ans. 13-14) and 3) "it would have been obvious to
3 With respect to the dependent claims the Examiner does not rely upon
Derouiche for any obviousness rationale regarding the above-discussed
limitations in the independent claims or rely upon Tsui for any disclosure
that remedies the deficiency in the references applied to the independent
claims (Ans. 14--23).
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Appeal2015-003844
Application 13/187,380
combine this [sic, the] disclosure of Tsuji with the disclosure of Derouiche
because, as disclosed by Derouiche as cited, it would desirably lead to
enhanced space-efficiency on the board" (Ans. 14).
The Examiner provides no support for the finding that Derouiche' s
and Tsuji's lead configurations were known alternatives or equivalents in the
art, and the Examiner's conclusions do not take into account the differences
between Derouiche's integrated circuit package and Tsuji's light emitting
device and establish that, regardless of those differences, Tsuji's disclosure
would have led one of ordinary skill in the art to modify Derouiche' s leads
such that a horizontal portion thereof extends inwardly or a vertical portion
thereof is adjacent to a side of the package's case.
Hence, the Examiner has not set forth a factual basis which is
sufficient to support a prima facie case of obviousness of the Appellants'
claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
("A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the
invention from the prior art"). Consequently, we reverse the rejections
under 35 U.S.C. § 103.
DECISION/ORDER
The rejections of claims 1, 2, 4--8, 10-15, 17, and 18 under
35 U.S.C. § 102(b) over Derouiche, claims 3, 9, and 16 under
35 U.S.C. § 103 over Derouiche, claims 4 and 19 under 35 U.S.C. § 103
over Derouiche in view of Tsui, claims 1-18 under 35 U.S.C. § 103 over
Derouiche in view of Tsuji and claims 4 and 19 under 35 U.S.C. § 103 over
Derouiche in view of Tsuji and Tsui are reversed.
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It is ordered that the Examiner's decision is reversed.
REVERSED
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