Ex Parte Otremba et al

Patent Trial and Appeal Board

Feb 19, 2019

15176952 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/176,952 06/08/2016 Ralf Otremba
57579 7590 02/21/2019
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 Crescent Green
Suite 200
CARY, NC 27518
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.
1012-1358/2015P50678 1811
us
EXAMINER
BRASFIELD, QUINTON A
ART UNIT PAPER NUMBER
2814
NOTIFICATION DATE DELIVERY MODE
02/21/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF OTREMBA, EDWARD FUERGUT,
CHRISTIAN KASZTELAN, HSIEH TING KUEK,
TECK SIM LEE, SANJA Y KUMAR MURUGAN, and
LEE SHU ANG WANG
Appeal2018-006144
Application 15/176,952
Technology Center 2800
Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-006144
Application 15/176,952
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1, 3-17, 19, and 22-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to electronic devices with increased creepage
distances. Appellants' Specification filed June 8, 2016 ("Spec.") ,r 1. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A device, comprising:
an encapsulation material having a top main surface
opposite a bottom main surface, a first end surface opposite a
second end surface, and a first side surface opposite a second side
surface, the first and second side surfaces extending between the
first and second end surfaces, the first and second end surfaces
and the first and second side surfaces forming an edge face of the
encapsulation material that extends between the top and bottom
main surfaces;
a first lead and a second lead protruding out of the first end
surface of the encapsulation material;
a recess extending into the first end surface of the
encapsulation material and arranged between the first lead and
the second lead; and
a first elevation arranged on the first end surf ace of the
encapsulation material, wherein the first lead protrudes out of the
first elevation,
wherein no leads protrude out of the recess,
1 The real party in interest is identified as "Infineon Technologies AG, a
German company." Appeal Brief of February 23, 2018 ("Br."), 2.
2 Final Office Action of September 7, 2017 ("Final Act."). In this opinion,
we also refer to the Examiner's Answer of March 30, 2018 ("Ans.") and the
Reply Brief of May 25, 2018 ("Reply Br.").
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Application 15/176,952
wherein a centerline extends through the first and second
end surfaces of the encapsulation material and in parallel with
the top and bottom main surfaces of the encapsulation material,
wherein the first elevation has a top main surface disposed
closer to the centerline than the top main surface of the
encapsulation material, wherein the first elevation has a bottom
main surface disposed closer to the centerline than the bottom
main surface of the encapsulation material,
wherein the first elevation is disposed closer to the first
side surface of the encapsulation material than the second side
surface of the encapsulation material,
wherein the first elevation is spaced inward from the first
side surface of the encapsulation material so that there is a step
between the first elevation and the first side of the encapsulation
material.
Claims Appendix (Br. 14--15).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Yasui
Son et al. ("Son")
Otremba
us 4,617,585
US 7,199,461 B2
us 2013/0341777
REJECTIONS
Oct. 14, 1986
Apr. 3, 2007
Dec. 26, 2013
Claims 1, 3-12, 17, 19, and 22-25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yasui in view of Son. Final Act. 3.
Claims 13-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yasui in view of Son, and in further view of Otremba.
Final Act. 14.
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Application 15/176,952
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's § 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection of Claim 13
Appellants argue that the Examiner reversibly erred in rejecting
claim 1 because Son does not teach or suggest a first elevation that "has a
top main surface disposed closer to the centerline than the top main surface
of the encapsulation material, wherein the first elevation has a bottom main
surface disposed closer to the centerline than the bottom main surface of the
encapsulation material." Br. 5---6. Appellants argue that while the bottom
surface of the first elevation of the prior art lead 122 may be disposed either
equidistant to the recited centerline or closer/further than the center line, it is
"most likely" that the bottom surface is disposed equidistant to the center
3 Appellants do not present separate arguments for claims 3, 4, 7, 10, 11, 13-
17, 19, and 22-25 and they stand or fall with claim 1. Br. 4--8; see also
37 C.F.R. § 4I.37(c)(1)(iv)(2013).
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Application 15/176,952
line. Id. Appellants do not provide factual evidence in support of this
argument. Id.
The Examiner, on the other hand, finds that Figure 8D of Son teaches
the limitations at issue and annotates the drawing which is reproduced
below:
FIG. SD
T(.p ~~~J:N.
!J,l~tf~r;:e e.,~
:!iU13!Kh"
~1,::tlli;l fl NJ
Annotated Figure 8D of Son, depicting a modification of its semiconductor
package (Ans. 6).
Instead of identifying reversible error in the Examiner's finding with
regard to Figure 8D of Son, Appellants respond that Son's Figure 2 shows
that other limitations of claim 1 are not met. Reply Br. 3 (arguing that
Figure 2 of Son does not teach or suggest that "the first elevation is disposed
closer to the first side surface of the encapsulation material than the second
side surface of the encapsulation material" and that "the first elevation is
spaced inward from the first side surface of the encapsulation material so
that there is a step between the first elevation and the first side of the
encapsulation material").
Son's Figure 2 illustrates "prior art" whereas Figure 8D is an
embodiment of what Son deems as the invention. Son Figs 2, 8D; see also
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Appeal2018-006144
Application 15/176,952
Son 3 :30-34 ( describing Figures 1 and 2 as "a conventional semiconductor
package"), 42--46 (describing Figures 6-9A as "the present invention").
Appellants recognize that "Fig. 2 does not represent a side view that
corresponds to Son's Fig. 8D embodiment" but do not explain why Figure 2
"nonetheless reproduces the same for illustration purposes." Reply Br. 3.
We are accordingly unpersuaded that reversible error has been identified in
the Examiner's findings with regard to Son's Figure 8D in support of this
aspect of the obviousness analysis.
Appellants' argument that manufacturing the recited first elevation in
the prior art device would "require additional fabrication steps" in Son (Br. 7
(emphasis removed)) likewise does not identify reversible error in the
Examiner's finding that the prior art device is not structurally distinguished
from that recited. Claim 1 is an apparatus claim and whether certain
manufacturing "steps" may be employed to produce the apparatus does not
structurally distinguish the apparatus. We sustain the Examiner's rejection
of claim 1.
Rejection of Claims 5, 6, and 12
Claims 5, 6, and 12 depend from claim 1 and recite respective
limitations all related to dimensions of the apparatus. Claim 5 recites
"wherein the first end surface of the encapsulation material defines a plane
and the recess has a depth lying in a range from 100 micrometers to 2
millimeters below the level of the plane." Claim 6 recites "wherein the first
end surface of the encapsulation material defines a plane and the first
elevation has a height lying in a range from 100 micrometers to 2
millimeters above the level of the plane." Claim 12 recites "wherein a
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Application 15/176,952
spacing between the first lead and the second lead lies in a range from 200
micrometers to 2 millimeters."
Appellants argue claims 5, 6, and 12 as a group. Br. 10-11. More
specifically, Appellants argue that the prior art references do not teach or
suggest the recited dimensions such as the depth of the recess, the height of
the elevation, and the spacing between the leads. Id.
The Examiner determines that Son describes these dimensions
including the depth of recess as related to the creepage distance and that
these recited dimensions do not alter the function of the apparatus and are
therefore ordinarily obvious variations. Final Act. 7-9 (citing Son 4:24--38);
Ans. 8-9 (citing Son 4:24--38). Appellants do not respond to the Examiner's
determination that these recited dimensions lack criticality ( compare Br. 10-
11, with Final Act 7-9)4 and we are unpersuaded that reversible error has
been identified here. See In re Rice, 341 F.2d 309 (CCPA 1965) (holding
that the Examiner properly found that claimed dimensional relationship
4 An argument raised for the first time in a Reply Brief can be considered
waived if Appellants do not explain why it could not have been raised
previously. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) ( explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause."). In this case,
Appellants do not explain why their argument with regard to In re Aller, 220
F.2d 454 (CCPA 1955) could not have been raised in the opening brief.
Compare Br. 9-11, with Final Act. 7-9 (citing In re Aller, 220 F.2d 454, 456
(CCPA 1955)). As a result, we decline to consider the argument raised for
the first time in the Reply Brief. See Reply Br. 7.
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between collection chamber and walls of main air chamber "does not
produce any different effect or result"); Gardner v. TEC Sys., Inc., 725 F.2d
1338 (Fed. Cir. 1984) (holding that where the only difference between the
prior art and the claims was a recitation of relative dimensions of the
claimed device and a device having the claimed relative dimensions would
not perform differently than the prior art device, the claimed device was not
patentably distinct from the prior art device); In re Rose, 220 F.2d 459, 463
(CCP A 1955) (holding that "the size of the article under consideration ... is
not ordinarily a matter of invention"); In re Rinehart, 531 F .2d 1048, 1053
(CCPA 1976) (holding that mere scaling up of a prior art process capable of
being scaled up, if such were the case, would not establish patentability in a
claim to an old process so scaled). We therefore sustain the Examiner's
rejection of these claims.
Rejection of Claim 8
Claim 8 depends from claim 1 and recites "wherein at least one of the
recess and the first elevation has a rectangular shape." Appellants argue that
the prior art reference does not provide the actual shape of the recess which,
according to Appellants, may be in a square, rectangular, or irregular shape.
Br. 11; Reply Br. 9.
To the extent that Appellants disagree with the Examiner's
interpretation of Son Figure 8D, such a disagreement does not identify
reversible error. Appellants argument, directed to whether the recited
feature is inherent in the prior art structure (Br. 12) does not address the
basis of the rejection. That is, the obviousness rejection is not based on
inherency but on an obviousness rationale, i.e., that a change of shape does
not make a product nonobvious where the claimed shape is not of functional
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significance and accomplishes the same purpose as the prior art shape. See
In re Dailey, 357 F.2d 669, 672-73 (CCPA 1966). We therefore sustain the
Examiner's rejection of claim 8.
Rejection of Claim 9
Claim 9 depends from claim 1 and recites "wherein the recess extends
from the top main surface of the encapsulation material to the bottom main
surf ace of the encapsulation material." Appellants argue that "the
cross-section view of Son's FIG. 8D does not provide details regarding the
actual extent of Son's alleged recess." Br. 13 ( emphasis removed).
Contrary to Appellants' argument, Figure 8D of Son is "a plane view"
of the prior art embodiment. Son 3 :43--46. Appellants argument, directed to
whether the recited feature is inherent in the prior art structure (Br. 13) does
not address the Examiner's factual finding that a skilled artisan, based on the
illustration in Figure 8D of Son - showing a plane view of the recess
unobstructed through the top surface - would have found claim 9 obvious.
We therefore sustain the Examiner's rejection of claim 9.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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