Ex Parte Pidutti

Board of Patent Appeals and Interferences

Dec 30, 2003

09594831 (B.P.A.I. Dec. 30, 2003)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 19

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte Albino Pidutti
______________

Appeal No. 2003-1203
Application 09/594,831
_______________

ON BRIEF
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Before WARREN, MOORE and POTEATE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellant, in the brief, and based on our
review, find that we cannot sustain the rejection of appealed claims 11 through 13 and 31 under
35 U.S.C. § 102(b) as being anticipated by Koike (answer, page 3), and of appealed claims 14
through 21 under 35 U.S.C. § 103(a) as being unpatentable over Koike as applied to claims
11 through 13 and 31, further in view of Monk et al. (Monk) (answer, pages 4-5).1
It is well settled that in making out a prima facie case of anticipation under § 102, each
and every element of the claimed invention, arranged as required by the claims, must be found in

1 Claims 32 through 37 are also of record, claims 33 through 37 allowed by the examiner and
claim 32 objected to by the examiner as dependent on a rejected base claim (answer, pages 5-6).
Appeal No. 2003-1203
Application 09/594,831
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a single prior art reference, either expressly or under the principles of inherency. See generally,
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984). Whether the teachings and inferences that one skilled in this
art would have found in the disclosure of an applied reference would have placed this person in
possession of the claimed invention, taking into account this person’s own knowledge of the
particular art, is a question of fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
1697, 1701 (Fed. Cir. 1995), and cases cited therein (a reference anticipates the claimed
invention if in fact an element that is not disclosed therein “is within the knowledge of the skilled
artisan.”); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering
the disclosure of a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one of ordinary skill in the art would reasonably be
expected to draw therefrom.”).
It is further well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims arranged as required by the claims, without recourse to the teachings in
appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). In this respect, it is well
settled that a reference stands for all of the specific teachings thereof as well as the inferences
one of ordinary skill in this art would have reasonably been expected to draw therefrom, see In re
Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); Preda, supra,
Appeal No. 2003-1203
Application 09/594,831
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presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985).
The threshold issue with respect the grounds of rejection before us is whether Koike
would have placed one skilled in the art and one of ordinary skill in this art in possession of a
boost capacitor and “an associated MOS transistor” as required by appealed claims 11 and 12, on
which all of the other appealed claims depend. The examiner points to “for example, FIG. 3 and
4” of Koike in alleging that the reference discloses MOS boost capacitor 34 associated with MOS
transistor 38 as well as MOS transistor 36, because as shown in Koike FIG. 3, MOS transistor 38
has a “total of three electrodes” which fits a standard dictionary definition of a “transistor”2
(answer, pages 3, 7 and 8-9). Appellant submits that Koike discloses diodes 36 and 38, each of
which has two electrodes, pointing to col. 3, lines 3-21, thus falling into a standard dictionary
definition of a “diode,”3 and argues that “[t]he device of Koike is more consistent with [the
standard dictionary] definition of a diode than the [standard dictionary] definition [of ‘transistor’]
presented by the examiner” (brief, page 8).
We find that in the passage cited by appellant, Koike discloses that “diodes 36 and 38
have the same arrangement as that of conventional ones” and describes the two “diodes” with
respect to diode 36, from which it is apparent that each of the diodes has an “anode” and a
“cathode.” The relationship of the diodes and the anode and cathode regions thereof in the
disclosed “self-substrate-bias circuit device shown in FIG. 3” as well as another embodiment
shown in FIG. 4, is also described (e.g., col. 3, lines 22-48, and col. 4, lines 25-49).
Furthermore, we find that one skilled in the art and one of ordinary skill in the art reading FIGs.
3 and 4 even without benefit of the disclosure of Koike would have readily recognized that MOS
elements 36 and 38 are wired as diodes.

2 In addition to the standard dictionary cited by the examiner (answer, page 7), we find
essentially the same general definition for “transistor,” which includes “contacts,” along with
definitions involving different types of “transistor,” e.g., “metal oxide semiconductor field-effect
transistor,” in McGraw-Hill Dictionary of Scientific and Technical Terms 1250, 2056 (Sybil P.
Parker, ed., New York, McGraw-Hill, Inc. 1994).
3 We find that the definition for “diode” provided in the standard dictionary definition as attached
to the brief, which includes “anode” and “cathode” electrodes, is essentially the same general
Appeal No. 2003-1203
Application 09/594,831
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We are of the opinion that while it may well be that, as the examiner points out, the
structure of MOS elements 36 and 38 could function as transistors, this would in fact occur only
if properly wired for that purpose. Accordingly, we find as a matter of fact, Koike would have
placed one skilled in the art and one of ordinary skill in this art only in possession of a boost
capacitor associated with a diode, because there is no evidence or scientific explanation in the
record establishing that the disclosure of Koike coupled with the knowledge possessed by either
person would have placed that person in possession of a boost capacitor associated with an
electrode.
Accordingly, because Koike, even when combined with Monk, would not have placed
one of ordinary skill in this art in possession of the claimed invention encompassed by the
appealed claims, we reverse both grounds of rejection.
The examiner’s decision is reversed.
Reversed

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
JAMES T. MOORE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LINDA R. POTEATE )
Administrative Patent Judge )

definition for “diode” and “semiconductor diode” in McGraw-Hill Dictionary of Scientific and
Technical Terms 578, 1790 (id.).
Appeal No. 2003-1203
Application 09/594,831
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