Ex parte Ponse

Board of Patent Appeals and Interferences

Aug 24, 2001

08666970 (B.P.A.I. Aug. 24, 2001)

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publication and is not binding precedent of the Board.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 FREDERIK PONSE
_____________
Appeal No. 1999-0843
Application No. 08/666,970
______________
ON BRIEF
_______________
Before KRASS, RUGGIERO, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-9 and 12-16. Claims 10 and 11 have been allowed
by the Examiner. An amendment filed December 4, 1997 after
final rejection was approved for entry by the Examiner.
The claimed invention relates to a semiconductor
component in which at least one transistor is formed on a
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Application No. 08/666,970
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semiconductor substrate. A plurality of electrode terminals
are formed with at least one finger section and a first
contact area section disposed laterally with respect to and
connected to a respective finger section. According to page 4
of Appellant’s specification, at least one of the electrode
terminals has a second contact area section which is disposed
laterally opposite the first contact area section across the
finger section, the resulting structure serving to provide
increased heat dissipation.
Representative claim 1 is reproduced as follows:
1. A semiconductor component, comprising:
a semiconductor substrate having a main surface;
at least one transistor formed on said semiconductor
substrate with a gate or base terminal, with a source or
emitter terminal, and with a drain or collector terminal;
first, second and third electrode terminals formed on
said main surface of said semiconductor substrate and
electrically insulated from one another, said electrode
terminals being respectively associated with said gate or
base terminal, with said source or emitter terminal, and
with said drain or collector terminal of said at least
one transistor;
each of said electrode terminals being formed with at
least one electrode terminal finger section, and a first
contact area section electrically connected to a
respective finger section and being disposed laterally
thereof; and
Appeal No. 1999-0843
Application No. 08/666,970
In addition, the Examiner relies on Appellant’s admissions as to the1
prior art as illustrated in Figure 1 of the drawings along with the
accompanying description in the specification.
A copy of a translation provided by the U.S. Patent and Trademark2
Office, June 31, 1998, is enclosed with this decision.
Although no publication date appears on this document, it was part of3
a submission of admitted prior art in the Information Disclosure Statement
filed September 19, 1996 (Paper No. 4).
3
at least one of said electrode terminals having a second
contact area section electrically connected to said
respective finger section and being disposed laterally
opposite said first contact area section across said
finger section.
The Examiner relies on the following prior art
references:1
Kaneko 62-296475 Dec. 23, 1987
(Published Japanese Patent Application)2
Kojima et al. (Kojima) EP 0 494 625 A1 Jul. 15,
1992
(Published European Patent Application)
NE 9004 Series Data Sheet (NEC), Electrical Characteristics,
Chip Dimensions and Handling, Chapter 2-22 (undated).3
Claims 1-3, 6, 7, and 12-16 stand finally rejected under
35 U.S.C. § 102(f) as being anticipated by Appellant’s
admitted prior art. Claims 1-4 and 6-8 stand finally rejected
under 35 U.S.C. § 102(b) as being anticipated by Kaneko.
Claims 5, 9, and 12-16 stand finally rejected under
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Application No. 08/666,970
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35 U.S.C. § 103(a). As evidence of obviousness, the Examiner
offers Kaneko in view of Kojima with respect to claims 5 and
9, and Kaneko in view of NEC with respect to claims 12-16.
Appeal No. 1999-0843
Application No. 08/666,970
The Appeal Brief (Paper No. 12) was filed March 9, 1998. In response4
to the Examiner’s Answer (Paper No. 13) dated March 31, 1998, a Reply Brief
(Paper No. 15) was filed June 2, 1998, which was acknowledged and entered by
the Examiner without further comment as indicated in the communication (Paper
No. 16) dated August 18, 1998.
While we do not consider paragraph (f) of 35 U.S.C. § 102 to be the5
appropriate basis for the anticipatory rejection in the present factual
situation, the rejection qualifies under other paragraphs of 35 U.S.C. § 102.
5
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the4
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, and the
evidence of anticipation and obviousness relied upon by the
Examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Briefs 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 disclosure of Appellant’s admitted prior art fully meets
the invention as recited in claims 1-3, 6, 7, and 12-16. We5
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Application No. 08/666,970
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are also of the view that the disclosure of Kaneko fully meets
the invention as set forth in claims 1-4 and 6-8. In
addition, we are of the opinion 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 set forth in claims 5, 9, and 12-16.
Accordingly, we affirm.
Although Appellant has nominally asserted (Brief, page
10) the separate patentability of each of the claims on
appeal, separate arguments for patentability have been
provided only for independent claim 1. Dependent claims 2-9
and 12-16 have not been argued separately in the Briefs and,
accordingly, will stand or fall with their base claim 1. We
will select independent claim 1 as the representative claim
for all of the rejections before us on appeal. Note In re
King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir.
1983).
We first consider the Examiner’s anticipatory rejection
of claims 1-3, 6, 7, and 12-16 based on the disclosure of the
admitted prior art in Appellant’s specification. Anticipation
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is established only when a single prior art reference
discloses, expressly or under the principles of inherency,
each and every element of a claimed invention as well as
disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore &
Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to representative independent claim 1, the
Examiner has indicated (Answer, pages 3 and 4) how the various
limitations of claim 1 are read on the admitted prior art. In
the Examiner’s analysis, a 90 degree rotation of the admitted
prior art semiconductor device structure illustrated in
Appellant’s Figure 1 would result in a device in which at
least
one electrode (i.e., the D electrode) has a second contact
area disposed laterally opposite a first contact area across a
finger (i.e., the center finger) section as claimed.
We agree with the Examiner that semiconductor devices in
actual practice can be fabricated and used in any orientation
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Application No. 08/666,970
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and, accordingly, the Examiner’s analysis, in our view, is
sufficiently reasonable that we find that the Examiner has at
least satisfied the burden of presenting a prima facie case of
anticipation. The burden is, therefore, upon Appellant to
come forward with evidence and/or arguments which persuasively
rebut the Examiner’s prima facie case. 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)).
Our review of Appellant’s response in the Briefs reveals
that no arguments have been presented concerning the
Examiner’s interpretation of the admitted prior art
illustrated in Appellant’s Figure 1. To the contrary,
Appellant’s sole argument (Brief, pages 11 and 12) is to
repeat the language of claim 1 and make the general assertion
that the prior art does not disclose the claimed structure.
In our opinion, the Examiner’s prima facie case of
anticipation based on the admitted prior art remains
unrebutted by any persuasive arguments from Appellant.
Accordingly, since all of the claimed limitations are present
Appeal No. 1999-0843
Application No. 08/666,970
9
in the disclosure of the admitted prior art, the Examiner’s
35 U.S.C. § 102 rejection of independent claim 1, and claims
2, 3, 6, 7, and 12-16 which fall with claim 1, is sustained.
We also sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of claims 1-4 and 6-8 as being anticipated by
Kaneko. Considering representative claim 1, we agree with the
Examiner that the semiconductor device structure illustrated
in Figure 1 of Kaneko discloses that the electrode 4 has first
and second contact areas a and a being disposed laterally1 2
opposite each other across a finger section.
We find Appellant’s arguments in response to this
rejection (Brief, pages 13 and 14) to be unpersuasive.
Initially, we find Appellant’s argument that Kaneko’s device
is directed to phase compensation rather than the heat
dissipation problem purported to be solved by Appellant’s
invention to be without merit in determining the
appropriateness of a rejection based on anticipation. We
further find to be unfounded Appellant’s further contention
that, contrary to the claimed invention, the contact areas 4a1
and 4a in Kaneko are located on the same side of an imaginary2
center line of the structure, i.e., on the same side as the
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Application No. 08/666,970
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source finger connection 2 while the drain finger connection 5
is on the opposite side. It is our view, however, that,
notwithstanding the merits of Appellant’s interpretation of
the finger arrangement of Kaneko, such argument is not
commensurate with the scope of claim 1. It is axiomatic that,
in proceedings before the PTO, claims in an application are to
be given their broadest reasonable interpretation consistent
with the specification, and that claim language should be read
in light of the specification as it would be interpreted by
one of ordinary skill in the art. In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Moreover,
limitations are not to be read into the claims from the
specification. In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We find
no recitation in representative claim 1 of any relative
orientation requirement among the source, drain, and gate
electrodes, let alone any recitation of a center line,
imaginary or otherwise.
Lastly, we turn to a consideration of the Examiner’s
obviousness rejection of claims 5 and 9 based on the
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Application No. 08/666,970
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combination of Kaneko and Kojima, and the rejection of claims
12-16 based on the combination of Kaneko and NEC. Appellant’s
response to this rejection (Brief, pages 13-15) reiterates the
argument that the electrode connections in Kojima and NEC are
on only one side of a multifinger arrangement. It is apparent
from the Examiner’s analysis (Answer, page 6), however, that
the Kojima and NEC references were applied solely to address
the air bridge and via hole features of claims 5, 9, and 12-
16. These references were applied in combination with Kaneko
to establish the basis for the obviousness rejection. One
cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097, 231
USPQ 375, 380 (Fed. Cir. 1986).
In view of the above discussion, since the Examiner’s
prima facie case of obviousness has not been rebutted by any
convincing arguments from Appellant, the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 5, 9, and 12-16 is sustained.
In summary, we have sustained all of the Examiner’s
rejections of the claims on appeal. Therefore, the decision
Appeal No. 1999-0843
Application No. 08/666,970
12
of the Examiner rejecting claims 1-9 and 12-16 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).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR:hh
Appeal No. 1999-0843
Application No. 08/666,970
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