Ex Parte Shrier et al

Board of Patent Appeals and Interferences

Apr 10, 2003

09139309 (B.P.A.I. Apr. 10, 2003)

1The appellants do not argue the rejections of claim 29. (Appeal Brief, pages 3
and 5). Accordingly, the appeal is dismissed as to this claim.
The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAREN P. SHRIER; GERALD R. BEHLING;
JAMES B. INTRATER; KAILASH C. JOSHI; and WILLIAM W. ALSTON, JR.
____________
Appeal No. 2002-0510
Application No. 09/139,309
____________
HEARD: Feb. 11, 2003
____________
Before THOMAS, BARRY, and LEVY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 5-20 and 30-32. The appellants appeal
therefrom under 35 U.S.C. § 134(a).1 We affirm-in-part.
BACKGROUND
The invention at issue on appeal protects electronic circuits and equipment from
overvoltage transients caused by lightning, electromagnetic pulses, electrostatic
discharges, or power surges. Voltage transients can induce high currents and voltages
Appeal No. 2002-0510 Page 2
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that can penetrate and damage electrical circuits and equipment. Such voltage
transients produce large voltage spikes with high peak currents, i.e., overvoltage.
(Spec. at 1.)
According to the appellants, variable voltage materials are used commonly in
variable voltage protection devices to short overvoltage transients to ground. (Appeal
Br. at 3.) Such materials initially display a high electrical resistance. When an
associated device experiences an overvoltage transient, its variable voltage material
changes to a low electrical resistance, thereby directing excess current harmlessly to
ground. After the transient has passed, the material reverts to the high electrical
resistance. (Id.)
The appellants explain that the key operational parameters of a variable voltage
material are "response time," "clamp voltage," and "switch voltage." Response time is
the time it takes for the material to switch from high resistance to low resistance. (Id.)
Clamp voltage is the voltage at which the material limits a voltage surge. (Id. at 2-3.)
After the material switches to a low resistance, it ensures that the circuit or equipment
being protected will not be subjected to a voltage greater than the clamp voltage.
(Spec. at 2.) Switch voltage is the voltage at which the variable voltage material will
switch under surge conditions from high resistance to low resistance. (Appeal Br. at 4.)
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The appellants' invention comprises embodiments of a variable voltage
protection component for placement between a ground plane (14) and an electronic
circuit (10). Figure 2 of their specification shows an embodiment featuring a variable
voltage material layer (13) and a neat dielectric polymer or glass layer (12). According
to the appellants, use of the neat dielectric polymer or glass layer (12) improves clamp
voltage properties. (Id.)
Figure 3 of the specification shows a multi-layer embodiment. Three distinct
layers (15, 16, 17) of variable voltage material, each layer having a different material
composition, are included. More specifically, the loading of conductive or
semiconductive particles dispersed within the resin constituting the variable voltage
material is varied from layer to layer. This variation is described in terms of percentage
of particles by volume. The appellants assert that such variation achieves a wide range
of clamping voltages. (Id.)
A further understanding of the invention can be achieved by reading the following
claims.
5. A variable voltage protection component for placement between
a ground plane and an electronic circuit comprising:
a layer of variable voltage material comprising a binder containing
conductive particles and/or semiconductive particles; and
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a layer of neat dielectric polymer or glass distinct from the layer of
variable voltage material and in contact with one surface of the layer of
variable voltage material,
wherein the neat dielectric polymer or glass layer is present in a
thickness of less than about 1.6 mils.
11. A variable voltage protection component for placement
between a ground plane and an electronic circuit comprising:
a first layer of variable voltage protection material comprising a
binder having dispersed therein at least about 20% by volume of
conductive or semiconductive particles;
a second layer of variable voltage protection material in contact
with the first layer comprising a binder having dispersed therein at least
40 % by volume of conductive and/or semiconductive particles; and
a third layer of variable voltage protection material in contact with
said second layer comprising a binder having dispersed therein at least
20 % by volume of conductive or semiconductive particles.
Claims 5-20 and 30-32 stand rejected under 35 U.S.C. § 112, ¶ 2, as indefinite.
Claims 5-10 and 31 stand rejected under 35 U.S.C. § 102(b) as anticipated by U.S.
Patent No. 4,041,436 ("Kouchich"). Claims 5-10 stand rejected under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent No. 5,278,535 ("Xu"). Claims 11-16 stand
rejected under § 103(a) as obvious over U.S. Patent No. 1,509,496 ("Slepian") and U.S.
Patent No. 5,476,714 ("Hyatt"). Claims 11-20 and 31 stand rejected under § 103(a) as
obvious over U.S. Patent No. 3,310,766 ("Downing") and Hyatt. Claims 17-20 and 31
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stand rejected under § 103(a) as obvious over Slepian, Hyatt, and U.S. Patent No.
2,295,379 ("Beck") and over Downing, Hyatt, and Beck.
OPINION
Our opinion addresses the following rejections:
• indefiniteness rejection of claims 5-20 and 30-32
• anticipation rejection of claims 5-10 and 31 over Kouchich
• obviousness rejection of claims 5-10 over Xu
• obviousness rejections of claims 11-16 over Slepian and Hyatt
• obviousness rejection of claims 11-20 over Downing and Hyatt
• obviousness rejections of claims 17-20 over Slepian, Hyatt, and Beck and
over Downing, Hyatt, and Beck

• obviousness rejections of claim 31 over Downing and Hyatt; over
Downing, Hyatt, and Beck; and over Slepian, Hyatt, and Beck.
Indefiniteness Rejection of Claims 5-20 and 30-32
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the five points of contention therebetween. First, the examiner had asserted,
"[t]he term 'less than about' in claims 6-20 and . . . 32 is a relative term which renders
the claim indefinite." (Examiner's Answer at 3.) The appellants argue, "[t]he phrase . . .
can be understood from the specification without uncertainty to denote the parameters
which would achieve component protection from overvoltage transients through
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dissipation of excess charge via an electrical path established by the described and
claimed layer configuration." (Appeal Br. at 7.) At the oral hearing, the examiner
withdrew his assertion, conceding that the term "less than about" did not render the
instant claims indefinite.
Second, the examiner asserts, " [i]n claim 5, it is not clear what 'distinct from the
layer of variable voltage material' means. . . ." (Examiner's Answer at 3.) The
appellants argue, "[t]he word 'distinct,' as its ordinary and accustomed meaning would
suggest, along with the description in the specification in light of which the claims are to
be read, simply means that the two layers are distinguishable from one another."
(Appeal Br. at 8.)
"The test for definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification." Miles Labs., Inc. v.
Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (citing
Orthokinetics Inc., v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081,
1088 (Fed. Cir. 1986)). "The general rule is, of course, that terms in the claim are to be
given their ordinary and accustomed meaning." Johnson Worldwide Assocs., Inc. v.
Zebco Corp., 175 F.3d 985, 989, 50 USPQ2d 1607, 1610 (Fed. Cir. 1999) (citing
Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1249, 48 USPQ2d 1117,
1121 (Fed. Cir. 1998); York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d
1568, 1572, 40 USPQ2d 1619, 1622 (Fed. Cir. 1996)). "It is well settled that
Appeal No. 2002-0510 Page 7
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dictionaries provide evidence of a claim term's 'ordinary meaning.'" Inverness Med.
Switz. GmbH v. Warner Lambert Co., 309 F.3d 1365, 1369, 64 USPQ2d 1926, 1930
(Fed. Cir. 2002) (citing Texas Digital Sys. Inc. v. Telegenix Inc., 308 F.3d 1193, 1202,
64 USPQ2d 1812, 1818 (Fed. Cir. 2002); CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002)).
Here, claim 5 specifies in pertinent part the following limitations: "a layer of neat
dielectric polymer or glass distinct from the layer of variable voltage material. . . ."
(Emphasis added.) The term "distinct" is defined as "distinguishable from all others;
separate; discrete. . . ." American Heritage Dictionary 411 (2d College ed. 1982) (copy
attached). Giving the terms in the claim their ordinary and accustomed meaning, we
conclude that one skilled in the art would understand that the limitations require a layer
of neat dielectric polymer or glass separate from a layer of variable voltage material.
Third, the examiner asserts, "[t]he term 'in contact with' anywhere it appears
such as claim[] . . . 11 is not clear where applicant argues that the term is used to
denote contact for purposes of establishing a voltage discharge path." (Examiner's
Answer at 4.) The appellants argue, "[o]ne of ordinary skill in the art, looking at
appellants' disclosure, would be readily apprised of the meaning of 'in contact with'
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because the disclosure sets forth various parameters describing the relationship of the
layers." (Appeal Br. at 9.)
Here, claim 11 specifies in pertinent part the following limitations: "a second layer
of variable voltage protection material in contact with the first layer . . . and a third
layer of variable voltage protection material in contact with said second layer. . . ."
(Emphases added.) The term "contact" is defined as "the coming together or touching
of two objects or surfaces." American Heritage Dictionary at 315. Giving the terms in
the claim their ordinary and accustomed meaning, we conclude that one skilled in the
art would understand that the limitations require that surfaces of the claimed layers
touch one another.
Fourth, the examiner asserts, "[i]n claim[] . . . 31, 'which is in direct contact with
an electrical conductor' is not clear where no such conductor is claimed, as it is not
clear if the contact or conductor is required, and since it is not claimed, it cannot be in
contact therewith." (Examiner's Answer at 4.) The appellants argue, "[t]he relationship
between the layer of neat dielectric polymer or glass and the electrical conductor is
clearly and unambiguously set out." (Appeal Br. at 8.)
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Claim 31 specifies in pertinent part the following limitations: "a layer of neat
dielectric polymer or glass which is in direct contact with an electrical conductor in said
electronic circuit. . . ." We conclude that one skilled in the art would understand that the
limitations require a layer of neat dielectric polymer or glass that is in direct contact with
an electrical conductor in an electronic circuit.
Fifth, the examiner asserts, "[i]t is not clear if the volume is 'different' because the
volumes occupy different spaces, or they have different percentage loadings."
(Examiner's Answer at 14.) The appellants argue, "[t]he term 'different' as used in
[c]laims 31-32 clearly distinguishes the compositions of the two layers of variable
voltage material." (Appeal Br. at 9.)
Here, claim 31 specifies in pertinent part the following limitations: "a binder
having dispersed therein conductive and/or semiconductive particles at a 40% by
volume, which volume is different than in said first layer." (Emphasis added.) Also
similarly, claim 32 specifies in pertinent part the following limitations: "a binder having
dispersed therein conductive or semiconductive particles at a 20 by volume, which
volume is different than the second layer." (Emphasis added.) For its part, the
specification discloses that "the multiple layer construction provides an opportunity to
vary the conductor particle loading and/or semiconductor particle loading in each layer,
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such that the outer layers contain lower particle loadings than the inner layer, in order to
achieve a wide range of clamping voltages and other desired properties." (Spec. at 5.)
Reading the claims in light of the specification, we conclude that one skilled in the art
would understand that the claimed volumes differ in their percentage loadings of
conductive or semiconductive particles. Therefore, we reverse the indefiniteness
rejection of claims 5-20 and 30-32.
Anticipation Rejection of Claims 5-10 and 31 over Kouchich
We address the main point of contention between the examiner and the
appellants. The examiner asserts, "[t]he glass layer (labeled as 9 and shaded dark by
the Examiner - see Appendix) near electrode 3 is a distinct layer where it is devoid of
the conductor particles." (Examiner's Answer at 5.) The appellants argue, "Kouchich,
et al. only shows one composition, and therefore fails to anticipate the invention. . . ."
(Appeal Br. at 13.)
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). Here, claim 5 specifies in pertinent part the following limitations: "a layer of
neat dielectric polymer or glass distinct from the layer of variable voltage material and in
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contact with one surface of the layer of variable voltage material. . . ." Similarly,
claim 31 specifies in pertinent part the following limitations: "a first layer of variable
voltage protection material in contact with said layer of neat dielectric polymer or glass .
. ." Giving the terms in the claims their ordinary and accustomed meaning, the
limitations require a layer of variable voltage material separate from, but touching, a
layer of neat dielectric polymer or glass.
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "A claim
is anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing
Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264,
1270 (Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "[A]bsence from the reference of any claimed
element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Appeal No. 2002-0510 Page 12
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Here, although Kouchich discloses a layer of variable voltage material, viz., "a
varistor composition 1," col. 4, ll. 36, the reference does not include a layer of neat
dielectric polymer or glass touching the varistor composition. To the contrary, the
varistor composition is "interposed between a pair of electrodes 3. . . ." Id. at ll. 36-37.
The absence from Kouchich of a layer of variable voltage material separate from, but
touching, a layer of neat dielectric polymer or glass negates anticipation. Therefore, we
reverse the anticipation rejection of claims 5 and 31 and of claims 6-10, which depend
from the former, over Kouchich.
Obviousness Rejection of Claims 5-10 over Xu
At the outset, we recall that claims that are not argued separately stand or fall
together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed. Cir. 1983)
(citing In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). When the
patentability of a dependent claim is not argued separately, in particular, the claim
stands or falls with the claim from which it depends. In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986) (citing In re Sernaker, 702 F.2d 989, 991, 217
USPQ 1, 3 (Fed. Cir. 1983); In re Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70
(CCPA 1979)). Furthermore, "[m]erely pointing out differences in what the claims cover
is not an argument as to why the claims are separately patentable." 37 C.F.R.
§ 1.192(c)(7).
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Here, although the appellants point out differences in what claims 5, 6, and 7
cover, (Appeal Br. at 15), this is not an argument why the claims are separately
patentable. Furthermore, they do not argue the patentability of claim 8 separately.
Therefore, claims 6- 8 stand or fall with representative claim 5.
With this representation in mind, we address the four points of contention
between the examiner and the appellants. First, the examiner asserts, "layer 62 is
shown at a constant thickness lying over stratum 21 in Fig.16. . . ." (Examiner's Answer
at 17.) The appellants argue, "composite material (62) applied through the holes in
cover (41) does not satisfy the definition of 'layer.'" (Appeal Br. at 14.)
"[T]he Board must give claims their broadest reasonable construction. . . ." In re
Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir. 2000). Here, claim 5
specifies in pertinent part the following limitations: "a layer of variable voltage material. .
. ." (Emphasis added.) The term "layer" is defined as "[a] single thickness, coating, or
stratum spread out or covering a surface." American Heritage Dictionary at 719 (copy
attached). Giving the claim its broadest, reasonable construction, the limitations require
a thickness, coating, or stratum of variable voltage material spread out or covering a
surface.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
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explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)).
Here, Xu discloses "an electrical overstress pulse protection composite 62. . . ."
Col. 5, ll. 30-31. We find that the electrical overstress pulse protection composite is
spread out in, and covers the side and bottom surfaces, of an opening. Specifically,
"each of the openings 43 in the cover 41 is filled with an electrical overstress pulse
protection composite 62 (see FIG. 12). . . . The composite is applied in a sufficiently
fluid state as to enter the space 34. . . ." Id. at ll. 29-33.
Second, the examiner asserts that Xu discloses "polymer 41, in contact with
variable voltage material 62. . . ." (Examiner's Answer at 6.) The appellants argue,
"[c]over (41) does not overlie composite material (62) and plays no role during actual
over-voltage protection operation." (Appeal Br. at 14.)
"[L]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)). Here, claim 5
specifies in pertinent part the following limitations: "a layer of neat dielectric polymer or
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Application No. 09/139,309
glass distinct from the layer of variable voltage material and in contact with one surface
of the layer of variable voltage material. . . ." Despite the appellants' argument, the
limitations require neither that the layer of neat dielectric polymer or glass overlie the
layer of variable voltage material nor play a role during an over-voltage protection
operation. Accordingly, the argument is moot.
Third, observing that "[a] dimension of .2 mils and 50 mils is described in
conjunction with 'thin' for prior art flexible electrodes," (Examiner's Answer at 6), the
examiner asserts, "it would have been obvious to employ the polymer of Xu et al. in the
claimed range for the purpose of making a thin flexible layer. . . ." (Id. at 6-7.) The
appellants argue, "one of ordinary skill in the art would not be motivated by the
teachings of Xu, et al. to use a neat dielectric polymer or glass in the claimed
thicknesses. . . ." (Appeal Br. at 15.)
Claim 5 specifies in pertinent part the following limitations: "the neat dielectric
polymer or glass layer is present in a thickness of less than about 1.6 mils."
"All of the disclosures in a reference must be evaluated for what they fairly teach
one of ordinary skill in the art." In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966)). "'A prima facie case of obviousness is established when the teachings
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from the prior art itself would . . . have suggested the claimed subject matter to a
person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, Xu discloses that the thickness of a "thin lamina electrode," col. 3, l. 8
(emphasis added), is "about 0.2 to 35 mils. . . ." Id. at l. 10. By describing its "flexible
laminate," id. at l. 20, as "very thin," id. at l. 19 (emphasis added), the reference implies
that the thickness of the latter is less than thickness of the thin lamina electrode.
Because the thickness of the lamina electrode is at least 0.2 mils, one of ordinary skill
in the art would have inferred that the thickness of the very thin flexible laminate is less
than 0.2 mils. Such a thickness is less than the claimed "about 1.6 mils." Therefore,
we affirm the obviousness rejection of claim 5 and of claims 6-8, which fall therewith,
over Xu.
Fourth, the appellants argue, "[c]laims 9 and 10 recite a second layer of neat
dielectric polymer or glass in contact with a second surface of the layer of variable
voltage material. Xu, et al. neither teaches nor suggests such a second layer, and the
examiner does not address this omission." (Appeal Br. at 15.)
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"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). Here, the examiner fails to allege, let
alone show, however, that Xu teaches or would have suggested the limitations of
claims 9 and 10. We will not "resort to speculation," In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), as to his unstated position. Therefore, we
reverse the obviousness rejection of claims 9 and 10 over Xu.
Obviousness Rejection of Claims 11-16 over Slepian and Hyatt
At the outset, we note that the appellants do not argue claims 11-16 separately.
Therefore, claims 12-16 stand or fall with representative claim 11. With this
representation in mind, we address the main point of contention between the examiner
and the appellants. The examiner asserts, "Hyatt discloses conductive and
semiconductive particles at 70% at col. 5, lines 20-40, for the purpose of providing
overvoltage protection and to tailor the resistance to the desired value and altering the
clamping voltage, col. 9, lines 13-21. It would have been obvious in view of Hyatt to
employ particles in the claimed range in the device of . . . Slepian for the purpose of
altering the resistance and clamping voltage." (Examiner's Answer at 7.) The
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appellants argue, "[n]one of these references teach the use of different layers having
different particle loadings. . . ." (Appeal Br. at 17.)
Claim 11 specifies in pertinent part the following limitations: "a first layer . . .
comprising a binder having dispersed therein at least about 20% by volume of
conductive or semiconductive particles; a second layer . . . comprising a binder having
dispersed therein at least 40% by volume of conductive and/or semiconductive
particles; and a third layer . . . comprising a binder having dispersed therein at least
20% by volume of conductive or semiconductive particles." Giving the claim its
broadest, reasonable construction, the limitations merely require that a first and third
layer feature a percentage loading of at least about 20% by volume of conductive or
semiconductive particles and that a second layer features a percentage loading of at
least about 40% by volume of conductive or semiconductive particles. Despite the
appellant's argument, however, the limitations do not require that the layers feature
different particle loadings.
For its part, Hyatt discloses "a composition . . . of materials which can be
connected to, or incorporated as part of an electrical circuit or circuit component, and
are characterized by high electrical resistance values when exposed to low or
normal operating voltages, but essentially instantaneously switch to low
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electrical impedance values in response to an excessive or overstress voltage
pulse, thereby shunting the excessive voltage or overstress pulse to ground." Col. 1,
ll. 17-25. The reference's composition comprises a binder having dispersed therein at
least 55% by volume of conductive or semiconductive particles. More specifically, "[i]n
the practice of [Hyatt's] invention, the key electrical ingredient of the composite is a
mixture of conductor/semiconductor particles, constituting from about 55 to about 80%,
and preferably from about 60 to about 70%, by volume of the composite." Col. 5, ll. 20-
24.
We find that when the composition of Hyatt was used in the device of Slepian,
the combination would have featured at least three layers, wherein each layer would
have featured a percentage loading of at least about 55% by volume of conductive or
semiconductive particles. Such a loading would have satisfied the requirement that a
first and third layer feature a percentage loading of at least about 20% by volume of
conductive or semiconductive particles and that a second layer features a percentage
loading of at least about 40% by volume of conductive or semiconductive particles.
Therefore, we affirm the obviousness rejection of claim 11 and of claims 12-16, which
fall therewith, over Slepian and Hyatt.
Obviousness Rejection of Claims 11-20 over Downing and Hyatt
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We address the two points of contention between the examiner and the
appellants. First, the examiner asserts, "Hyatt discloses conductive and
semiconductive particles at 70% at col. 5, lines 20-40, for the purpose of providing
overvoltage protection and to tailor the resistance to the desired value and altering the
clamping voltage, col. 9, lines 13-21. It would have been obvious in view of Hyatt to
employ particles in the claimed range in the device of Downing et al. or Slepian for the
purpose of altering the resistance and clamping voltage." (Examiner's Answer at 7.)
The appellants argue, "[n]one of these references teach the use of different layers
having different particle loadings. . . ." (Appeal Br. at 17.)
As explained regarding the obviousness rejection over Slepian and Hyatt,
claim 11 merely requires that a first and third layer feature a percentage loading of at
least about 20% by volume of conductive or semiconductive particles and that a second
layer features a percentage loading of at least about 40% by volume of conductive or
semiconductive particles. It does not require that layers feature different particle
loadings.
As also explained regarding the obviousness rejection over Slepian and Hyatt,
Hyatt's composition comprises a binder having dispersed therein at least 55% by
volume of conductive or semiconductive particles. We find that when the composition
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of Hyatt was used in the device of Downing, the combination would have featured at
least three layers, wherein each layer would have featured a percentage loading of at
least about 55% by volume of conductive or semiconductive particles. Such a loading
would have satisfied the requirement that a first and third layer feature a percentage
loading of at least about 20% by volume of conductive or semiconductive particles and
that a second layer features a percentage loading of at least about 40% by volume of
conductive or semiconductive particles. Therefore, we affirm the obviousness rejection
of claim 11 and of claims 12-16, which fall therewith, over Downing and Hyatt.
Second, admitting that Downing and Hyatt fail to disclose "a dielectric polymer or
glass in the claimed range in contact with the component," (Examiner's Answer at 9),
the examiner concludes, "[i]t would have been obvious to vary the thickness of the
insulation layer of Downing to within the claimed range for the purpose of providing a
close fit in the housing, where close jacketing is disclosed at col. 3, lines 47-50." (Id.
at 9-10). The appellants argue, "[t]here is no teaching or suggestion in either Downing,
et al., or Hyatt that this insulation cover can be used as one (Claims 17 and 18), or two
(Claims 19 and 20), layers of the protection device, at least one of which is 1.6 mils in
thickness." (Appeal Br. at 18-19.)
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Application No. 09/139,309
Claims 17 and 18 specify in pertinent part the following limitations: "a layer of
neat dielectric polymer or glass in contact with at least one of said first, second and
third layers wherein the neat dielectric polymer or glass layer is present in a thickness of
less than about 1.6 mils." Giving the claims their broadest, reasonable construction, the
limitations require a layer of neat dielectric polymer or glass featuring a thickness of
less than about 1.6 mils.
"In In re Aller, 42 CCPA 824, 220 F.2d 454, 105 USPQ 233 (1955), the [U.S.
Court of Customs and Patent Appeals] set out the rule that the discovery of an optimum
value of a variable in a known process is normally obvious." In re Antonie, 559 F.2d
618, 621, 195 USPQ 6, 8 (CCPA 1977). There are, however, exceptions to the rule.
The case "in which the parameter optimized was not recognized to be a result-effective
variable, is [one such] exception." Id. at 621, 195 USPQ at 9. See also In re Yates,
663 F.2d 1054, 1057, 211 USPQ 1149, 1151 (CCPA 1981) ("Table 1 examples, taken
as a whole, support appellant's position that degree of conversion was not recognized
to be a result-effective variable.")
Here, although the passage cited by the examiner mentions that Downing's
"unitary assembly of varistors is closely jacketed by an insulation cover 28 (FIGURE 2)
whereby the unit may be inserted into the cylindrical shell 12 and potted therein with
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Application No. 09/139,309
potting compound 14p," col. 3, ll. 47-50, the examiner fails to show that the prior art as
a whole recognized that the output of the assembly of varistors would have been
affected by adjusting the thickness of its insulation cover 28. Recognition of this
dependence is essential to the obviousness of conducting experiments to decide the
thickness that will offer an acceptable output. The examiner gives no basis for the
obviousness of the necessary experiments apart from the appellants' disclosure
thereof. Therefore, we reverse the obviousness rejection of claims 17 and 18 and of
claims 19 and 20, which respectively depend therefrom, over Downing and Hyatt.
Obviousness Rejections of Claims 17-20 over Slepian, Hyatt, and Beck
and over Downing, Hyatt, and Beck
At the outset, we note that although the appellants point out differences in what
claims 17-20 cover, (Appeal Br. at 17), this is not an argument why the claims are
separately patentable. Therefore, claims 18-20 stand or fall with representative
claim 17.
With this representation in mind, we address the two points of contention
between the examiner and the appellants. First, the appellants repeat their argument
that none of the references teach the use of different layers having different particle
loadings. To wit, they argue that "Beck, at al. also does not teach differently formulated
layers of variable voltage material." (Appeal Br. at 18.) For the reasons explained
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Application No. 09/139,309
regarding the obviousness rejection over Slepian and Hyatt, claim 17 does not require
that layers feature different particle loadings. As also explained regarding the
obviousness rejection over Slepian and Hyatt, Hyatt's loading would have satisfied the
requirement that a first and third layer feature a percentage loading of at least about
20% by volume of conductive or semiconductive particles and that a second layer
features a percentage loading of at least about 40% by volume of conductive or
semiconductive particles. Therefore, we affirm the obviousness rejection of claim 17
and of claims 18-20, which fall therewith, over Downing, Hyatt, and Beck.
Second, observing that "Beck discloses the polymer or glass layer 4 in the
claimed range at col. 2, lines 1-10 for the purpose of adjusting the voltage
characteristics," (Final Rejection at 6), the examiner asserts, "[i]t would have been
obvious in view of Beck to employ a polymer or glass layer in the device of Downing or
Slepian as modified for the purpose of adjusting the breakdown voltage." (Id.) The
appellants do not contest the combination of Beck with Downing and Hyatt. They only
argue, "Beck, et al. actually teaches away from a combination with Slepian, and from
the invention, by stating that 'discharge devices of the type in which the electrodes are
separated by solid dielectric material, such as paper or mica, are not suitable [for
applications contemplated by Beck, et al.] because the dielectric is punctured by the
discharge, thus forming an air gap which has high breakdown voltage.'" (Appeal Br.
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Application No. 09/139,309
at 18.) The appellants add, "Slepian, it will be appreciated, discloses exactly such a
discharge device, with spacer (7) of Slepian being selected of mica (see Slepian, p.2,
col. 1, 34)." (Id.)
"[P]rior art references . . . must be read as a whole and consideration must be
given where the references diverge and teach away from the claimed invention." Akzo
N.V. v. U.S. Intn'l Trade Comm'n, 808 F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed.
Cir. 1986) (citing W.L. Gore & Assocs. v. Garlock, 721 F.2d 1540, 1550, 220 USPQ
303, 311 (Fed. Cir. 1983)).
Here, Slepian discloses "disk-pile lightening arresters. . . ." P. 1, ll. 10-11. We
agree with the appellants that the spacers of such an arrester are made of mica.
Specifically, the reference "place[s] between the plates thin washers or spacers of
suitable material . . . such as mica." P. 2, ll. 31-36. Although Slepian does not mention
using a dielectric polymer or glass for the spacers of its embodiments, the reference
emphasizes, "it is obvious that my invention is not limited to the details shown and
described." P. 2, ll. 50-51. To the contrary, we find that Slepian invites changes to its
embodiments. Specifically, the reference asserts that "changes may be made in my
invention. . . ." Id. at ll. 61-62.
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Application No. 09/139,309
We further find that Beck recognize a problem facing the use of mica.
Specifically, "discharge devices of the type in which the electrodes are separated by
solid dielectric material, such as paper or mica, are not suitable for such applications
because the dielectric is punctured by the discharge, thus forming an air gap which has
high breakdown voltage." P. 2, ll. 19-24. We also find that the latter reference solves
the problem of the high breakdown voltage associated with mica by substituting a
dielectric layer. Specifically, "lower electrode has an insulating coating 4 applied to its
surf ace to constitute the dielectric layer which separates the two electrodes. This
dielectric layer is made very thin in order to provide a low breakdown voltage, and its
thickness is preferably in the range from one-half to 5 mils. . . ." P. 1, l. 54 to p. 2, l. 5.
Because Beck invites changes to it embodiments, and Beck solves the problem of the
high breakdown voltage associated with mica, we find that a suggestion, teaching, or
motivation to combine, rather than a teaching away, flows from the references
themselves. Therefore, we affirm the obviousness rejection of claim 17 and of
claims 18-20, which fall therewith, over Slepian, Hyatt, and Beck.
Obviousness Rejections of Claim 31 over Downing and Hyatt; over Downing, Hyatt, and
Beck; and over Slepian, Hyatt, and Beck
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Application No. 09/139,309
We address the main point of contention between the examiner and the
appellants. The examiner asserts, "[e]ach layer 22 of Downing or 1 of Slepian is
'distinguishable to the mind or eye as discrete'." (Examiner's Answer at 19.) The
appellants argue that the references "fail to teach or suggest a variable voltage
protection component having two differently formulated layers of variable voltage
material in combination with a first layer of neat dielectric polymer or glass (Claim 31)."
(Appeal Br. at 17.)
Claim 31 specifies in pertinent part the following limitations: "a first layer of
variable voltage protection material in contact with said layer of neat dielectric polymer
or glass and comprises a binder having dispersed therein at least about 20 % by
volume of conductive or semiconductive particles; and a second layer of variable
voltage protection material in contact with the first layer of variable voltage protection
material comprising a binder having dispersed therein conductive and/or
semiconductive particles at a 40 % by volume, which volume is different than in said
first layer." For the reasons explained regarding the indefiniteness rejection, claim 31
requires that a first layer and a second layer differ in their percentage loadings of
conductive or semiconductive particles.
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Application No. 09/139,309
Turning to the prior art, although Downing discloses "a stack of: exemplary disc-
like polycrystalline semiconductive resistive devices which in this case are chosen to be
silicon carbide varistors," col. 2, ll. 64-68, the examiner fails to show that the varistors
differ in their percentage loadings of conductive or semiconductive particles. Similarly,
although Slepian discloses that "[a] plurality of plates 1 of high-resistance material,
preferably but not necessarily containing graphite, carborundum and kaolin, are placed
in superposed relation as shown in Fig. 1," p. 2, ll. 11-15, the examiner fails to show
that the plates differ in their percentage loadings of conductive or semiconductive
particles. For its part, although Hyatt discloses a composition featuring a percentage
loading of at least about 55% by volume of conductive or semiconductive particles, the
examiner fails to show that the reference teaches using different loadings in different
layers of a device. In summary, we are persuaded that the fairest reading of the
references is to use the same loading in different layers of a device.
Furthermore, the examiner fails to allege, let alone show, that the addition of
Beck cures the aforementioned deficiency of Downing, Slepian, and Hyatt. Absent a
teaching or suggestion of a first layer and a second layer differ in their percentage
loadings of conductive or semiconductive particles, the examiner fails to present a
prima facie case of obviousness. Therefore, we reverse the obviousness rejections of
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Application No. 09/139,309
claim 31 over Downing and Hyatt, over Downing, Hyatt, and Beck; and over Slepian,
Hyatt, and Beck.
CONCLUSION
In summary, the rejection of claims 5-20 and 30-32 under 35 U.S.C. § 112, ¶ 2;
the rejection of claims 5-10 and 31 under § 102(b) over Kouchich; the rejection of
claims 9 and 10 under § 103(a) over Xu; the rejection of claims 17-20 under § 103(a)
over Downing and Hyatt are reversed. The rejections of claim 31 under § 103(a) over
Downing and Hyatt; over Downing, Hyatt, and Beck; and over Slepian, Hyatt, and Beck
are also reversed. In contrast, the rejection of claims 5-8 under § 103(a) over Xu; the
rejections of claims 11-16 under § 103(a) over Downing and Hyatt and over Slepian and
Hyatt; and the rejections of claims 17-20 under § 103(a) over Downing, Hyatt, and Beck
and over Slepian, Hyatt, and Beck are affirmed.
"Any arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences. . . ." 37 C.F.R.
§ 1.192(a)(2002). Accordingly, our affirmance is based only on the arguments made in
the briefs. Any arguments or authorities not included therein are neither before us nor
at issue but are considered waived. No time for taking any action connected with this
appeal may be extended under 37 C.F.R. § 1.136(a).
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Application No. 09/139,309
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
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Application No. 09/139,309
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