Ex Parte Singh

Patent Trial and Appeal Board

Jul 18, 2014

11437059 (P.T.A.B. Jul. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/437,059 05/18/2006 Prashant Singh LSI.176US01 (06-0119) 9626
84654 7590 07/21/2014
COCHRAN FREUND & YOUNG LLC
LSI CORPORATION
2026 CARIBOU DRIVE
SUITE 201
FORT COLLINS, CO 80525
EXAMINER
JONES, STEPHEN E
ART UNIT PAPER NUMBER
2843
MAIL DATE DELIVERY MODE
07/21/2014 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 PRASHANT SINGH
____________

Appeal 2012-003433
Application 11/437,0591
Technology Center 2800
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 5-7, 15, and 18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 According to the Appellant, the real party in interest is LSI Logic
Corporation (Appeal Brief filed December 22, 2010, hereinafter “App. Br.,”
3).

Appeal 2012-003433
Application 11/437,059

2
BACKGROUND
The invention relates to a system (i.e., an apparatus) and a method for
impedance matching between a semiconductor package and a board
(Specification, hereinafter “Spec.,” ¶ 9). Representative claim 1 is
reproduced from page 29 of the Appeal Brief (Claims App’x), as follows
1. A system for electrically coupling a driver package to
a load, said system comprising:
a pad that provides an electrical bonding location on said
driver package;
a bondwire, coupled to said pad, that communicates an
electrical signal from said driver package, said bondwire
causing inductive effects to said electrical signal; and
a trace, coupled to said bondwire, that communicates said
electrical signal to a load and comprises a plurality of tuning
stubs, said plurality of tuning stubs being designed to match a
first impedance of said trace to a second impedance of said
driver package and said bondwire such that said tuning stub
design particularly compensates for said inductive effects
caused by said bondwire.
The Examiner finally rejected claims 1, 5-7, 15, and 18 under 35
U.S.C. § 103(a) as unpatentable over the Appellant’s admitted prior art
(Figure 1 of the subject application) in view of Carter2 (Final Office Action
entered June 22, 2010 at 2-4; Examiner’s Answer entered October 19, 2011,
hereinafter “Ans.,” 5-12).3

2 US Patent No. 5,266,963 issued November 30, 1993.
3 The Examiner also referred to a newly-cited document identified as
“ELECTRICAL ENGINEERING TUTORIALS, Electrical Impedance,
Inductive Reactance, Capacitive Reactance” (Ans. 7). The statement of the
rejection (id. at 5), however, does not positively recite this document as part
of the evidence in support of the obviousness conclusion. Therefore, we do
not consider it. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where
a reference is relied on to support a rejection, whether or not in a ‘minor
Appeal 2012-003433
Application 11/437,059

3
DISCUSSION
The Supreme Court of the United States explained the obviousness
inquiry, as follows:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Furthermore, the
Court stated: “a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” Id. “Although common sense directs one to look
with care at a patent application that claims . . . the combination of two
known devices according to their established functions, it can be important
to identify a reason that would have prompted a person of ordinary skill . . .
to combine the elements in the way the claimed new invention does.” Id.
Applying these principles, we reverse for the reasons given on pages
11-15 of the Appeal Brief.

capacity,’ there would appear to be no excuse for not positively including
the reference in the statement of rejection.”). See also Ex parte Raske, 28
USPQ2d 1304, 1304-1305 (BPAI 1993) (“[The newly-cited references] are
not positively included in the statement of rejection, and we have considered
the issue . . . based solely on the evidence contained in [the statement of the
rejection].”).
Appeal 2012-003433
Application 11/437,059

4
ORDER
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 5-7,
15, and 18 as unpatentable over the Appellant’s admitted prior art (Figure 1
of the subject application) in view of Carter is reversed.

REVERSED

tc