Ex Parte Soyano

Patent Trial and Appeal Board

Jan 28, 2014

12232839 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/232,839 09/25/2008 Shin Soyano FUJ-062 3120
32628 7590 01/29/2014
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
GUPTA, RAJ R
ART UNIT PAPER NUMBER
2829
MAIL DATE DELIVERY MODE
01/29/2014 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
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Ex parte SHIN SOYANO
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Appeal 2011-013312
Application 12/232,839
Technology Center 2800
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013312
Application 12/232,839

2
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 102(b) of claims 1-3 and 5-11 as anticipated by
Soyano (US 2003/0015778 A1 published Jan. 23, 2003) and under 35 U.S.C.
§ 103(a) of claim 4 as unpatentable over Soyano in view of Brooks
(US 2004/0207064 A1 published Oct. 21, 2004). We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a semiconductor element 30, 31 housed within a
resin housing 40 having a cover 40b, a pin 60, and a printed substrate 70,
"wherein the printed substrate and the cover of the resin housing have
through-holes [71, 41] therein through which the pin passes to project
outwardly from the resin housing, said pin positioning the cover and the
printed substrate above the cover" (sole independent claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A semiconductor device, comprising:
a metal base plate;
a substrate disposed on the metal base plate;
at least one semiconductor element mounted on the
substrate;
a resin housing for housing the semiconductor element,
said resin housing having an external frame disposed on the
metal base plate to surround the semiconductor element, and a
cover disposed on the external frame;
at least one pin fixed on an inner part of the external
frame so that the at least one pin stands in the resin housing
inside the external frame; and
Appeal 2011-013312
Application 12/232,839

3
at least one printed substrate disposed above the cover to
be located above and outside the resin housing,
wherein the printed substrate and the cover of the resin
housing have through-holes therein through which the pin
passes to project outwardly from the resin housing, said pin
positioning the cover and the printed substrate above the cover.
Appellant's arguments concerning the § 102 rejection of claims 1-3
and 5-11 are directed to claim 1 only (see App. Br. 4-7). As a consequence,
dependent claims 2, 3, and 5-11 will stand or fall with independent claim 1.
We sustain each of the above rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments which are well expressed by
the Examiner in the Answer. The following comments are added for
emphasis.
We fully share the Examiner's finding that the claimed pin and its
positioning function are satisfied by the combination of Soyano's pin
terminals 4 and top portions 9b (Ans. 5, 7, and 8).
Appellant reveals no error in this finding by pointing out that element
9b of Soyano is characterized as a trapezoidal top portion of block member 9
rather than a pin (App. Br. 4, Reply Br. 2). As correctly explained by the
Examiner, the combination of Soyano's pin terminal 4 and trapezoidal top
portion 9b falls within an accepted definition of the claim term "pin" such
that it is reasonable and consistent with Appellant's Specification to interpret
the claimed pin as encompassing this combination. Appellant has not
provided the record before us with convincing support for interpreting
claim 1 as excluding the Soyano combination.
Appellant also fails to show error in the Examiner's finding by arguing
that Soyano's top portion 9b and pin terminal 4 do not provide guiding
Appeal 2011-013312
Application 12/232,839

4
engagement or contact with the cover and printed substrate through-holes
(App. Br. 5-6, Reply Br. 3). The Examiner convincingly refutes this
argument by explaining that claim 1 does not require any such engagement
or contact (Ans. 8). Moreover, Appellant's argument is contradicted by the
Specification teaching that direct contact between the pin and through-holes
is not required (Spec. 7:16-19).
Finally, Appellant's argument against the § 103 rejection (App. Br. 8,
Reply Br. 4) lacks persuasive merit because it does not address the
Examiner's conclusion that it would have been obvious to make the pin
terminals 4 of Soyano out of metal in view of Brooks (Ans. 7, 9).
The decision of the Examiner 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

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