Ex parte UGGE et al.

Board of Patent Appeals and Interferences

Feb 29, 2000

08161878 (B.P.A.I. Feb. 29, 2000)

The Examiner has withdrawn the rejection of claims 7 to1
11 [Answer, page 1].
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ANGELO UGGE and ROBERT PEZZANI
________________
Appeal No. 1997-0601
Application 08/161,878
________________
ON BRIEF
________________
Before THOMAS, HAIRSTON and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of claims 1 to 6 and 12 to 16,
claims 7 to 11 having been indicated to contain allowable1
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Application 08/161,878
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subject matter.
The disclosed invention relates to an overvoltage
protection circuit. The invention is particularly useful for
protecting devices attached to a standard telephone line.
Overvoltages can occur between the two telephone lines, or
between these lines and ground. Various arrangements of
semiconductive switches are disclosed, such as the two lateral
PNPN switches, to provide for the drain to ground in case of
an overvoltage situation. Additionally, the invention is an
advancement over the art because it integrates all of the
components necessary to create a three-way balanced protective
circuit into a single monolithic integrated circuit. The
invention is further illustrated by the following claim.
Claim 1 is reproduced below as representative of the
invention.
1. An overvoltage protection circuit, comprising:
first and second regions, formed within a substrate
having a first conductivity type, said first and second
regions having a second conductivity type and having the same
area;
third and fourth regions, having the first conductivity
type, formed within said first and second regions,
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Application 08/161,878
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respectively, wherein said third and fourth regions are not
continuous, having sub-areas contained within them through
which portions of said first and second regions, respectively,
are exposed,;
a fifth region, formed within the substrate, having the
second conductivity type and having an area approximately
twice that of said first region;
a sixth region, having the first conductivity type,
formed within said fifth region, wherein said sixth region is
also not continuous, also having sub-areas contained within it
through which portions of said fifth region is [sic, are]
exposed, and wherein a hole density of the sub-areas in said
sixth region is no more than one-third a respective hole
density of the sub-regions within the third and fourth
regions; and
first, second and third conductive contacts connected to
said first, second, and fifth regions, respectively, said
first contact also contacting said third region, said second
contact also contacting said fourth region, and said third
contact also contacting said sixth region;
wherein bilateral switches are formed between each pair
of said conductive contacts.
The Examiner relies on the following references:
Alonas et al. (Alonas) 4,396,932 Aug. 2, 1983
Schovanec 5,220,197 Jun. 15, 1993
(filed Mar. 24, 1992)
Ohta 5,352,905 Oct. 4, 1994
(filed Sep. 17, 1992)
Claims 4, 5 and 15 stand rejected under 35 U.S.C. § 112,
first paragraph. Claims 1, 2, 6, 12 and 16 stand rejected
Appeal No. 1997-0601
Application 08/161,878
A reply brief was filed as paper no. 12 and its entry2
was approved by the Examiner [paper no. 13] without any
further response by the Examiner.
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over Ohta under 35 U.S.C. § 103. Claims 1 to 3, 6, 12 and 16
also stand rejected over Ohta and Alonas under 35 U.S.C. §
103. Finally, claims 12 to 14 stand rejected over Ohta and
Schovanec under 35 U.S.C. § 103.
Rather than repeat the arguments of Appellants and the
Examiner, we make reference to the briefs and the answer for2
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed the Appellants' arguments set forth in the briefs.
We affirm.
Regarding the requirement for enablement, the test is
whether one skilled in the art could make and use the claimed
invention from the disclosure coupled with information known
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in the art without undue experimentation. See United States
v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether Appellants’
disclosure, considering the level of ordinary skill in the art
as of the date of Appellants’ application, would have enabled
a person of such skill to make and use Appellants’ invention
without undue experimentation. The threshold step in
resolving this issue is to determine whether the Examiner has
met his burden of proof by advancing acceptable reasoning
consistent with enablement requirement.
The Examiner asserts [answer, pages 3 to 4 and 6 to 8]
that “the back surface structure [in Figs... 4 and 5] would
recombine all minority carriers, and inject none. The
recombination would in turn prevent proper lateral thyristor
action. And at the least, applicant has not provided enabling
disclosure for such an arrangement ... ” [id. 4]. Appellants
argue at length [brief, pages 5 to 8 and reply brief, pages 2
to 4] against the Examiner’s position. Appellants explain
[id. 6 and 7] the mechanics of the flow of the carriers among
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Application 08/161,878
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the various regions and conclude by asserting [id. 7 and 8]
that “all of the above information is common knowledge to
persons skilled in the art, as these ‘four layer diodes’ or
Shockley diodes are well known.” Appellants further elaborate
on their position and state [reply brief, page 2] that
“[s]pace-charge depletion layers surround the p-n junctions
depicted in Figure 5, ... . These depletion layers are not
depicted in Figure 5, but their existence and characteristics
are thoroughly understood by those skilled in the art.” The
Examiner makes a reference [answer, pages 6 to 7] to the July
17, 1996 [sic, 1995] amendment where “Applicant [sic]
appreciates [id. 3] the detailed examination by the Examiner,
and the pointing out of an apparent error in the drawings for
figures 5 and 10. Clearly, the additional n+ region within P
regions 88 was simply omitted from the drawing. As was noted
by the examiner, ... , these regions are required to provide
the back to back switches ..., no new matter is added by these
drawing corrections.” The Examiner notes [answer, page 7] the
omission of any drawing corrections or any explanation for
this omission.
We are of the view that Appellants admitted, as the
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Examiner noted above, of an “apparent error” in the drawings
of figures 5 and 10 and proposed to make the necessary
correction, but did not. However, our opinion does not solely
rely on this admission and omission. We further note that
Appellants have provided a lengthy response to the Examiner’s
position but we find a lack of relationship of the explanation
to the specification. Instead, Appellants rely on such
assertions as [reply brief, page 2] “[t]hese depletions layers
... are thoroughly understood by those skilled in the art”, or
that [brief, pages 7 to 8] “[a]ll of the above information is
common knowledge to persons skilled in the art, as these ‘four
layer diodes’ or Shockley diodes are well known.” No
independent evidence is presented to show that the alleged
information is indeed well known. As has been well
established, attorney's arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974). Likewise, mere attorney argument
does not take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA
1977), cert. denied, 434 U.S. 854, 195 USPQ 465 (1977).
Therefore, we find that, on balance, the record supports
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Application 08/161,878
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the Examiner’s position and we sustain the rejection of claims
4, 5 and 15 under 35 U.S.C. § 112, first paragraph for lack of
enablement.
Regarding the obviousness rejections, we are guided by
the general proposition that in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976). We are further guided by the precedence of
our reviewing court that the limitations from the disclosure
are not to be imported into the claims. In re Lundberg, 244
F.2d 543, 113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d
461, 230 USPQ 438 (Fed. Cir. 1986). We also note that the
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Application 08/161,878
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arguments not made separately for any individual claim or
claims are considered waived. See 37 CFR § 1. 192 (a) and
(c). In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ
2d 1281, 1285 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued
by an appellant, looking for nonobvious distinctions over the
prior art.”); In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247,
254 (CCPA 1967) (“This court has uniformly followed the sound
rule that an issue raised below which is not argued in this
court, even if it has been properly brought here by reason of
appeal is regarded as abandoned and will not be considered.
It is our function as a court to decide disputed issues, not
to create them.”).
We now treat the rejections before us.
Claims 1, 2, 6, 12 and 16
These claims are rejected under 35 U.S.C. § 103 as being
obvious over Ohta. The Examiner contends [answer, pages 4 to
5 and 9 to 10] that Ohta (column 8) shows different size
shorts for a two terminal device. The Examiner asserts [id.
4] that “[i]t is considered that such different size shorts
would have clearly been obvious in Ohta’s 3 terminal device.”
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Application 08/161,878
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Appellants argue [brief, pages 13 to 15] that Ohta shows
different size shorts only for a two terminal device.
Appellants further argue [id. 13] that “[t]he three terminal
embodiment disclosed in Ohta is not shown to have different
size shorts in different regions.” The Examiner counters
[answer, page 9] that “t]he brief’s argument is little more
than an assertion of bare novelty, which does not address the
issue here, one of obviousness under 35 U.S.C. § 103. Clearly
the teachings by Ohta, with regard to Fig. 2 (discussed at the
top of col. 8 of Ohta), would have provided ample motivation
to similarly employ different sized holes in three-terminal
structures[,] otherwise of similar construction, as in Fig. 5
of Ohta, for similar assymmetric [sic] characteristics.”
We are persuaded by the Examiner’s reasoning. It is true
that Ohta only shows a two terminal device which can have
different size shorts, and further shows a three terminal
device having only the same size shorts. However, Ohta does
disclose the desirability of providing the two terminal device
with different size shorts [column 8, lines 1 to 31]. We find
that the same desirability of having an asymmetric current
flow in different regions in case of a two terminal device
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Application 08/161,878
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would have made it obvious for an artisan to provide different
size shorts in a three terminal device such as shown by Ohta
in Fig. 5. Therefore, we sustain the obviousness rejection of
claim 1, and hence, claims 2, 6, 12 and 16 over Ohta.
Claims 1 to 3, 6, 12 and 16
These claims are rejected as being obvious over Ohta in
view of Alonas.
At the outset, we note that Appellants have not argued
this rejection with regard to 1, 2, 6, 12 and 16. Therefore,
we sustain the rejection of 1, 2, 6, 12 and 16 over Ohta and
Alonas for the same reasons as above over Ohta alone.
With respect to claim 3, the Examiner contends [answer,
page 5] that “[i]t would have been obvious to have Ohta’s
device lateral, as in Alonas, rather than vertical.”
Appellants argue [brief, page 17] that “Alonas does nothing to
teach the existence of a three terminal device with all three
terminals on a single surface of the substrate, ... .”
We note that the Examiner is using Alonas only to show
[answer, pages 10 to 11] that “it was well-known to form
thyristor devices (Ohta, of course being a thyristor, a
combination of 4 layer PNPN structures) as lateral structures
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Application 08/161,878
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with all regions and contacts on the same surface (as
contrasted to vertical structures, with regions and contacts
on both facing surfaces.) The usual reason for forming the
devices as lateral, rather than vertical, structures, is to
permit them to be integrated, that is, to form plural devices
on the same semiconductor, see the discussion of integrated
thyristor in col. 1 of Alonas.” As far as a three terminal
device with different size shorts is concerned, that is
already shown above to be obvious over Ohta alone.
We are convinced by the Examiner’s arguments. Alonas
does show the teachings of forming various thyristors on the
same surface in an integrated fashion, and these teachings of
Alonas would have made obvious to make Ohta's device on a
single surface, as claimed. Therefore, we also sustain the
rejection of claim 3 over Ohta and Alonas.
Claims 12 to 14
These claims are rejected as being obvious over Ohta and
Schovanec. The Examiner asserts [answer, page 5] that
“[o]bviously any thyristor device has to have a suitable
package, and it would have been obvious to use for Ohta a
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conventional package with a heat sink and encapsulant and
leads extending therefrom, as illustrated by Schovanec for
thyristor devices.” Appellants have not argued these claims
separately, having elected to group them with claim 1 above.
Therefore, we sustain the obviousness rejection of claims 12
to 14 over Ohta and Schovanec.
In summary, we have sustained the rejections of claims 1
to 6 and 12 to 16. Accordingly, we affirm.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Appeal No. 1997-0601
Application 08/161,878
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Administrative Patent Judge )
Appeal No. 1997-0601
Application 08/161,878
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Dan Venglarik
Felsman, Bradley, Vaden,
Gunter & Dillon, LLP
201 Main Street
Suite 1600
Fort Worth, TX 76102