Ex parte Varshney

Board of Patent Appeals and Interferences

Nov 30, 2001

08589251 (B.P.A.I. Nov. 30, 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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte USHA VARSHNEY
____________
Appeal No. 1999-2077
Application No. 08/589,251
____________
ON BRIEF
____________
Before COHEN, McQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 10 and 11. Claims 3-9 and 12-24,
the only other claims pending in this application, stand
objected to as being dependent upon a rejected claim.
BACKGROUND
The appellant’s invention relates to “reduced volume,
light weight, low profile, planar magnetic modules for
Appeal No. 1999-2077 Page 2
Application No. 08/589,251
integrated magnetic circuitry and processes for manufacturing
such magnetic modules” (specification, page 1). Claims 1 and
10 are illustrative of the invention and read as follows:
1. A magnetic module comprising a magnetic core
deposited into a cavity patterned into a non-
magnetic substrate.
10. A method for manufacturing a magnetic module
comprising the steps of patterning a cavity into a
non-magnetic substrate and depositing a magnetic
material into said cavity patterned in said non-
magnetic substrate.
The sole prior art reference relied upon by the examiner
in rejecting the appealed claims is:
Lemelson 5,064,989 Nov. 12, 1991
Claims 1 and 10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Lemelson.
Claims 2 and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lemelson.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection and
answer (Paper Nos. 9 and 14) for the examiner's complete
reasoning in support of the rejections and to the brief (Paper
No. 13) for the appellant’s arguments thereagainst.
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Application No. 08/589,251
Consistent with appellant’s underlying disclosure, we understand a1
“cavity” as used in the claims to be a hollowed out recess in the substrate.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied Lemelson reference, and to the
respective positions articulated by the appellant and the
examiner. For the reasons which follow, we cannot sustain
either of the examiner’s rejections.
Each of claims 1 and 10 expressly calls for a magnetic
core material deposited into a cavity in a non-magnetic1
substrate. Lemelson discloses an apparatus for fabricating
products such as electronic circuits or devices requiring the
selective and controlled deposition of predetermined amounts
of doping materials, conducting and semi-conducting materials
as well as insulating or isolating materials in a manner to
form a desired composite electrical device or circuit (col. 1,
lines 58-65). An example of a product fabricated with the
disclosed apparatus is a work member comprising a base 82
having an upper stratum 84 of material such as semi-conducting
material, metal or insulating material deposited thereon and a
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Application No. 08/589,251
domain 86 of material other than that forming stratum 84
deposited in an opening or cavity provided in stratum 84. The
domain material may be comprised of “any suitable metal, semi-
conducting materials or insulating material having
characteristics which are different than those of the material
defining layer 84 and may be utilized, for example, to form
part of an active element of a semiconductor device, an
insulating or isolating element or domain adjacent to or
surrounding an active element or a conducting element disposed
in cooperative relationship to other materials (not shown)
similarly deposited on or within the stratum 84" (col. 7,
lines 42-52).
Recognizing that Lemelson does not expressly disclose a
magnetic material for the domain 86, the examiner points out
that an artisan would have been aware that many metals are
magnetic and concludes that suitable metals for the domain
material 86 “would be iron or steel or nickel, which are
magnetic materials” (answer, page 4). In this case, the
examiner has not presented any factual basis to support the
conclusion that one skilled in the art at the time of
appellant’s invention would have understood from Lemelson’s
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Application No. 08/589,251
Compare In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA2
1962) (in addition to disclosing a generic chemical formula, the prior art
reference disclosed preferred substituents from which the court determined
that one skilled in the art would have at once envisaged each member of the
claimed class of compounds).
teachings that iron, steel, nickel or any other magnetic metal
would have been a suitable metal for the domain 86. In this
regard, we note that the examiner has adduced no evidence to
contradict appellant’s characterization of the state of the
art at the time of appellant’s invention wherein
“[t]raditionally, magnetic components, such as inductors and
transformers, have been built as discrete devices for
incorporation onto printed [circuit] boards” (specification,
page 1, lines 28-30).
While we are satisfied that a person skilled in the art
at the time of appellant’s invention would have been aware
that some metals are non-magnetic and other metals are
magnetic, we find nothing in the teachings of Lemelson to
support a conclusion that such a person would have at once
envisaged magnetic materials as suitable metals for the uses2
contemplated by Lemelson and the examiner has not provided any
explanation or evidence to support such a conclusion. The
evidence adduced by the examiner is thus insufficient to
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Application No. 08/589,251
establish that the subject matter of claims 1 and 10 is
anticipated by Lemelson.
We turn now to the obviousness rejection of claims 2 and
11 as being unpatentable over Lemelson. Even when obviousness
is based on a single prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings
of that reference. The motivation, suggestion or teaching may
come explicitly from statements in the prior art, the
knowledge of one of ordinary skill in the art, or, in some
cases, the nature of the problem to be solved. In addition,
the teaching, motivation or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the
references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the
art and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art.
Broad conclusory statements standing alone are not “evidence.”
See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000).
Especially when considered against the background of
appellant’s invention as described in the specification (page
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Application No. 08/589,251
1, lines 28-30), the broad teaching by Lemelson of “any
suitable metal” is insufficient in this instance to teach or
suggest a magnetic material. Therefore, the evidence relied
upon by the examiner in rejecting claims 2 and 11 is
insufficient to establish that the subject matter of these
claims would have been obvious within the meaning of 35 U.S.C.
§ 103(a).
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Application No. 08/589,251
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 10 and 11 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 08/589,251
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