Ex parte Wieloch

Board of Patent Appeals and Interferences

May 26, 1999

08292491 (B.P.A.I. May. 26, 1999)

Application for patent filed August 18, 1994.1
1
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not binding precedent of the Board.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 CHRISTOPHER J. WIELOCH
__________
Appeal No. 96-3357
Application 08/292,4911
___________
ON BRIEF
___________
Before BARRETT, RUGGIERO and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5 and 23, claims 6 through 16 are canceled and claims
Appeal No. 96-3357
Application 08/292,491
There were two amendments after the final rejection. 2
Amendment filed on November 7, 1995, [Paper No. 7] was not
entered in the record, but that filed on March 12, 1996,
[Paper No. 12] was entered.
2
17 through 22 have been indicated as allowable. 2
The invention concerns a laminated or multilayer circuit
board having an integral insulated mounting area for a
packaged electrical device and a heat sink area. The surface
mount package can be soldered directly to the mounting area,
and a heat sink can be soldered directly to the heat sink
area. The package contains an electrical device. The
invention eliminates any need for hardware for attaching the
heat sink and the surface mount package to the multilayer
circuit board.
Representative claim 1 is reproduced as follows:
1. A multilayer circuit board for receiving a surface
mount package having a lead frame, the multilayer circuit
board comprising:
a first circuit board layer having a first top surface
and a first bottom surface, the first top surface having a
surface mount pad for physical and electrical connection to
the lead frame, the bottom surface having a heat sink area
opposite the surface mount pad; and
a second circuit board layer having a second top surface
Appeal No. 96-3357
Application 08/292,491
The Examiner has withdrawn all the rejections under 353
U.S.C. § 112, second paragraph, thus leaving only these
rejections under 35 U.S.C. § 102 for appeal here.
3
and a second bottom surface, the second bottom surface being
attached to the first top surface, the second circuit board
layer being configured so that the surface mount pad is
exposed, whereby heat is dissipated from the lead frame of the
surface mount package through the first circuit board layer to
the heat sink area.
The references relied on by the examiner are:
Brown 4,729,061 Mar. 1, 1988
Kuo et al.(Kuo) 4,731,701 Mar. 15, 1988
Claims 1 through 5 and 23 stand rejected under 35 U.S.C.
§ 102. As evidence for the § 102 rejection, the Examiner3
offers in the alternative Kuo and Brown.
Reference is made to Appellant’s brief and the Examiner's
answer for their respective positions.
OPINION
We have considered the record before us. We will reverse
the rejections of claims 1 through 5 and 23.
Rejections Under 35 U.S.C. § 102
Appeal No. 96-3357
Application 08/292,491
4
At the outset, we note the fundamental difference between
the applied prior art and the invention as interpreted to be
claimed. The invention requires the capability of receiving
an electrical package device surface mounted on a mounting
area on a first layer of a multilayer circuit board. This is
clear from Appellant’s statements in the specification and
brief. Thus, for example, Appellant states that “The mounting
layer has a pad configured for the semiconductor device on a
first side and a heat sink area for the heat sink on a second
side.” [Specification, page 3, lines 20 to 23]. On page 5 of
specification, Appellant says that “... circuit board 10
includes a surface mount electrical device 28 mounted on
contact area 22 of board 10 within recess 27.” [Lines 15 to
17]. Again, Appellant clarifies the invention by stating that
“More particularly, Appellant provided a multilayer circuit
board having a surface mount pad located in a cavity in the
multilayer circuit board.” [Brief, page 13]. The applied
prior art does not deal with surface mounting. Nevertheless,
we analyze below the rejection of claims 1 through 5 and 23 as
presented by the Examiner.
We have considered the rejections presented by the
Appeal No. 96-3357
Application 08/292,491
5
Examiner under 35 U.S.C. § 102 over Kuo or Brown. [Answer,
page 3]. We have likewise reviewed Appellant’s argument
regarding each of these applied references. [Brief, pages 10
to 14]. We now consider the rejection of claim 1. The
Examiner, on page 3 of the answer, states: “Concerning claim 1
... and Kuo et al [sic], first layer 22, 24, 32, etc [sic]
with pad 38 and a bottom `area’ for spreader 18 is shown. The
second layer reads on any of the upper 32 layers which are
shorter and expose the package through the central opening.”
The Examiner in his interpretation of the claim has ignored
the term “surface mount package” in the preamble of the claim.
This would have been justified if this term or its resultant
were not incorporated in the body of the claim. But, here, we
agree with Appellant in that the invention is dedicated to the
efficient surface mounting of an electronic device on a
circuit board to accomplish maximum heat transfer without the
need for additional hardware as is required by the prior art.
[Brief, pages 11 and 12]. A surface mounted device or package
is defined as “a device, the entire body of which projects in
front of the mounting surface.” The IEEE Standard Dictionary
of Electrical & Electronic Terms, Sixth Edition, published by
Appeal No. 96-3357
Application 08/292,491
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The Institute of Electrical and Electronic Engineers, Inc.
1996. This, combined with the specification and the brief as
discussed at the outset of this opinion, calls for a “surface
mounted device” to be directly sitting on the mounting
surface. Thus, the limitation “...the first top surface
having a surface mount pad for physical and electrical
connection to the lead frame,” [claim 2, lines 5 to 7] is not
met by Kuo. Even if we ignore the fact that Kuo does not show
a lead frame and assume that an electrical and physical
connection is provided by the wires 36 as they are bonded to
pad 38, the configuration of pad 38 on the bonding tier 42 of
layer 32 is such that die 14 cannot be surface mounted on it
and still accomplish the needed heat transfer to the spreader
18 with any efficiency. We, therefore, conclude that Kuo is
not directed to a circuit board for receiving a surface mount
package.
Next, we consider the rejection under 35 U.S.C. § 102
over Brown. The Examiner, on page 3 of the answer, states
that “Concerning Brown and claim 1 ... figure 10 is relevant.”
We again agree with the Appellant for the same rationale as
for Kuo. Die 154 in Brown does not make a contact with pad
Appeal No. 96-3357
Application 08/292,491
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132 to meet the limitation of “...the top surface having a
surface mount pad for physical and electrical connection to
the lead frame,...” [Claim 1, lines 5 to 7].
Anticipation under 35 U.S.C. § 102 requires that all
elements of the claimed invention be described in a single
reference. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990). Here, none of the applied references
meets the limitations discussed above. We, therefore, reverse
the Examiner’s rejection of claim 1 under 35 U.S.C. § 102 over
Kuo or Brown. Since, the other independent claim, namely 23
and the dependent claims 2 through 5 contain the same
limitations as claim 1, their rejection under the same ground
is also reversed.
Appeal No. 96-3357
Application 08/292,491
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DECISION
The decision of the Examiner rejecting claims 1 through 5
and 23 under 35 U.S.C. § 102 over Kuo or Brown is reversed.
REVERSED
)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
PSL/caw
Appeal No. 96-3357
Application 08/292,491
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Allen Bradley Company Inc.
Attn: John J. Horn
Patent Dept 704P Floor 8 T 29
1201 South Second Street
Milwaukee, WI 53204