Ex Parte Yamada

Board of Patent Appeals and Interferences

Jan 12, 2006

09954149 (B.P.A.I. Jan. 12, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Junji Yamada
____________

Appeal No. 2005-2626
Application No. 09/954,149
____________

Heard: November 16, 2005
____________

Before KRASS, DIXON, and BARRY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-6,
which are all of the claims pending in this application.

We REVERSE.
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Application No. 09/954,149

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BACKGROUND
Appellant's invention relates to a power semiconductor device. A copy of
independent claim 1 is reproduced below.
1. A power semiconductor device with an electrode structure for taking out
electrodes from a power semiconductor element mounted on one of a plurality of
first circuit patterns formed on an insulating substrate inside of a case up to an
external-connection terminal exposed outside of the case, wherein

the external-connection terminal is insert-molded into the case and
exposed outside of the case at one end of the terminal while the terminal
includes a junction portion having a junction face joined at its other end to a
second circuit pattern different from the first circuit pattern on which the power
semiconductor element is mounted and directly connected with the power
semiconductor element through a wire member bonded to the face opposite to
the junction face of the terminal junction portion.

The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Mangiagli et al. (Mangiagli) 6,320,258 Nov. 20, 2001
(filed Mar. 23, 1994)

Appellant’s Admitted Prior Art (AAPA) Figures 7 and 8 and pp 1-3 of the specification.
Claims 1-6 stand rejected under 35 U.S.C. § 103 as being unpatentable over
AAPA in view of Mangiagli.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the Answer
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(mailed Nov. 17, 2003) for the examiner's reasoning in support of the rejections, and to
the brief (filed Jul. 23, 2003) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
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teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on 35 U.S.C.
§ 103 must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988).
When determining obviousness, “the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’” In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434-44 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
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‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact.” Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d
1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations of independent claim 1. Appellant argues that neither the AAPA nor
Mangiagli teach or suggest the “junction portion” and “junction face” as recited in the
language of independent claim 1. Independent claim 1 recites that the “junction portion
having a junction face joined at its other end to a second circuit pattern different from
the first circuit pattern on which the power semiconductor element is mounted and
directly connected with the power semiconductor element through a wire member
bonded to the face opposite to the junction face of the terminal junction portion.” From
our review of the teachings of the AAPA and Mangiagli, we find no teaching or fair
suggestion of a junction face directly connected to a circuit pattern and the opposite
face connected with the power semiconductor element through a wire member as
required by the instant claimed invention. Nor do we find any convincing line of
reasoning why it would have been obvious to one of ordinary skill in the art to have
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modified the express teachings of AAPA or Mangiagli to have arrived at the claimed
invention without reliance upon hindsight to reconstruct the claimed invention.
At pages 4-5 of the Answer, the examiner maintains that
Mangiagli et al. disclose in figure 2, external connection leads 28 and 29 have
junction portions (the lower part inserted into the package shown in figure 4 of
the reference), which one of ordinary skill in the art would have connected with
the power semiconductor element 46 of figure 7 of the admitted prior art, when
incorporated and utilized as an external connective lead in figure 7, and the
opposite side of the connective lead would have been joined with the circuit
pattern 43 (of figure 7). Therefore, it would have been obvious to modify the
admitted prior art, figures 7 and 8, by using a connective lead as shown in the
Mangiagli et al. reference, thereby satisfying the requirements of claim 1.

While we agree with the examiner that the leads of Mangiagli may be implemented in
the device of the AAPA, we still find no teaching or suggestion to use both the upper
and lower junctions faces for the connection to the power semiconductor elements as
recited in independent claim 1. Therefore, we cannot sustain the rejection of
independent claim 1 and its dependent claims 2-6.

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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-6 under 35 U.S.C.
§ 103 is REVERSED.

REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

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OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA , VA 22314