Ex Parte Yamauchi

Patent Trial and Appeal Board

Oct 31, 2012

11585773 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/585,773 10/25/2006 Kiyoshi Yamauchi SON-3652 7745
23353 7590 10/31/2012
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
SODERHOLM, KRISTA Z
ART UNIT PAPER NUMBER
2896
MAIL DATE DELIVERY MODE
10/31/2012 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
____________________

Ex parte KIYOSHI YAMAUCHI
____________________

Appeal 2010-010010
Application 11/585,773
Technology Center 2800
____________________

Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and LARRY J.
HUME, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010010
Application 11/585,773

2
STATEMENT OF CASE
1

The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claim 1, the only claim pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellant invented a semiconductor device configured to be
provided with a semiconductor element and a method of manufacturing the
semiconductor device. Specification 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A semiconductor device, comprising:
[1] a semiconductor element;
[2] a wiring board including a connection terminal to be
electrically connected to the semiconductor element; and
a metal plate disposed between the semiconductor element and
the wiring board;
wherein the metal plate is provided with an opening for
exposing the connection terminal to the semiconductor element,
and
wherein the wiring board has a convex section protruding to the
semiconductor element side through the opening of the metal
plate, and the connection terminal is formed on the convex
section.

1
Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 19, 2009) and Reply Brief (“Reply Br.,” filed Apr. 8, 2010),
and the Examiner’s Answer (“Ans.,” mailed Feb. 17, 2010), and Final
Rejection (“Final Rej.,” mailed Mar. 10, 2009).
Appeal 2010-010010
Application 11/585,773

3
REFERENCES
The Examiner relies on the following prior art:
Khan
Kinsman
US 2002/0185750 A1
US 2006/0043611 A1
Dec. 12, 2002
Mar. 2, 2006

REJECTION
Claim 1 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Khan and Kinsman.

ISSUE
The issue of whether the Examiner erred in rejecting claim 1 under 35
U.S.C. §103(a) as being unpatentable over Khan and Kinsman turns on
whether the combination of Khan and Kinsman teaches or suggests “the
wiring board has a convex section protruding to the semiconductor element
side through the opening of the metal plate.”

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s contentions that the Examiner has erred.
We disagree with the Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.
We are not persuaded by the Appellant’s contention that Khan and
Kinsman fail to individually teach all of the features of claim 1. App. Br. 8-
Appeal 2010-010010
Application 11/585,773

4
11 and Reply Br. 6-7. The Appellant’s contention does not persuade us of
error on the part of the Examiner because the Appellant is responding to the
rejection by attacking the references separately, even though the rejection is
based on the combined teachings of the references. Nonobviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are also not persuaded by the Appellant’s contentions that the
combination of Khan and Kinsman fails to teach or suggest the features of
claim 1 and the Examiner has failed to highlight an objective evidence for
showing that a skilled artisan would have been motivated to include the
convex sections of Kinsman to the package of Khan. App. Br. 11-15 and
Reply Br. 8-11. The Appellant acknowledge the Examiner’s finding that all
of the features of claim 1 are described by the combination of Khan and
Kinsman. Reply Br. 4; table 1. We agree with these findings by the
Examiner. The Examiner further finds that a person with ordinary skill in
the art would have been motivated to combine Kinsman’s convex section
with Khan in order to raise the height of the connection terminal. Ans. 6.
We concur with the Examiner’s conclusion. Further, Appellant’s argument
that it is improper to combine references where the references teach away
from their combination (Reply Br. 10) is deemed waived as it is untimely.
2

Further, Appellant’s argument is based upon speculation that the

2
Appellants have not explained why, nor is it apparent that, this argument
was necessitated by a new point in the Answer or any other circumstance
constituting “good cause” for its belated presentation. See Ex parte Borden,
93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”
2
) (absent a showing
of good cause, the Board is not required to address argument in Reply Brief
that could have been presented in the principal Brief)
Appeal 2010-010010
Application 11/585,773

5
combination would further reduce the amount of heat spread (Reply Br. 11)
which is insufficient to demonstrate that the skilled artisan would be
discouraged from the combination. Accordingly, we do not find the
Appellant’s arguments persuasive. As such, we sustain the Examiner
rejection of claim 1.

CONCLUSIONS
The Examiner did not err in rejecting claim 1 under 35 U.S.C. §103(a) as
being unpatentable over Khan and Kinsman.

DECISION
To summarize, our decision is as follows.
 The rejection of claim 1 under 35 U.S.C. §103(a) as being
unpatentable over Khan and Kinsman is sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

ELD