Mitsubishi Electric Corporation

Patent Trials and Appeals Board

Mar 15, 2022

2021002858 (P.T.A.B. Mar. 15, 2022)

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. 16/319,550 01/22/2019 Atsutoshi TAKADA Q243644 1038 23373 7590 03/15/2022 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER ROBINSON, KRYSTAL ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 03/15/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ATSUTOSHI TAKADA Appeal 2021-002858 Application 16/319,550 Technology Center 2800 Before KAREN M. HASTINGS, RAY LYNN P. GUEST, and SHELDON M. McGEE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11-26. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mitsubishi Electric Corporation. Appeal Br. 3. Appeal 2021-002858 Application 16/319,550 2 CLAIMED SUBJECT MATTER Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A semiconductor element holding and ignition prevention device comprising: a package that houses a power semiconductor element therein and that dissipates heat to a cooler from a first surface of the package; a plate covering a second surface of the package that opposes the first surface of the package, the plate including outer peripheral surfaces that border the outer peripheral portion of the plate and that are perpendicular to the plate; and a pressing member that presses the plate against the package to prevent oxygen inflow into the package via cracks in the package, thereby making it possible to prevent smoke emission by and ignition of the power semiconductor element. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Clemens US 5,019,942 May 28, 1991 Wekell US 5,450,284 Sept. 12, 1995 REJECTION Claims 11-262 are rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Wekell and Clemens. 2 Although the Examiner only lists claims 25, 26 in the statement of the rejection (Final Act. 3), all of claims 11-26 are rejected as Appellant states (e.g., Appeal Br. 7). Appeal 2021-002858 Application 16/319,550 3 OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We therefore sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant’s arguments focus on the function of the recited pressing member on the plate to “prevent oxygen inflow into the package”, and argues that (1) the Examiner failed to explain how Clemens inherently discloses this feature (Appeal Br. 10), (2) that the Examiner improperly relied upon design choice to modify Wekell (Appeal Br. 10-12), and (3) that Clemens’ housing 20 is not a pressing member (Appeal Br. 13). The arguments are reiterated in the Reply Brief. These arguments are not persuasive of reversible error in the Examiner’s rejection for reasons given by the Examiner (Ans. 5-8). These arguments also do not take into account the applied prior art as a whole and the inferences one of ordinary skill in the art would have made therefrom. Notably, it is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Best, Appeal 2021-002858 Application 16/319,550 4 562 F.2d 1252, 1254-56 (CCPA 1977). Appellant’s contention that the Examiner’s position is improper because the applied prior art does not discuss preventing oxygen inflow into the package is not persuasive, since the Examiner’s position was de facto premised on the semiconductor element holding device of the applied prior art Wekell/Clemens being capable of the recited function(s) (e.g., Ans. 7). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner’s determination that one of ordinary skill in the art would have used outer peripheral surfaces (that is, sidewalls) perpendicular to the flat plate portion that covers the semiconductor package of Wekell as such sidewalls are exemplified in the similar plate used to cover a semiconductor package of Clemens (e.g., Ans. 5, 7). Indeed, one of ordinary skill in the art would have readily appreciated that such sidewalls would be useful in Wekell. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant has not met the burden to show that the claimed function patentably distinguishes the claimed structure from the prior art structure of Appeal 2021-002858 Application 16/319,550 5 Wekell/Clemens.3 Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant has also not come forward with persuasive arguments or adequate evidence that the Examiner erred in characterizing the references or in concluding that the claimed combination of familiar elements for known purposes would have been obvious. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ). Appellant’s argument regarding dependent claim 23 was based on a misunderstanding of the rejection and has been adequately addressed by the Examiner (Ans. 8; Appeal Br. 14, 15). Accordingly, the Examiner’s § 103 rejection is affirmed with respect to all of the claims on appeal. CONCLUSION The Examiner’s rejection is AFFIRMED. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11-26 103 Wekell, Clemens 11-26 3 Appellant’s argument directed to Clemens’ Figure 5 (Reply Br. 6) is misdirected as Wekell’s plate is modified to have sidewalls, and Wekell’s pressing element/clamp 20 is being relied upon for pressing its plate against the package (e.g., Ans. 8). Appeal 2021-002858 Application 16/319,550 6 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED