Taiyo Yuden Co., Ltd.

Patent Trials and Appeals Board

Mar 2, 2021

2020006724 (P.T.A.B. Mar. 2, 2021)

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.
15/467,395 03/23/2017 Tatsuro Sawatari MIN.191TREI1 7573
23557 7590 03/02/2021
SALIWANCHIK, LLOYD & EISENSCHENK
A PROFESSIONAL ASSOCIATION
P.O. BOX 142950
GAINESVILLE, FL 32614
EXAMINER
WHITTINGTON, KENNETH
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
euspto@slepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TATSURO SAWATARI, MASASHI MIYAZAKI,
YOSHIKI HAMADA, YUICHI SUGIYAMA, and KAZUAKI IDA
___________

Appeal 2020-006724
Application 15/467,395
Technology Center 3900
____________

Before ALLEN R. MACDONALD, JOHN A. JEFFERY, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-006724
Application 15/467,395
2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject reissue claims 1, 3–5, and 7. Claims 5 and 7
are new claims and claims 2 and 6 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The instant application is a reissue application of US 8,988,885 B2,
issued March 24, 2015, based on Application No. 14/073,287, filed on
November 6, 2013.

CLAIMED SUBJECT MATTER
The claims are directed to an electronic circuit module, which
includes a substrate with a built-in component, a mount component mounted
on the substrate with a built-in component, a sealing portion covering the
mount component, and a shield made of a conductive synthetic resin
covering the sealing portion. (Abstract.)
Reissue claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A substrate for an electronic circuit module,
comprising:
a core layer made of a metal having corners and side
faces and also functioning as ground wiring;
an outer cover made of an insulating synthetic resin
covering the corners and the side faces and having a first
surface;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Taiyo
Yuden Co., Ltd. (Appeal Br. 1.)
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a first protrusion having a first end face exposed at the
outer cover and a second surface adjacent to the first surface,
the first protrusion being formed away from the corners of the
side faces to protrude outwardly away from an outer surface of
a first side face of the side faces in a lateral direction
perpendicular to the outer surface of the first side face; and
a second protrusion that protrudes outwardly from the
outer surface of the first side face in the lateral direction and
having a second end face exposed at the outer cover, the second
protrusion being disposed away from the corners at a height
position different from a position of the first protrusion in a
thickness direction of the core layer, the thickness direction
being perpendicular to the lateral direction,
wherein the side faces of the core layer comprise the first
side face and a second side face adjacent to the first side face,
wherein the corners of the core layer comprise a first
corner disposed between the first side face and the second side
face,
wherein the first protrusion includes a plurality of first
protrusions disposed on the side faces at a same height position
as each other in the thickness direction of the core layer, one of
the first protrusions of the plurality of first protrusions being
disposed on the first side face closer to the first corner than is
the second protrusion on the first side face, and
wherein the second protrusion includes a plurality of
second protrusions disposed on the side faces at a same height
position as each other in the thickness direction of the core
layer, one of the second protrusions of the plurality of second
protrusions being disposed on the second side face closer to the
first corner than is the first protrusion, of the plurality of
protrusions, on the second side face.

REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 251 as not complying with
the original patent requirement.
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Application 15/467,395
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Claims 1, 3–5, and 7 stand rejected under 35 U.S.C. § 251 as being
based upon a defective reissue declaration.
The Examiner has withdrawn the rejection of claim 1 under 35 U.S.C.
§ 102. (Ans. 3.)

OPINION
§ 251 Rejection—Original Patent
We are persuaded by Appellant’s arguments (Appeal Br. 4–5) that
independent reissue claim 1 complies with the original patent requirement
under 35 U.S.C. § 251.
The Examiner rejected independent reissue claim 1 under 35 U.S.C.
§ 251 as not complying with the original patent requirement. (Final Act. 5–
6.) In particular, the Examiner determined the following:
Such an electronic module . . . is shown in FIGS. 1 and 2 of the
885 Patent wherein the substrate with a build-in component is
shown as item 11 a with build-in component 11 b, a mount
component 12, a sealing portion 13 and a shield 14.
(Id. at 5.)
There is no disclosure or discussion of the disclosed invention
being the substrate alone without regard to the mount
component, the sealing portion and the shield. Furthermore,
there is no discussion or support for the substrate portion of the
electronic module to be without a built-in component.
(Id. at 5–6; see also Ans. 6.) Accordingly, the Examiner determined that
the “reissue claims as broadened are not fully and unequivocally supported
in the original patent as a separate invention and thus . . . these claims do
not comply with the original patent requirement.” (Final Act. 6.) We do not
agree.
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With respect to the “original patent” (or “same invention”) standard,
the Federal Circuit has articulated the following:
The original patent requirement is well-established, being
recognized in the reissue statute and longstanding Supreme
Court jurisprudence. . . . Supreme Court cases have recognized
this requirement for more than 150 years. . . . The Supreme
Court’s definitive explanation of the original patent requirement
appears in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon
Chemicals Corp., 315 U.S. 668, 62 S.Ct. 839, 86 L.Ed. 1105
(1942).
Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358–59
(2014) (additional citations omitted).
The Supreme Court’s articulation of the “same
invention” test in Industrial Chemicals was in the context of 35
U.S.C. § 64, which had slightly different language from the
current reissue statute, 35 U.S.C. § 251. . . .
Despite the change in language relating to the “same
invention” requirement, it appears that no change in substance
was intended. There is nothing in the statutory language or
legislative history suggesting that Congress intended to
overturn the long line of Supreme Court cases culminating in
Industrial Chemicals by this change in language.
Antares Pharma, 771 F.3d at 1360.
[O]ur cases explain[] that the Industrial Chemicals standard is
analogous to the written description requirement, which, as our
en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly &
Co., 598 F.3d 1336 (Fed. Cir. 2010) made clear, requires that
the patent description “clearly allow persons of ordinary skill in
the art to recognize that the inventor invented what is claimed.”
Id. at 1351. Whether or not the written description requirement
of § 112 was satisfied here, Industrial Chemicals made clear
that, for § 251, “it is not enough that an invention might have
been claimed in the original patent because it was suggested or
indicated in the specification.” 315 U.S. at 676, 62 S.Ct. 839.
Rather, the specification must clearly and unequivocally
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disclose the newly claimed invention as a separate invention.
Id.
Antares Pharma, 771 F.3d at 1362 (citations omitted)(emphasis added).
In Forum US, the Federal Circuit reiterated its analysis in Antares,
stating:
It is well settled that for broadening reissue claims, “it is
not enough that an invention might have been claimed in the
original patent because it was suggested or indicated in the
specification.” Indus. Chems., 315 U.S. at 676, 62 S.Ct. 839
(interpreting 35 U.S.C. § 64 (1934)). The Supreme Court
described this standard in nearly identical language almost fifty
years before Industrial Chemicals. See Corbin Cabinet Lock
Co. v. Eagle Lock Co., 150 U.S. 38, 42–43, 14 S.Ct. 28, 37
L.Ed. 989 (1893) (“[T]o warrant new and broader claims in a
reissue, such claims must not be merely suggested or indicated
in the original specification, drawings, or models, but it must
further appear from the original patent that they constitute parts
or portions of the invention, which were intended or sought to
be covered or secured by such original patent.”). Congress
codified this longstanding requirement, which became known
as the “same invention” requirement. Antares, 771 F.3d at
1359–60 (quoting 35 U.S.C. § 64 (1946)); see, e.g., Section 53,
Patent Act of 1870, 16 Stat. 198 (1870) (“[T]he commissioner
shall . . . cause a new patent for the same invention . . . to be
issued to the patentee.”).
With the passage of the 1952 Patent Act, Congress
revised the statutory language from “the same invention” to
“the original patent.” Antares, 771 F.3d at 1360; 35 U.S.C.
§ 251 (1952). Despite this revision, case law has not suggested
that the 1952 Patent Act’s revised statutory language
substantively changed “the ‘same invention’ requirement or that
the standard of Industrial Chemicals has in any way been
altered by the legislative changes.” Antares, 771 F.3d at 1360–
61. Thus, for broadening reissue claims, the specification of the
original patent must do more than merely suggest or indicate
the invention recited in reissue claims; “[i]t must appear from
the face of the instrument that what is covered by the reissue
was intended to have been covered and secured by the
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original.” Indus. Chems., 315 U.S. at 676, 62 S.Ct. 839
(emphasis added). Stated differently, the original patent “must
clearly and unequivocally disclose the newly claimed invention
as a separate invention.” Antares, 771 F.3d at 1362.
Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1351–52 (Fed. Cir.
2019) (emphases added).
To determine if the reissue claim 1 is “clearly and unequivocally”
disclosed as a separate invention, in compliance with the Industrial
Chemicals standard, we turn to the Specification of the ’885 patent.
Independent reissue claim 1 is reproduced below, with underlining
and bracketing to indicate claim amendments:
1. [An]A substrate for an electronic circuit module,
comprising:
[a substrate with built-in component having;]
a core layer made of a metal having [a storage portion
storing a built-in component,] corners and side faces and also
functioning as ground wiring;
an outer cover made of an insulating synthetic resin
covering the corners and the side faces and having a first
surface; [and]
a first protrusion [made of the metal] having a first end
face exposed at the outer cover and a second surface adjacent to
the first surface, the first protrusion being formed away from
the corners of the side faces to protrude outwardly away from
an outer surface of a first side face of the side faces in a lateral
direction perpendicular to the outer surface of the first side face;
and
[a mount component mounted on the substrate with built-
in component;
a sealing portion covering the mount component; and
a shield made of a conductive synthetic resin covering
the sealing portion having a third surface bonded to the first
surface and the second surface]
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a second protrusion that protrudes outwardly from the
outer surface of the first side face in the lateral direction and
having a second end face exposed at the outer cover, the second
protrusion being disposed away from the corners at a height
position different from a position of the first protrusion in a
thickness direction of the core layer, the thickness direction
being perpendicular to the lateral direction,
wherein the side faces of the core layer comprise the first
side face and a second side face adjacent to the first side face,
wherein the corners of the core layer comprise a first
corner disposed between the first side face and the second side
face,
wherein the first protrusion includes a plurality of first
protrusions disposed on the side faces at a same height position
as each other in the thickness direction of the core layer, one of
the first protrusions of the plurality of first protrusions being
disposed on the first side face closer to the first corner than is
the second protrusion on the first side face, and
wherein the second protrusion includes a plurality of
second protrusions disposed on the side faces at a same height
position as each other in the thickness direction of the core
layer, one of the second protrusions of the plurality of second
protrusions being disposed on the second side face closer to the
first corner than is the first protrusion, of the plurality of
protrusions, on the second side face.
(Appeal Br. 10–11 (Claims App.).)
Thus, rather than reciting a “circuit module” as in the originally issued
claim 1, reissue claim 1 has been amended to recite a “substrate” having the
following limitations: (i) “a core layer”; (ii) “an outer cover”; (iii) “a first
protrusion” extending from the core layer; and (iv) “a second protrusion”
extending from the core layer. An analysis of the Specification of the ’885
patent indicates that such substrate 11 includes an abundance of references
to the additional features of core layer 11a, outer cover 11p, first protrusion
11a4, and first protrusion 11a5.
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In particular, the “Abstract” of the ’885 patent discloses the following:
The substrate with built-in component has a core layer made of
a metal, an outer cover made of an insulating synthetic resin,
and a first protrusion. The core layer has comers and side faces
The core layer has comers and side faces. The outer cover
covers the corners and the side faces, and has a first surface.
The first protrusion has a first end face exposed at the outer
cover and a second surface adjacent to the first surface, and is
formed away from the corners of the side faces to protrude
outwardly.
(Abstract (emphases added).)
Similarly, in the “Summary” section, the ’885 patent discloses the
following:
The substrate with built-in component has a core layer
made of a metal, an outer cover made of an insulating synthetic
resin, and a first protrusion. The core layer has corners and
side faces, and also functions as ground wiring. The outer
cover covers the corners and the side faces, and has a first
surface. The first protrusion has a first end face exposed at the
outer cover and a second surface adjacent to the first surface,
and is formed away from the corners of the side faces to
protrude outwardly.
(Col. 2, ll. 8–16.)
In reference to Figures 1–5, which illustrate the “best mode
embodiments” (col. 2, ll. 47–49), the ’885 patent discloses the following:
The core layer 11a has a substantially rectangular shape
at an upper contour, and has four corners 11aC and four side
faces 11a3. The core layer 11a has first protrusions 11a4 and
second protrusions 11a5 that protrude outwardly from four side
faces 11a3. Two first protrusions 11a4 and two second
protrusions 11a5 are integrally formed on the respective side
faces 11a3.
The first protrusions 11a4 are positioned at an upper side
of the core layer 11a in a thickness direction, and the second
protrusions 11a5 are positioned at lower side of the core layer
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11a in the thickness direction. The first protrusions 11a4 and
the second protrusions 11a5 are arranged alternately staggered
in the respective side faces 11a3 at spaces CL in a direction
orthogonal to the thickness direction of the core layer 11a.
The first protrusions 11a4 and the second protrusions
11a5 are rectangular parallelepiped. A width W11a4 of the
first protrusion 11a4 and a width W11a5 of the second
protrusion 11a5 are almost same, and are within a range of 200
to 600 μm, for example. The space CL therebetween is also
within a range of 200 to 600 μm, for example. A height H11a4
of the first protrusion 11a4 is lower than a height H11a5 of the
second protrusion 11a5, the height H11a4 of the first
protrusion 11a4 is within a range of 50 to 200 μm, for example,
and the height H11a5 of the second protrusion 11a5 is within a
range of 100 to 300 μm, for example.
(Col. 4, ll. 38–63 (emphases added).)
With respect to “Alternate Embodiment 1,” the ’885 patent discloses
the following:
In the above-mentioned embodiments, the two first
protrusions 11a4 and the two second protrusions 11a5 are
disposed at each side face 11a3 of the core layer 11a.
However, the total number of the first protrusions 11a4 and the
second protrusions 11a5 may be 2, 3, or 5 or more. Even when
the number of the first protrusions 11a4 and the second
protrusions 11a5 disposed at each side face 11a3 is not the
same or the first protrusions 11a4 and the second protrusions
11a5 are not arranged alternately, the actions (1) to (5) can be
similarly provided. Also, although the core layer 11a has a
substantially rectangular shape at the upper contour, the actions
(1) to (5) can be similarly provided as long as the core layer
11a has similar the first protrusions 11a4 and the second
protrusions 11a5, even when the upper contour has other
shapes.
(Col. 10, l. 59 to col. 11, l. 5 (emphases added).)
With respect to “Alternate Embodiment 2,” the ’885 patent discloses
the following:
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In the above-mentioned embodiments, the two first
protrusions 11a4 and the two second protrusions 11a5 are
disposed at each side face 11a3 of the core layer 11a.
However, the actions (1), (2), (4) and (5) can be similarly
provided even when the second protrusions 11a5 are removed
from each side face 11a3, the total number of the first
protrusions 11a4 is changed, or the upper contour of the core
layer 11a is changed.
(Col. 11, ll. 7–14 (emphases added).)
Thus, because the ’885 patent discloses substrate 11 as including core
layer 11a, outer cover 11p, first protrusion 11a4, and first protrusion 11a5,
as a separate invention in the “Abstract”, “Summary”, the “best mode
embodiments”, “Alternate Embodiment 1,” and “Alternate Embodiment 2”,
collectively, the claimed subject matter is “clearly and unequivocally”
disclosed as a separate invention. Applying the Industrial Chemicals
standard, reissue independent claim 1 meets the “original patent” (or “same
invention”) requirement of 35 U.S.C. § 251.
Accordingly, we are persuaded by Appellant’s arguments as follows:
The elements and features of the invention of claim 1 are
discussed throughout the original patent (see, e.g.; column 2,
lines 4–21 [“Summary”]; column 4, lines 35–52 [“best mode
embodiment”]; column 5, lines 49–52; and Figure 5 of U.S.
patent No. 8,988,885 . . . .
(Appeal Br. 4.)
[F]ocusing on column 10, line 53, through column 11, line 42,
[“Alternate Embodiment 1” and “Alternate Embodiment 2”] of
the ’885 patent ignores the other sections of the ’885 patent that
more clearly describe the substrate as its own separate
invention. In particular, column 4, line 36, through column 5,
line 1 [“best mode embodiment”], of the ’885 patent discuses
many advantageous features of the substrate with no
consideration of any other elements of an electronic circuit
module, and Figure 5 shows just the substrate on its own with
no other components of an electronic circuit module (see also,
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e.g.; column 10, lines 43–46; column 9, lines 3–19; and column
3, line 25, through column 4, line 35).
(Id. at 5.)
Therefore, we do not sustain the Examiner’s rejection of reissue
claim 1 under 35 U.S.C. § 251.

§ 251 Rejection—Defective Reissue Declaration
We do not sustain the rejection claims 1, 3–5, and 7 under 35 U.S.C.
§ 251 as being based upon a defective reissue declaration for the same
reasons discussed previously with respect to the rejection of claim 1 under
35 U.S.C. § 251 as not to complying with the original patent requirement.

CONCLUSION
The Examiner’s decision rejecting claims 1, 3–5, and 7 under 35
U.S.C. § 251 is reversed.

DECISION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1 251 Original
Patent
1
1, 3–5, 7 251 Defective
Reissue
Declaration
1, 3–5, 7
Overall
Outcome
1, 3–5, 7

REVERSED