Ex Parte Gandrud

Patent Trial and Appeal Board

Mar 4, 2013

11145900 (P.T.A.B. Mar. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte MICHAEL D. GANDRUD

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Appeal 2010-009895
Application 11/145,900
Technology Center 2800
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Before THU A. DANG, JAMES R. HUGHES, and GREGORY J.
GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009895
Application 11/145,900

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-4 (App. Br. 2). Claims 5-7 were withdrawn (id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 1 follows:
1. A power switching assembly, comprising:

an insulating substrate;

a circuit board mounted on the insulating substrate;

a power switching transistor having a mounting surface
mounted to the circuit board and a top surface located opposite
the mounting surface; and

a heat sink associated with the top surface of the power
switching transistor, the heat sink operating to dissipate thermal
energy from the top surface of the power switching transistor.

Claims 1, 2, and 4 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Smith (U.S. Patent 5,694,297) in view of Kuriyama (U.S.
Patent 6,040,229) (Ans. 3-4).
Claim 3 stands rejected under 35 U.S.C. 103(a) as being unpatentable
over Smith in view of Kuriyama and further in view of Bunyan (U.S. Patent
6,956,739) (Ans. 4).

Appeal 2010-009895
Application 11/145,900

3
FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

ISSUE
Appellant’s responses to the Examiner’s positions present the
following issue:
Did the Examiner err in finding that Smith teaches “a circuit board
mounted on the insulating substrate; [and] a power switching transistor
having a mounting surface mounted to the circuit board and a top surface
located opposite the mounting surface,” as recited in independent claim 1?

ANALYSIS
Appellant contend that the Examiner erred in rejecting independent
claim 1 as obvious because Smith does not teach the claim limitations
quoted above (App. Br. 3-7). In support of this contention, Appellant argues
that “Smith as one of ordinary skill in the art chose not to describe the
apparatus of numeral 108 as a circuit board as Smith did not consider the
device of numeral 108 to be a circuit board” (id. at 4-5). In particular,
“Appellant asserts that one skilled in the art would not consider an IC socket
108 a circuit board. Specifically, the IC socket 108 does not contain circuits
and thus cannot be considered a circuit board” (App. Br. 4).
The Examiner concluded, however, that the IC socket 108 in Smith is
a circuit board because it contains “various components (figure 2, column 5,
lines 13-15) mounted on and electrically connected by the circuits, traces or
wirings/patterns (see figures 2-3) on/in the portion (108b)” (Ans. 6). We
Appeal 2010-009895
Application 11/145,900

4
agree with the Examiner’s conclusion and underlying findings of fact. Our
reviewing court requires us to give a claim its broadest reasonable meaning
consistent with the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997). Appellant’s Specification discloses a circuit board 20 having an
electrical component attached by a lead (Fig. 2; p. 4, ll. 20-25). Like the
circuit board 20 in Appellant’s Specification, the IC socket 108 of Smith is
shown as a board (Smith, FIG. 2). Moreover, Smith’s IC socket 108
includes various electrical components (e.g., capacitors, amplifiers,
transistors) connected in a circuit (id., FIG. 3). Accordingly, under the
broadest reasonable claim construction consistent with the Specification,
Smith’s IC socket 108 qualifies as the circuit board required by claim 1.
Appellant also argues that Smith, rather than teaching a transistor
mounted to a circuit board as required by claim 1, “teaches a DC to DC
switching power supply regulator 116 that is electrically coupled to the
voltage supply bond pads of IC package 102 by means of thin film metal
tracks that run between portions 108a and 108b and substrate 126” (App. Br.
7). Appellant further argues that “[t]he DC to DC switching power supply
116 does not have a mounting surface that is mounted on a circuit board”
(id.).
The Examiner, however, concluded that Smith teaches a “switching
power regulator (116) having a mounting surface (a bottom surface)
mounted to the at least portion of PCB (portion 108b, explained as above)
and a top surface of the regulator opposite to the mounting surface, which is
mounted on the surface of the portion 108b” (Ans. 6). We agree with the
Examiner’s conclusion. Smith illustrates a power regulator having a
mounting surface attached to an IC socket 108 (FIG. 2). Moreover, as
Appeal 2010-009895
Application 11/145,900

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explained supra, Smith’s IC socket qualifies as the claimed circuit board.
Accordingly, we find no error in the Examiner’s conclusion that Smith
teaches a transistor having a mounting surface attached to a circuit board and
in the Examiner’s obviousness rejection of claim 1 as well as claims 2-4
dependent therefrom because Appellant did not set forth any separate
patentability arguments for those dependent claims (see App. Br. 7-8).

DECISION
We affirm the Examiner’s decision rejecting claims 1-4 as
unpatentable under 35 U.S.C. § 103(a).
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).

AFFIRMED

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