10328216 (B.P.A.I. May. 21, 2012)

Ex Parte Lavenuta

Board of Patent Appeals and InterferencesMay 21, 2012

10328216 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/328,216 12/23/2002 Gregg J. Lavenuta 1239-001B 8755 96056 7590 05/21/2012 Florek & Endres PLLC 1156 Avenue of the Americas Suite 600 New York, NY 10036 EXAMINER LEE, KYUNG S ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 05/21/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GREGG J. LAVENUTA ________________ Appeal 2009-010932 Application 10/328,216 Technology Center 2800 _________________ Before THOMAS S. HAHN, BRADLEY W. BAUMEISTER, ANDREW CALDWELL, Administrative Patent Judges. HAHN, Administrative Patent Judge. DECISION ON APPEAL Appellant invokes our review under 35 U.S.C. § 134(a) from the final rejection of claims 1-4, 6-8, 10, and 18-29. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-010932 Application 10/328,216 2 Exemplary Claims Appealed independent claim 1 is exemplary and reads: 1. A thermistor comprising: (a) a semiconductor body comprising two opposed surfaces; (b) a first electrode layer deposited on at least a portion of said opposed surfaces of the semiconductor body, said first layer being formed of a first electrode material comprising a conductive metal taken from the group consisting of Au, Ag, Pt, Pd and combinations and alloys thereof and having a thickness of greater than 5 micrometers; (c) a second electrode layer deposited outward of said first layer, said second layer being formed of a second electrode material comprising Ti, said second layer having a thickness of not more than 5 micrometers; and (d) a third electrode layer deposited outward of said second layer, said third layer being formed of a third electrode material comprising Pt, said third layer having a thickness of not more than 5 micrometers. Rejections The Examiner, under 35 U.S.C. § 103(a), rejected: 1. Claims 1-4, 6-8, 10, and 18-29 as being unpatentable over Kahr (DE 39 00 787 A1; July 19, 1990) and Chivukula (US 5,789,268; Aug. 4, 1998) or Inaba (US 5,793,788; Aug. 11, 1998) (Ans. 3-5); and 2. Claims 1-4, 6-8, 10, and 18-29 as being unpatentable over Kahr and Ruggiero (US 3,905,094; Sept. 16, 1975) or Kahn (US 3,716,407; Feb. 13, 1973) (Ans.6). Appeal 2009-010932 Application 10/328,216 3 Pivotal Contentions Appellant contends the Examiner erred under 35 U.S.C. § 103(a) because (1) “the thickness of Kahr and the materials of either Chivukula or Inaba requires an improper picking and choosing of references through impermissible hindsight” (App. Br. 4), and (2) an ordinarily skilled artisan “having the teachings of Kahr and Ruggiero or Kahn before them would not derive the present claimed invention . . . except through the use of hindsight . . . (App. Br. 9). ANALYSIS Obviousness Rejection over Kahr and Chivukula or Inaba This obviousness rejection has been reviewed in light of Appellant’s contention that the Examiner’s combination of references results from improper hindsight (App. Br. 4). We agree with Appellant. For example, Kahr discloses a four layer electrode (page 3, lines 1-6). The Examiner concludes the four layers “include[] at least a three layer system” (Ans. 4) and that a substituted three layer system could be read on by the appealed claims. We disagree with the Examiner’s unsupported substitution and will not sustain the rejection. Obviousness Rejection over Kahr and Ruggiero or Kahn This obviousness rejection has been reviewed in light of Appellant’s contention that the Examiner’s combination of references results from improper hindsight (App. Br. 9). In accord with the above analysis, we agree with Appellant and will not sustain the rejection. Appeal 2009-010932 Application 10/328,216 4 CONCLUSIONS Appellant has established that the Examiner erred under 35 U.S.C. § 103(a) in rejecting claims 1-4, 6-8, 10, and 18-29 as being obvious over (1) Kahr and Chivukula or Inaba, and (2) Kahr and Ruggiero or Kahn. ORDER The Examiner’s decision rejecting claims 1-4, 6-8, 10, and 18-29 is reversed. REVERSED rwk