Ex Parte Luk et al

Patent Trial and Appeal Board

Sep 19, 2014

12542796 (P.T.A.B. Sep. 19, 2014)

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.
12/542,796 08/18/2009 Wing K. Luk YOR920030603US2 6130
48063 7590 09/19/2014
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
SCHOENHOLTZ, JOSEPH
ART UNIT PAPER NUMBER
2893
MAIL DATE DELIVERY MODE
09/19/2014 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 WING K. LUK and ROBERT H. DENNARD
____________________

Appeal 2012-006902
Application 12/542,796
Technology Center 2800
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appellants seek review of the Examiner’s decision to reject claims 1-5
under 35 U.S.C. § 103(a) as obvious, relying upon the combination of
Voldman1 and Scott2 as evidence of the obviousness of claims 1-4 and
Assaderaghi3 and Voldman as evidence of the obviousness of claims 1-3 and
5. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).

1 Voldman et al., US 6,015,993, patented Jan. 18, 2000.
2 Scott et al., US 2002/0063263 A1, pub. May 30, 2002.
3 Assaderaghi et al., US 5,811,857, patented Sep. 22, 1998.
Appeal 2012-006902
Application 12/542,796

2
For the reasons provided in the Answer, we AFFIRM.
Appellants do not argue any claim apart from the others. We select
claim 1 as representative for deciding the issues on appeal, and we rely upon
the copy of the claim as reproduced in the Claims Appendix of the Appeal
Brief filed February 8, 2012 (Claims App’x at Br. 11).
The Examiner presents well supported findings of fact and reasons for
combining the teachings of the references in the Answer filed March 12,
2012. Contrary to the arguments of Appellants, the Examiner’s rationale
supports a finding of modifying the teachings of the primary references,
Voldman and Assaderaghi respectively, to obtain a semiconductor device of
the structure claimed. Nor have Appellants convinced us that the prior art
teaches away from the device of claim 1. “[I]n general, a reference will
teach away if it suggests that the line of development flowing from the
reference's disclosure is unlikely to be productive of the result sought by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants
point to no suggestions in the references that criticize, discredit, or otherwise
discourage the solution claimed, and the mere fact that a reference teaches
something somewhat different from Appellants’ solution does not mean the
reference teaches away from other solutions and modifications known
elsewhere in the art.

DECISION
The Examiner’s decision is affirmed.

Appeal 2012-006902
Application 12/542,796

3
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)(1).

AFFIRMED

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