10878654 (B.P.A.I. May. 31, 2012)

Ex Parte Yamazaki et al

Board of Patent Appeals and InterferencesMay 31, 2012

10878654 (B.P.A.I. May. 31, 2012)

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. 10/878,654 06/29/2004 Shunpei Yamazaki 0756-7346 5846 31780 7590 05/31/2012 Robinson Intellectual Property Law Office, P.C. 3975 Fair Ridge Drive Suite 20 North Fairfax, VA 22033 EXAMINER DICKEY, THOMAS L ART UNIT PAPER NUMBER 2826 MAIL DATE DELIVERY MODE 05/31/2012 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 SHUNPEI YAMAZAKI, RYOJI NOMURA, HIROKO ABE, MIKIO YUKAWA, and YASUYUKI ARAI ____________ Appeal 2010-000383 Application 10/878,654 Technology Center 2800 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000383 Application 10/878,654 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3, 5-7, 9, 11, 12, 21-23, 25, 27, 28, 37-43, 45-48, 50-56, 58-64, 66-72, 74-80, 82-84, and 98-104. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellants’ claimed invention is directed to a light-emitting element having an electroluminescent layer 807 interposed between a pair of electrodes (806, 808) and formed over an insulating film (803). See Fig. 5A. Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A semiconductor device comprising: a first substrate provided with a first circuit including a first semiconductor element and a light-emitting element; and a second substrate provided with a second circuit including a second semiconductor element and a light-receiving element, wherein the light-emitting element which comprises an electroluminescent layer interposed between a pair of electrodes is formed over an insulating film, in which laser light is oscillated upon applying current to the electroluminescent layer; wherein the electroluminescent layer is adjacent to a conductive film which is formed over the insulating film; wherein the laser light oscillated from the electroluminescent layer is reflected by the conductive film; and wherein a signal is transmitted between the first circuit and the second circuit by generating a light signal using the laser light Appeal 2010-000383 Application 10/878,654 3 oscillated in the light-emitting element and converting the light signal into an electrical signal in the light-receiving element. Rejection on Appeal The Examiner rejected claims1, 3, 5-7, 9, 11, 12, 21-23, 25, 27, 28, 37-43, 45-48, 50-56, 58-64, 66-72, 74-80, 82-84, and 98-104 under 35 U.S.C. § 103(a) based upon the teachings of Okubora (U.S. Patent Number 5,357,122 (filed September 2, 1992) (issued October 18, 1994)) and Chino (U.S. Patent Number 5,796,714 (filed September 25, 1995) (issued August 18, 1998)). ISSUE The dispositive issue is whether the Examiner erred in finding that one skilled in the art would add Chino’s insulating film 21 (Fig. 9) on the substrate of Okubora as a mere substitution with a predictable result. PRINCIPLES OF LAW “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). The Examiner’s articulated reasoning in the rejection must possess a rational underpinning to support the legal conclusion of obviousness. In re Appeal 2010-000383 Application 10/878,654 4 Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that “‘rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d at 988). ANALYSIS Appellants argue inter alia that the Examiner’s modification of adding the insulating layer of Chino on Okubora’s substrate does not constitute a mere substitution but rather the addition of Chino’s insulating layer 21 (App. Br. 11). We are persuaded by Appellants’ argument. Even if we were to agree with the Examiner that one skilled in the art would substitute Okubora’s layers 23, 24, and 25 (Fig. 5) for the single electroluminescent layer 24 of Chino, we are still left with the additional insulating layer 21 of Chino, which is added on Okubora’s substrate and does not substitute/replace any element in Okubora. Thus, there is no mere substitution of one element for another. See KSR, 550 U.S. at 416. Furthermore, we agree with Appellants that Chino’s insulating film 21 is provided to facilitate the formation of “micro bumps” (138, 140 and 142; col. 13, ll. 2-6) and it is not clear how the addition of Chino’s insulating film 21would have been obvious. In other words, it is unclear as to what predictable result the addition of layer 21 would produce. We do not reach a determination regarding if the film 21 was made of transparent material, thereby not interfering with the light passing therethrough, would it then have been obvious to add layer 21 on Okubora’s Appeal 2010-000383 Application 10/878,654 5 substrate. While the Examiner stated that there is no evidence that layer 21 causes distortion (Ans. 23-24), it is the Examiner’s initial burden to provide such evidence or provide some evidence why one skilled in the art would make such a layer transparent so as to not cause such a distortion. See Oetiker, 977 F.2d at 1445. Thus, we reverse the Examiner’s rejection of claim 1 and for the same reasons the Examiner’s rejections of claims 3, 5-7, 9, 11, 12, 21-23, 25, 27, 28, 37-43, 45-48, 50-56, 58-64, 66-72, 74-80, 82-84, and 98-104. CONCLUSION The Examiner erred in concluding that one skilled in the art would add Chino’s insulating film 21 (Fig. 9) on the substrate of Okubora as a mere substitution with a predictable result. DECISION The Examiner’s decision rejecting claims 1, 3, 5-7, 9, 11, 12, 21-23, 25, 27, 28, 37-43, 45-48, 50-56, 58-64, 66-72, 74-80, 82-84, and 98-104 is reversed. REVERSED tkl