THEN, Nam Khong. et al.

Patent Trials and Appeals Board

Sep 26, 2019

15278203 - (R) (P.T.A.B. Sep. 26, 2019)

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.
15/278,203 09/28/2016 Nam Khong THEN ONS02183US 2748
132194 7590 09/26/2019
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
ipdocket@iptech.law
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NAM KHONG THEN, HUI MIN LER,
PHILLIP CELAYA, and CHEE HIONG CHEW
____________________

Appeal 2018-006067
Application 15/278,203
Technology Center 1700
____________________

Before LINDA M. GAUDETTE, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellant1 requests rehearing of our May 10, 2019 Decision (“Op.”).
See Request for Rehearing filed July 9, 2019 (“Request”). In the Decision,
we affirmed the Examiner’s rejection of claims 1–6 and 8–15 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement. Op. 3–5. We also
reversed the Examiner’s rejection of 1, 2, 5, 8–13, and 15 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Leung2 and the Examiner’s rejection of
claims 3, 4, 6, and 14 under 35 U.S.C. § 103 as being unpatentable over
Leung in further view of Celaya3. Op. 5–6.
In a request for rehearing, an appellant is charged with stating the
points believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52. We review the points of the Decision contested by
Appellant and determine whether we erred in fact finding or applying the
law, and further determine whether any such error changes the outcome of
the Decision when viewing all the evidence and arguments anew in light of
the preponderance of the evidence standard. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“[P]atentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”).
In this case, Appellant urges that we revisit the written description
issue because the claim limitation “passing a current from a lead frame to the
singulated lead solely via the one or more tie bars” is sufficiently supported

1 Appellant is the Applicant, “Semiconductor Components Industries, LLC,”
which, according to the Appeal Brief, is the real party in interest. Appeal
Brief of November 28, 2017 (“Br.”), 3.
2 US 2016/0035651 A1, published Feb. 4, 2016.
3 US 2010/0187663 A1, published July 29, 2010.
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by “FIG. 4 in view of p. 9, lines 1-2” of the Specification. Request 5. We
note4 that these passages of the Specification were not presented in the
Appeal Brief or the Reply Brief. See Br. 7–10 (arguing that the Examiner
erred in finding that the claim fails to comply with the written description
requirement based on “Specification at p. 4, 11. 20-25; p. 6, 11. 11-13; p. 7,
11. 14-25; p. 8, 11. 2-7; p. 10, 11. 2-4,” “Specification at p. 6, 11. 14-16, and
“Specification at p. 4, 11. 21-25; p. 6, 11. 12-13; p. 7, 11. 16-25; p. 8, 11. 2-
7; p. 10, 11. 2-4”); see also Reply Br. 1 (arguing the same based on “the
instant specification found at p. 4, 11. 20-25; p. 6, 11. 11-13; p. 7, 11. 14-25;
p. 8, 11. 2-7; and p. 10, 11. 2-4”).
The term “rehearing” is used in 37 CFR § 1.197(b) for consistency
with the appropriate statute (35 U.S.C. § 6(b)). The “rehearing” provided by
Rule 197(b) is a reconsideration of the written record as presented on appeal
– not new argument or new evidence not previously raised. See, e.g., In re
Alappat, 33 F.3d 1526, 1532–33 (Fed. Cir. 1994).
In this case, Appellant acknowledges that these passages “were not
pointed out specifically in the Appeal Brief or Reply Brief.” Request 6. We
disagree with Appellant’s contention that the Board should have scoured the
Specification as-filed in the first instance for evidence and disclosure to
support Appellant’s arguments.
We remind Appellant that by statute, this Board functions as a board
of review, not a de novo examination tribunal. 35 U.S.C. § 7(b) (“The

4 We further note that, contrary to Appellant’s statement, Specification at
page 9 lines 1–2 describes an embodiment of Figure 5 instead of Figure 4.
See Spec. 8:17–9:3 (describing Figure 5). Appellant does not explain why
the texts describing Figure 5 should be relied upon for the embodiment in
Figure 4 to show support for this limitation.
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[Board] shall . . . review adverse decisions of examiners upon applications
for patents . . . .”). “Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection.” Ex parte Frye,
Appeal No. 2009-006013, 2010 WL 889747, *4 (BPAI Feb. 26, 2010). To
prevail in an appeal to this Board, Appellant must adequately explain or
identify reversible error in the Examiner’s rejection. See 37 C.F.R.
§ 41.37(c)(1) (iv) (2012); see also In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011). In this case, the Examiner provided an analysis for the written
description rejection (Final Act. 3; Ans. 7–10 (citing Figures 3 to 4 of the
Specification)), and Appellant had ample opportunity in both the Appeal
Brief and Reply Brief to identify reversible error in the Examiner’s rejection
(Br. 7–10; Reply Br. 1). We carefully considered the record before us and
found that no reversible error had been identified. Op. 5. For us to consider
Appellant’s new assertion on a Request for Rehearing – that these passages
of the Specification that were not previously raised by Appellant should be
reevaluated by the Examiner – would be unfair to the Examiner as the
Examiner has not had an opportunity to respond to this assertion. We
therefore decline to reconsider the rejection.
Appellant also argues that “the Board has construed the claims with
inappropriate focus on file history, as it applied to the 35 U.S.C. § 112(a)
rejection of the claims, rather than construing the claims in view of the
specification as required.” Request 6–7. Appellant did not raise claim
construction issues on appeal (see Br. 7–11) and we did not construe any
claim term in our opinion as it was unnecessary (see, e.g., Op.) to resolve the
written description issue which is a question of fact. See PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (“Compliance
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with the written description requirement is a question of fact.”). Instead, we
fully and carefully considered Appellant’s arguments and found them
unpersuasive and concluded that no reversible error has been identified in
the Examiner’s fact findings in support of the written description rejection.
Op. 5. Although Appellant faults the Board in failing to construe the claim,
Appellant does not propose a construction of any particular claim term, nor
does Appellant explain why claim construction is necessary to resolve the
factual dispute for the written description rejection. Request 6–7 (arguing
only that “the claims should have been construed explicitly in light of the
specification in the decision”) (emphasis omitted). We again note that
Appellant could have raised – but chose not to raise – these issues in the
Appeal Brief. Cloaking a factual issue as one of claim construction – neither
of which were previously raised – cannot show that the Board
misapprehended or overlooked these issues. 37 C.F.R. § 41.52.
We disagree with Appellant’s assertion that the Board’s affirmance of
the written description rejection and reversal of the art-based rejection
somehow resulted in “cognitive dissonance.” Br. 7. Contrary to Appellant’s
understanding, the written description requirement is separate and
independent of the novelty requirement under the statute. In other words,
whether the disclosure shows possession to a person of ordinary skill in the
art (Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 997
(Fed. Cir. 2000)) is a separate inquiry from whether all claim elements are
found in one or more prior art references. The statute, 35 U.S.C., requires
compliance with not one but all provisions including sections 102, 103, and
112. We further note that contrary to Appellant’s assertion, the record is
devoid of evidence showing that the Examiner lacks knowledge as to how to
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proceed. See Request 7 (“It would be reasonable to assume that the interests
of justice require a resolution of this cognitive dissonance so the Appellant
(and the Examiner) are able to clearly understand how to proceed forward
with this case.”).
CONCLUSION
For the foregoing reasons, we deny Appellant’s Request for
Rehearing.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED