Ex Parte 6040626 et al

Board of Patent Appeals and Interferences

Jun 11, 2009

90007073 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte INTERNATIONAL RECTIFIER CORPORATION,
Patent Owner and Appellant
____________

Appeal 2009-001263
Reexamination Control 90/006,727 and 90/007,073
Patent 6,040,626
Technology Center 3900
____________

Decided:1 June 12, 2009
____________

Before CAROL A. SPIEGEL, ROMULO H. DELMENDO, and JOHN A.
JEFFERY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
International Rectifier Corporation (Appellant and Patent Owner)
timely filed a Request for Rehearing (hereinafter “Request”) of our Decision
on Appeal of February 27, 2009, affirming in part the Examiner’s final
rejection of the claims. See 37 C.F.R. § 41.52.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Reexamination Control 90/006,727 and 90/007,073
Patent 6,040,626

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We DENY Appellant’s request to modify our February 27, 2009
Decision.

STATEMENT OF THE CASE
In our February 27, 2009 Decision, we reversed (i) a rejection of
claims 29-34 as failing to comply with the written description requirement of
35 U.S.C. § 112, ¶1 and (ii) a rejection of claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Krum2 in view of the admitted prior art,3 Olsen,4 and
Recko.5 We affirmed, however, (iii) a rejection of claims 1, 9, 11-14, 24,
25, 29, 30, 32, 33, and 35 under 35 U.S.C. § 103(a) as unpatentable over
Krum in view of the admitted prior art, Olsen, and Recko, (iv) a rejection of
claims 2, 10, 15-23, 31, and 34 under 35 U.S.C. § 103(a) as unpatentable
over Krum in view of the admitted prior art, Olsen, Recko, and Kalfus,6 and
(v) a rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Krum in view of the admitted prior art, Olsen, Recko, and Pike7 or Kinzer.8
Claims 1 and 35 on appeal read as follows:
1. A power semiconductor package, comprising:
a bottom leadframe having a bottom plate portion and at
least one first terminal extending from the bottom plate portion;
at least one second terminal being co-planar with the first
terminal;

2 Krum issued as United States Patent 4,766,479 on August 23, 1988.
3 The admitted prior art constitutes Figures 1 and 2 of the ‘626 Patent.
4 Olsen issued as United States Patent 4,546,374 on October 8, 1985.
5 Recko issued as United States Patent 3,492,547 on January 27, 1970.
6 Kalfus issued as United States Patent 4,935,803 on June 19, 1990.
7 Pike issued as United States Patent 5,262,336 on November 16, 1993.
8 Kinzer issued as United States Patent 5,940,721 on August 17, 1999.
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a third terminal;
a semiconductor power MOSFET die having a bottom
surface defining a drain connection and a top surface on which
a first metalized region defining a source and a second
metalized region defining a gate are disposed, the bottom
surface being coupled to the bottom plate of the leadframe such
that the first terminal is electrically connected to the drain;
a copper plate coupled to and spanning a substantial part
of the first metalized region defining the source connection;
at least one beam portion being sized and shaped to
couple the copper plate portion to the at least one second
terminal such that it is electrically coupled to the source;
a wire bond coupling the gate to the third terminal; and
a housing comprised of moldable material encapsulating
the semiconductor die and extending to and disposed on the
copper plate, wherein the at least one first terminal is
electrically connected to the bottom plate portion and extends
out of the housing.
35. A power semiconductor package, comprising:
a bottom leadframe having a bottom plate portion and at
least one first terminal extending from the bottom plate portion;
at least one second terminal being co-planar with the first
terminal, the second terminal having an end co-planar with the
bottom plate;
a third terminal;
a semiconductor power MOSFET die having a bottom
surface defining a drain connection and a top surface on which
at first metalized region defining a source and a second
metalized region defining a gate are disposed, the bottom
surface being coupled to the bottom plate of the leadframe such
that the first terminal is electrically connected to the drain;
a copper plate spaced above the bottom plate coupled to
and spanning a substantial part of the first metalized region
defining the source connection;
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at least one beam portion being sized and shaped to
couple the copper plate portion to the end of the at least one
second terminal that is co-planar with the bottom plate such that
it is electrically coupled to the source, the at least one beam
portion originating from the vicinity of the copper plate and
terminating at the end of the at least one second terminal; and
a wire bond coupling the gate to the third terminal.
(App. Br. 22 and 28-29, Claims Appendix; underlining and bracketing
omitted).

ISSUES
Appellant’s Request is based on two theories.
First, with respect to the rejection of claim 35 as unpatentable over the
combined teachings of Krum, the admitted prior art, Olsen, and Recko,
Appellant urges that we should remand the proceeding “to the Examiner for
consideration of any evidence [to be newly submitted] that may rebut the
prima facie case of obviousness set forth in the Board’s Decision” (Request
at 2). According to Appellant, it did not have any opportunity to present any
rebuttal evidence because our decision to affirm the rejection of claim 35
was based on KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), which was
decided after the filing of the Notice of Appeal (Request at 2).
Second, with respect to the rejection of claims 1, 29, 32, and 35 over
the combined teachings of Krum, the admitted prior art, Olsen, and Recko,
Appellant contends for the first time in this appeal that Krum’s gold-plated
copper plate 14’ does not span a “substantial part of the first metalized
region defining the source connection” as required by, e.g., claim 1 because
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Krum’s gold-plated copper plate 14’ spans “the entire top surfaces of 12F’’
(see Fig. 1), 12F (Fig. 2), 12F’ (Figs. 3, 4, 5)” (Request 2-3).
Thus, the issues arising from Appellant’s contentions are:
(1) Has Appellant shown that our February 27, 2009 Decision relied
on a new legal principle warranting a remand to the Examiner for further
prosecution as to claim 35?
(2) Has Appellant shown error in our February 27, 2009 Decision
affirming the Examiner’s finding that Krum’s gold-plated copper plate spans
a “substantial part of the first metalized region defining the source
connection” as required by claim 1?

FINDINGS OF FACT
1. With respect to Appellant’s argument in the Appeal Brief that
“[t]he record . . . lacks any reason Krum would be modified
according to the convention requiring the second lead to be
coplanar with the bottom plate” (App. Br. 17), the Examiner
reasoned (Ans. 26):
[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to have
prepared Krum’s semiconductor package such that its
first terminal 32 and second terminals 16, 16’ (see
Figures 3 and 4) are not only co-planar with each other,
but also co-planar with bottom plate portion 30 because it
is conventional in the art for the first and second
terminals to be co-planar with each other and with the
bottom plate, as shown in prior art Figures 1 and 2 of the
‘626 patent.
2. The only argument in the Appeal Brief offered against Krum in
connection with the limitation “a copper plate coupled to and
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spanning a substantial part of the first metalized region” in
claim 1 was as follows (p. 14):
[E]ach independent claim calls for “a copper plate
coupled to and spanning a substantial part of the first
metalized region”.
On the other hand, strap 14 in each embodiment
shown by Krum is coupled to a gold-plated or gold-clad
molybdenum tab 12F, 12F’. Strap 14 is not coupled to
the source metallization of the die. For this additional
reason, claims 1, 29, 32 and 35 should not be deemed
obvious.
3. Krum’s Figures 3 and 4 are reproduced below:

Krum’s Figures 3 and 4 depict an embodiment for an “isolated
case” synchronous rectifier circuit including, inter alia: feed-
through conductive pins 16A and 32A; gold-plated copper strap
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34; a layer 30 bonded to case 10’ and fabricated from an
electrically insulating material such as beryllium oxide or
alumina but having a top surface of a metallic layer; an FET die
12’ comprising a drain region 12A’ at the lower surface of the
die which is soldered to a metallization substrate layer 12D’,
which in turn is soldered to the metallized top surface of the
layer 30; and a gold-plated copper strap 14 that is soldered to
tab 12F’ and is electrically connected to source bump contact
12E’ (col. 2, l. 42 to col. 4, l. 24).

PRINCIPLES OF LAW
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”); In re Bigio, 381
F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a disputed claim term
its broadest reasonable interpretation during patent prosecution.”).
This longstanding principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the
opportunity and responsibility to remove any ambiguity in claim term
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meaning by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d at 322. “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” ICON Health, 496 F.3d at 1379.

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
KSR instructs “that when a patent claims a structure already known in
the prior art that is altered by mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” KSR, 550 U.S. at 416.

ANALYSIS
Issue (1):
We find no merit in Appellant’s reason for requesting a remand to the
Examiner for further prosecution as to claim 35. The Examiner articulated a
sound reason why a person having ordinary skill in the art would have
arrived at the subject matter of claim 35 in view of the applied prior art
references (Fact 1). We agreed with the Examiner’s analysis based on well
settled law that has been in place for over 40 years, not new law (Decision at
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26). KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result”) (citing United States v. Adams, 383 U.S. 39, 50-51
(1966)).
While we also referred to KSR, 550 U.S. at 419, for the proposition
that “[t]he obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation,” this principle
is not entirely new. KSR, 550 U.S. at 418 (“As our precedents make clear,
however, the analysis need seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”). See also DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion
test is in actuality quite flexible and not only permits, but requires,
consideration of common knowledge and common sense”); Alza Corp. v.
Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).

Issue (2):
Appellant’s argument concerning the phrase “substantial part” in the
limitation “a copper plate coupled to and spanning a substantial part of the
first metalized region” in claim 1 is likewise unpersuasive.
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37 C.F.R. § 41.52(a) provides that “[a]rguments not raised in the
briefs before the Board and evidence not previously relied upon in the brief
and reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) [good cause or in response to a
new ground of rejection].” In this case, Appellant failed to make this
argument in their opening brief, i.e., the Appeal Brief (Fact 2). Thus,
Appellant cannot rely on such a new argument except as provided under 37
C.F.R. § 41.52(a)(2) or (a)(3), neither of which has been shown to be
applicable here. Moreover, Krum’s copper plate 14’ does span a
“substantial part” of the elements represented by source bump contact 12E’
or tab 12F’ because the copper plate only spans the top portion of 12F (Fact
3).
Accordingly, we reject this argument as well.

CONCLUSION
On this record, Appellant has failed to: (1) show that our February
27, 2009 Decision relied on a new legal principle warranting a remand to the
Examiner for further prosecution as to claim 35; and (2) show error (based
on an argument already of record in this appeal) in our decision upholding
the Examiner’s finding that Krum’s gold-plated copper plate spans a
“substantial part of the first metalized region defining the source
connection” as required by claim 1.

Appeal 2009-001263
Reexamination Control 90/006,727 and 90/007,073
Patent 6,040,626

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DECISION
While we have reconsidered certain aspects of our Decision in light of
Appellant’s Request, we decline to modify our Decision in any respect.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
DENIED

ack

PATENT OWNER:

SAMUEL H. WEINER
OSTROLENK FABER GERB & SOFFEN LLP
1180 AVENUE OF THE AMERICAS
NEW YORK NY 10036-8403

THIRD PARTY REQUESTER:

BRIAN D. OGONOWSKY
PATENT LAW GROUP LLP
2635 NORTH FIRST STREET SUITE 223
SAN JOSE CA 95134