Ex Parte 6,559,379 B2 et al

Patent Trial and Appeal Board

Mar 25, 2014

95001784 (P.T.A.B. Mar. 25, 2014)

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.
95/001,784 10/13/2011 6,559,379 B2 85290-822575 3148
52082 7590 03/26/2014
General Electric Company
GE Global Patent Operation
2 Corporate Drive, Suite 648
Shelton, CT 06484
EXAMINER
WHITTINGTON, KENNETH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/26/2014 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
____________

GE NOVASENSOR, INC. and GE INFRASTRUCTURE SENSING, INC.
Patent Owners and Appellants

v.

SILICON MICROSTRUCTURES
Requester and Respondent
____________

Appeal 2014-001378
Reexamination Control 95/001,784
Patent 6,559,379 B2
Technology Center 3900
____________

Before MARC C. HOFF, STEPHEN C. SIU, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants, Patent Owners GE Novasensor, Inc. and GE Infrastructure
Sensing, Inc. (“General Electric”)
1
appeal under 35 U.S.C. §§ 134(b) and
306 from a Right of Appeal Notice (mailed Sep. 19, 2012) rejecting claims 1
and 4-33 over the prior art.
2
Third Party Requester Silicon Microstructures,
Inc. (“Silicon Microstructures”) urges that the Examiner’s decision should
be affirmed.
3
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm the Examiner’s decision to reject claims 1, 4-9, 11-21, and
23-33 over the prior art.
We reverse the Examiner’s decision to reject claims 10 and 22.
Pursuant to our authority under 37 C.F.R. § 41.77(b), we enter the
following new grounds of rejection:
We reject claim 10 under 35 U.S.C. § 103(a) as obvious over
Hitachi in view of Lin, Takahashi, and Adams; and
We reject claim 22 under 35 U.S.C. § 103(a) as obvious over
Hitachi in view of Kohara and Adams.
We designate the affirmed rejections of claims 16-31 and 33
(rejections D1, D3, and D4) as new grounds.

1
General Electric’s ownership rights in the ‘379 Patent are recorded in
an assignment dated May 6, 2011 appearing on Reel 026240 Frame 0487.
2
See General Electric’s Corrected Appeal Brief filed March 19, 2013
(hereinafter “GE’s App. Br.”).
3
See Silicon Microstructures’ Respondent Brief filed April 18, 2013
(hereinafter “SM’s Resp. Br.”).

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Background and Rejections
This proceeding arose from a request by Silicon Microstructures for
an inter partes reexamination of U. S. Patent 6,559,379 B2, titled “Pressure
Sensor with Transducer Mounted on a Metal Base,” which issued to Dinesh
Solanki and Janusz Bryzek on May 6, 2003 from Application 09/815,900,
filed March 22, 2001 (“Solanki” or “the ‘379 patent”).
The ‘379 patent describes “[a] three piece housing, designed to house
semiconductor chips [that] is molded using a polymer material. The chip
sits on a metal base. Electrical leads pass through a molded housing to
provide electrical contact between the semiconductor chip and external
circuitry.” Abstract.
The Examiner rejects the claims over the following prior art
references:
Adams US 4,686,764 Aug. 18, 1987
Lin US 4,837,184 June 6, 1989
Kohara US 4,937,656 June 26, 1990
Takahashi US 5,207,102 May 4, 1993
Itihasi US 5,760,467 June 2, 1998
Hitachi JP 5-172674 Pub. July 9, 1993
Appellants appeal the Examiner’s following rejections:
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A.1. Claims 1, 4-9, 11 and 13-15 stand rejected under 35 USC §103 as
unpatentable over Hitachi in view of Lin and Takahashi;
A.2. Claim 10 stands rejected under 35 USC §103 as unpatentable over
Hitachi in view of Lin, Takahashi, and Itihasi;
A.3. Claim 12 stands rejected under 35 USC §103 as unpatentable over
Hitachi in view of Lin, Takahashi, and Adams;

4
See Right of Appeal Notice (mailed Sep 19, 2012) (“RAN”).
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B.1. Claims 1, 4-11 and 13-15 stand rejected under 35 USC §103 as
unpatentable over Itihasi in view of Hitachi, Lin, and Takahashi;
B.2. Claim 12 stands rejected under 35 USC §103 as unpatentable over
Itihasi in view of Hitachi, Lin, and Adams;
C.1. Claims 1,4-6 and 8-11 13, 14 and 32 stand rejected under 35 USC
§103 as unpatentable over Itihasi in view of Kohara, and Takahashi;
C.2. Claims 7 and 15 stand rejected under 35 USC §103 as unpatentable
over Itihasi in view of Kohara, Takahashi, and Hitachi;
C.3. Claim 12 stands rejected under 35 USC §103 as unpatentable over
Itihasi in view of Kohara, Takahashi, and Adams;
D.1. Claims 16-21, 23, 24, 28, 29, 31, and 33 stand rejected under 35 USC
§103 as unpatentable over Hitachi in view of Kohara;
D.2. Claim 22 stands rejected under 35 USC §103 as unpatentable over
Hitachi in view of Kohara and Itihasi;
D.3. Claim 25 stands rejected under 35 USC §103 as unpatentable over
Hitachi in view of Kohara and Adams;
D.4. Claims 26, 27, and 30 stand rejected under 35 USC §103 as
unpatentable over Hitachi in view of Kohara and Takahashi;
E.1. Claims 16-19, 21-24, 29 and 31 stand rejected under 35 USC §103 as
unpatentable over Itihasi in view of Kohara;
E.2. Claims 20 and 28 stand rejected under 35 USC §103 as unpatentable
over Itihasi in view of Kohara and Hitachi;
E.3. Claim 25 stands rejected under 35 USC §103 as unpatentable over
Itihasi in view of Kohara and Adams;
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E.4. Claims 26, 27, 30 and 33 stand rejected under 35 USC §103 as
unpatentable over Itihasi in view of Kohara and Takahashi;
F. Claim 32 stands rejected under 35 USC §103 as unpatentable over
Hitachi in view of Lin;
G. Claim 32 stands rejected under 35 USC §103 as unpatentable over
Itihasi in view of Hitachi and Lin;
H. Claim 32 stands rejected under 35 USC §103 as unpatentable over
Takahashi in view of Hitachi; and
I. Claim 33 stands rejected under 35 USC §103 as unpatentable over
Itihasi in view of Kohara.
Judicial Proceedings
We are informed that the ‘379 Patent is not the subject of any related
appeals or litigation (GE’s App. Br. 1, 36.)

CLAIMS 1 AND 4-15
Claims 1 and 4-15 are directed to the embodiment of Solanki’s
pressure transducer package 20 that is depicted in FIG. 1 (GE’s App. Br. 2-
3). Solanki’s FIG. 1 is reproduced below:
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Solanki’s FIG. 1 depicts
a pressure transducer package for housing pressure transducer
comprising a metal lead 25 having a downset portion, and a
widened end portion (widened end of metal lead 25 in Fig. 4)
forming a base 26 upon which pressure transducer 28 is secured
(with epoxy cement 30). A plurality of polymeric walls form
chamber 22, with metal lead 25 extending through one of the
walls (left side of chamber 22) such that the widened end
portion is contained in the chamber. The downset portion is
supported by a bottom polymeric wall (left side of chamber 22),
but the polymeric wall does not extend beneath the widened
end portion so that a bottom surface of the widened end portion
is uncovered (uncovered area of base 26).
GE’s App. Br. 2 (citing Solanki, col. 3, ll. 8-60).
Independent claim 1 is illustrative of the appealed claims that are
directed to this embodiment – the embodiment wherein the bottom surface
of the metal lead’s end portion is uncovered:
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1. A pressure transducer package for housing a pressure
transducer comprising:
a metal lead having a downset portion, and a widened end
portion upon which said pressure transducer is secured; and
a plurality of polymeric walls forming a chamber, said
metal lead extending through one of said walls such that said
widened end portion is contained in said chamber wherein said
downset portion is supported by a bottom polymeric wall, and
wherein said bottom polymeric wall does not extend beneath
said widened end portion such that a bottom surface of said
widened end portion is uncovered.
REJECTION A.1:
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 4-9, 11 AND 13-15 OVER HITACHI IN
VIEW OF LIN AND TAKAHASHI
The Examiner finds that Hitachi
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generally discloses all of the
limitations of independent claim 1 (RAN 11-12), including a metal lead
having a downset portion, and a widened end portion upon which the
pressure transducer is secured (RAN 11). The Examiner finds that Hitachi
fails to disclose that the molded pressure transducer package is made of a
polymer, but that Lin does teach that it would have been obvious to use an
epoxy, or polymeric compound, as a mold package housing for electronic
devices. RAN 12.
The Examiner further finds that the combination of Hitachi and Lin
fails to “explicitly teach the bottom polymeric wall not extending beneath
the widened end portion.” RAN 12. However, according to the Examiner,
at least Takahashi’s FIG. 7 embodiment does depict such an arrangement,

5
References to Hitachi are based upon the English translation that was filed
October 13, 2011.
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and it would have been obvious to have modified the combination of Hitachi
and Lin to include this feature of Takahashi. RAN 12-13.
Patent Owners present various arguments regarding Takahashi and its
combination with Hitachi and Lin. GE’s App. Br. 6-9. These arguments are
unpersuasive. We address each of these arguments separately.
Patent Owners argue that the Examiner erred by interpreting
Takahashi’s die pad 7 as a metal lead. GE’s App. Br. 6 (citing RAN 12).
Patent Owners maintain that “Takahashi’s die pad 7 is not a lead and cannot
and does not function as a lead because die pad 7 is electrically isolated from
the leads.” GE’s App. Br. 6. Patent Owners rely on the Declaration of
Dinesh Solanki (filed May 7, 2012) (“Declaration”) as evidence supporting
this argument.
Declarant Dinesh Solanki is an employee of General Electric and a
named co-inventor of the present ‘379 patent. Declaration 1. Inventor
Solanki states that Takahashi’s die pad 7 cannot be interpreted as
corresponding to a metal lead because
[a] metal lead is understood by those skilled in the art to be a
wire or other continuous length of metal that electrically
connects different physical elements in a structure. . . However,
[Takahashi’s] die pad 7 is electrically isolated from any
electrical leads or wires 9 and from the pressure sensor.
Declaration 2.
We are unpersuaded by Patent Owners’ arguments that Takahashi’s
die pad 7 cannot reasonably be interpreted as corresponding to a widened
portion of a metal lead on the basis that a metal lead must electrically
connect different elements. FIG. 2 of the Solanki ‘379 patent, itself, depicts
a top view of the pressure sensor of FIG. 1, depicted supra. FIG. 2 of the
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‘379 patent depicts various metal leads 24, 25. Some of these leads are
depicted as having interior portions that are electrically connected via wire
bonds 32 to the semiconductor transducer 28. The outer ends of these
electrically connected leads 24 are variously labeled as “+IN,” “+OUT,”
“-IN,” and “-OUT.” Other leads 24, 25 contain the label “N/C.” In relation
to these leads, the Specification of the ‘379 patent explains
Wire bonds 32 provide electrical contact between the
semiconductor transducer and the certain of the leads 24. The
electrical lead 25 that has been downset to serve as the base 26
does not require a wire bond. In addition, as explained below,
one or more of the other metal leads 24 may lack wire bond
connections.
Solanki, col. 3, ll. 29-34.
The operation of [the FIG. 3circuit diagram] will be readily
understood by those skilled in the art and need not be explained
herein. The nodes labeled +IN, and -IN, +OUT and -OUT
represent the identically labeled metal leads in FIG. 2. The
metal leads of FIG. 2 labeled N/C are not interconnected with
the transducer 28 in the current implementation. However, it
will be appreciated that the number of leads and their
interconnections to the transducer is not important to the
invention.
Solanki, col. 4, ll. 5-12.
Furthermore, around the time of filing the patent application that
eventually issued as the ‘379 patent, Inventor Solanki signed a separate
Declaration of February 24, 1995, attesting that the inventors read and
understood the contents of the Specification and that all statements made in
the Specification were believed to be true.
Restated, we find that Inventor Solanki’s statements and disclosure in
the ‘379 patent directly contradict the statements contained in the more
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recent, May 2012 Declaration, as well as the arguments of Patent Owners’
Counsel.
Patent Owners next argue that one of ordinary skill would not have
been motivated to modify Hitachi with Takahashi’s uncovered lead/die pad
arrangement because “[Hitachi] is designed to . . . provide ‘good radio
[frequency] disturbance resistance’” by having that die pad grounded,
whereas Takahashi’s die pad is electrically isolated and used for other
purposes. GE’s App. Br. 11. This argument is not persuasive because it
improperly presupposes that the incorporation of Takahashi’s uncovered
lead/die pad arrangement would require some sort of additional change to
Hitachi’s electrical interconnections between the die pad lead and the
semiconductor pressure sensor in a manner rendering the uncovered die pad
electrically isolated. No such additional change to Hitachi’s electrical
interconnections is required or proposed. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.... Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Patent Owners next argue that one of ordinary skill in the art would
not have been motivated to incorporate the uncovered metal lead/die pad of
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Takahashi in the pressure sensor package of Hitachi for the purpose of
reducing thermal stress during fabrication. GE’s App. Br. 7. Patent Owners
urge that this assumption is not supported by factual evidence. Id. Patent
Owners also argue that “Hitachi already addresses stress problems by
[various measures including] matching the thermal expansion coefficients of
the pressure sensitive unit 2 and base 8.” Id. at 10. Inventor Solanki also
states reasons why he believes that “Hitachi has already recognized and
addressed induced stress problems in his package.” Declaration 3.
We are unpersuaded that the Examiner erred in finding that thermal
stress problems provided motivation to incorporate Takahashi’s uncovered
metal lead/die pad. The fact that Hitachi has recognized and addressed
thermal-induced-stress problems in his package is not evidence that the
problems have been completely eliminated. Nor is it evidence that
Takahashi’s additional thermal dissipation effects would fail to provide any
additional benefits.
For the foregoing reasons, Patent Owners have not persuaded us that
the Examiner erred in rejecting independent claim 1. We therefore sustain
the rejection of that claim, as well as the rejection of claims 4-8, 11, and 13-
15, which are not separately argued. GE’s App. Br. 5-9.
CLAIM 9
Claim 9 ultimately depends from claim 1:
4. The pressure transducer package of claim 1 further
comprising a plurality of electrical leads extending through
said walls and into the chamber.
Emphasis added.
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8. The pressure transducer package of claim 4 wherein the
plurality of polymeric walls define [sic: defines] an access port
for inserting said pressure transducer.
9. The pressure transducer package of claim 8, wherein the
chamber includes a shelf region defined by said walls and
opposite the access port, and wherein portions of the leads are
partially embedded in the shelf region and portions of the leads
are partially exposed opposite the access port.
Patent Owner argues that the Examiner erred in finding that the
features of claim 9 are taught by Hitachi’s Fig. 4:
[C]laim 9 also specifies that “portions of the leads are partially
embedded in the shelf region.” This embodiment is illustrated
in Figs. 1 and 5B where the downset portion of metal lead 25,
25’ is partially embedded in the shelf region and partially
exposed at metal base 26, 26’. Hitachi has no structure
corresponding to this claim language. Accordingly, even if the
reference teachings are combinable in the manner proposed, the
claimed invention does not result.
GE’s App. Br. 9.
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We therefore first address the following question: in light of claim
1’s recitation of “a metal lead having a downset portion,” and claim 4’s
recitation of “further comprising a plurality of electrical leads,” which leads
are being referenced by the recitation in claim 9 of “the leads”?
Respondent urges that “[t]he term leads here apparently refer to the
‘plurality of electrical leads’ recited in claim 4 . . . , rather than specifically
to the ‘metal lead’ of claim 1.” SM’s Resp. Br. 6. We agree. Because claim
9 recites “the leads” in the plural, and the metal lead of claim 1 is set forth
only in the singular, “the leads” of claim 9 implicitly refers to at least the
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leads recited in claim 4. As such, Appellants’ arguments, being only
directed to why Hitachi does not depict this feature in relation to leads that
have a downset portion (GE’s App. Br. 9), are not commensurate in scope
with the claim language.
Moreover, we agree with Respondents assertion:
Claim 9 reads on at least Fig. 4 of Hitachi. Hitachi
teaches that the lead flame “is integrally molded with the mold
1.” (Hitachi at ¶ [0007]). This implies that portions of the leads
are partially embedded in the mold material, to hold them in
place. Fig. 4 of Hitachi shows that left end of lead 3 is sunk
into the mold material 1 such that the top surface of the lead is
level with the top surface of the mold material, leaving the top
surface exposed while the other surfaces are embedded. This
meets the claim limitation that portions of the leads are
“partially embedded” and portions are “partially exposed.”
SM’s Resp. Br. 6.
For both these reasons, then, Patent Owners have not persuaded
us that the Examiner erred in rejecting claim 9. We therefore sustain
the rejection of that claim over Hitachi in view of Lin and Takahashi.
REJECTION A.2:
THE OBVIOUSNESS REJECTION OF CLAIM 10 OVER HITACHI IN VIEW OF LIN,
TAKAHASHI, AND ITAHASI
Claim 10 ultimately depends from claim 1:
10. The pressure transducer package of claim 8, further
comprising a cap positioned in said access port, said cap having
a vent hole.
The Examiner finds that the combination of Hitachi, Lin, and
Takahashi does not explicitly teach a cap for the housing of the pressure
transducer. RAN. 22. The Examiner additionally finds that Itahasi teaches a
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pressure transducer package that does employ a cap, and that one of ordinary
skill would have found it obvious to incorporate Itahasi’s cap “to prevent
external pressure from escaping from the outside of the [package’s] inner
chamber (See Itihasi col. 2, lines 4-8) while directing pressure through the
hole to the pressure sensor.” RAN 22-23.
Appellants argue, inter alia, that “[a] skilled person would not be
motivated by Itihasi to place a cap on the Hitachi device as the two devices
are designed for different purposes. The Hitachi device does not need a
cap.” GE’s App. Br. 12. Appellants’ arguments are persuasive to the extent
that they argue Hitachi’s device does not need a cap.
Hitachi’s package is created as a unibody construction from a molding
process. Hitachi ¶ 7 (explaining that “part of the lead frame . . . is integrally
molded with the mold 1”). That is, the uppermost portion of Hitachi’s
package, the portion that extends above the package’s shelf and leads,
already serves a function similar to that of Itahasi’s cap – to secure the leads
and to provide an opening for communication between the pressure
transducer and the outside environment. The Examiner has not explained
why, then, Hitachi’s modified package would need an additional cap.
Accordingly, we do not sustain the Examiner’s rejection of claim 10
over the combination of Hitachi, Lin, Takahashi, and Itahasi.
REJECTION A.3:
THE OBVIOUSNESS REJECTION OF CLAIM 12 OVER HITACHI IN VIEW OF LIN,
TAKAHASHI, AND ADAMS
Claim 12 ultimately depends ultimately from claim 1:
12. The pressure transducer package of claim 11 comprising
a silicon [sic: silicone]

gel disposed in said chamber.
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“Before considering the rejections . . ., we must first [determine the scope
of] the claims . . . .” Geerdes, 491 at 1260. We therefore first address why
we understand the claim’s term “silicon gel” to be intended to read “silicone
gel.”
On May 7, 2012, Patent Owner filed a claim amendment to correct
“typographical errors” in claim 12 and 25, which currently recite “silicon
gel” instead of “silicone gel.” Amendment and Response to Office Action
(May 7, 2012) at 6. The Examiner denied entry of this amendment, finding
that the amendment would substantially alter the scope of the claims, thus
requiring more than a cursory review. RAN 5. However, the Examiner then
proceeded to examine the claims with an understanding that “silicone gel”
was actually intended. More specifically, the Examiner rejected claim 12 by
interpreting Adams’s SILASTIC® pressure transfer medium as
corresponding to the claims’ “silicon gel.” RAN 24 (referencing
SILASTIC® medium 31 that is disposed in the chamber of the pressure
sensor). SILASTIC® is a trademark held by Dow Corning Corporation for
“compositions in physical character comparable to milled and compounded
rubber prior to vulcanization but containing organosiloxane polymers and
for forms fabricated of such compositions in the forms of tubes, rods, sheets
and the like.” US Trademark 71503981 (Apr. 13, 1948 registration date).
That is, SILASTIC® refers to a group of silicone rubber materials. See, e.g.,
Dow Corning’s online Product Finder page (available at
http://www.dowcorning.com/applications/search/products/?Ntt=silastic&N=
0&Ntx=mode+MatchAllPartial&WT.svl=4&Nty=1&Ntk=ProductFinder_en
).
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In short, Appellants assert that the claim is intended to recite silicone
gel, the Examiner has rejected the claim interpreting the term as reading on a
prior art composition that is a silicone gel, and Respondent does not dispute
that the claim intended to set forth silicone gel. See SM’s Resp. Br. 6
(stating, “[a]ssuming claim 12 reads on silicone gel, . . .”).
Turning to the merits of the rejection, Patent Owner challenges the
Examiner’s finding that it would have been obvious to provide Adams’s
SILASTIC® material in Hitachi’s chamber to protect the pressure sensor
from the ambient environment. GE’s App. Br. 12-13.
[W]hat Adams actually teaches is that it is the
combination of an impermeable covering membrane 32 (see
Fig. 4D) made of a flurosilicone material with the gel 31 that
actually protects the pressure sensor element from the
environment. The skilled person would not be motivated by
Adams to use a gel material alone.
GE’s App. Br. 13.
Appellants’ argument is not persuasive. The rejection did not state
that Hitachi was to be modified by incorporating Adams’ SILASTIC®
material alone. Furthermore, Appellants acknowledge that Adams teaches
using the SILASTIC® gel, in combination with the impermeable covering
membrane 32, to protect the sensor from the environment. We therefore
find no error in the Examiner’s conclusion to modify Hitachi by
incorporating the silicone gel 31 into the chamber, at least when further
coated with an impermeable covering membrane, such as that of Adams.
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NEW REJECTION:
OBVIOUSNESS REJECTION OF CLAIM 10 OVER HITACHI IN VIEW OF LIN,
TAKAHASHI, AND ADAMS
Pursuant to our authority under 37 C.F.R. § 41.77(a), we enter a new
ground of rejection under 35 U.S.C. § 103(a), rejecting claim 10 as obvious
over Hitachi in view of Lin, Takahashi, and Adams.
We have already sustained the rejection of claim 12 over the
combination of Hitachi, Lin, Takahashi, and Adams. We agreed with the
Examiner that it would have been obvious to have filled the cavity of Hitachi
with Adams’s silicone material 31, and to then cover the silicone material
with Adams’s impermeable membrane 32. Supra. Adams further discloses
that a ring or retaining means 40 may be inserted in a notch 11d of the
package body in order to retain membrane 32 in place. Adams, col. 5, ll. 60-
63.
It would have been obvious to one of ordinary skill in the art at the
time of the invention to have further employed a retaining ring to retain both
a silicone gel and an impermeable membrane over the cavity, or access port,
of Hitachi’s sensor package, as taught by Adams. Furthermore, because
such a ring or retaining means is formed in the shape of an annulus, this ring
may be reasonably interpreted as constituting “a cap positioned in said
access port, said cap having a vent hole,” as recited by claim 10.
REJECTION F:
THE OBVIOUSNESS REJECTION OF CLAIM 32 OVER HITACHI IN VIEW OF LIN
Independent claim 32 reads as follows:
32. A pressure transducer package for housing a pressure
transducer comprising: a metal lead having a downset portion
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and a widened end portion, said pressure transducer being
secured directly to said widened end portion of said metal lead;
and a plurality of polymeric walls forming a chamber, said
metal lead extending through one of said walls such that said
widened end portion is contained in said chamber wherein said
downset portion is supported by a bottom polymeric wall.
The Examiner finds that Hitachi teaches all of the limitations of claim
32 with the exception that the mold is composed specifically of a polymer.
RAN 83. The Examiner further finds that Lin uses a polymeric epoxy
compound as a package mold for electronic device housings and that it
would have been obvious to one having ordinary skill in the art to have used
this particular material for Hitachi’s package. Id.
The Examiner also sets forth two alternative rationales for finding that
Hitachi teaches the remaining claim language, “said pressure transducer
being secured directly to said widened end portion of said metal lead.” RAN
82-84. Under the first rationale, the Examiner interprets Hitachi’s base 8
(e.g., FIG. 4) as constituting part of the pressure transducer.
6
RAN 82.
According to the alternate rationale, which assumes that the base 8 may not
be reasonably interpreted as constituting part of the pressure transducer, the
Examiner notes that various figures of Hitachi (e.g., Figs. 2, 7) depict the
pressure transducer secured directly to the end portion of the lead, albeit
without the leads being downset. RAN 83-84. According to this latter

6
We note for clarity that Hitachi uses the term “base” in a different context
than the present claims. Claim 16 of the present patent uses “base portion”
to refer to the metal lead’s die pad: “a metal lead having a downset portion,
a base portion upon which said pressure transducer is secured.” In contrast,
Hitachi’s “base 8” is an optional pedestal that is interposed between the
pressure transducer and the metal lead 3 and bonded to the lead by means of
an adhesive. Hitachi, ¶ 8.
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interpretation, the Examiner finds that it would have been obvious to have
modified the leads of the directly secured embodiments so as to be downset,
and the Examiner further provides sufficient reasons with supporting factual
underpinnings to support the conclusion that the combination would have
been obvious to one of ordinary skill in the art. RAN 84.
Patent Owners argue that while some embodiments depict
pressure sensor 2 being secured indirectly to a downset lead via a
glass base or pedestal 8 (e.g., Hitachi, FIG. 4), and while some
embodiments depict the pressure sensor 2 being secured directly to a
lead that is not downset (e.g., Hitachi, FIG. 2), “Hitachi never teaches
the combination of a downset lead secured directly to a transducer.”
GE’s App. Br. 28.
Patent Owners’ arguments are unpersuasive. Read as a whole,
Hitachi reasonably teaches that the use of an intermediate base 8 (e.g.,
FIG. 4) or a cement with no intermediate base (e.g., FIG. 2) were art-
recognized equivalent means of securing the pressure sensor to the
lead. Likewise, Hitachi further teaches that leads with no downsets
(e.g., Fig. 2) and, alternatively, leads with downset portions (e.g., FIG
4) were art-recognized means of orienting die-pad leads in pressure
sensor packages. Thus, directly securing Hitachi’s pressure sensor to
the downset portion of Hitachi’s FIG. 4 lead arrangement with the
cement as depicted in Hitachi’s FIG. 2 merely constituted a simple
and obvious substitution of one known element for another to obtain
predictable results. See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398
at 417 (2007).
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For completeness, we address Patent Owners’ argument that the
embodiment of Hitachi’s Fig. 7 does not depict the transducer being
directly secured because, according to Patent Owners, Fig. 7 depicts
an interposition of a rim part 9. GE’s App. Br. 28. This argument is
not persuasive because Hitachi clarifies that the rim part 9 is a part of
the pressure transducer, itself – a part that is heavily doped with p-
type impurities. Hitachi ¶ 11.
We therefore sustain the Examiner’s obviousness rejection of claim
32 over Hitachi in view of Lin. We need not, then, further decide whether
Hitachi’s base 8 may be reasonably interpreted as constituting part of the
pressure sensor.

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CLAIMS 16-29 AND 31
Claims 16-29 and 31 are directed to the embodiment of Solanki’s
pressure transducer package 20 that is depicted in FIG. 5B (GE’s App. Br. 3-
4). Solanki’s FIG. 5B is reproduced below:

Solanki’s FIG. 5B depicts a pressure transducer package that
comprises a metal lead 25’ having a down set portion, and a
base portion 26’ upon which the pressure transducer (not
shown, but designed to be positioned to sit on shelf 44’) is
secured. A plurality of polymeric walls 42’ form chamber 22’
around the transducer, with the metal lead 25’ extending
through one of the walls 42’ such that the base portion is
contained in the chamber and the downset portion is
encapsulated by a polymeric wall. As described at col. 4, lines
37-39, polymer housing 22’ extends fully beneath the metal
base 26’ such that base 26’ is embedded in the housing which
extends beneath it.
GE’s App. Br. 4 (citing Solanki, col. 4, ll. 32-52).
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Independent claim 16 is illustrative of the appealed claims that are
directed to this alternative embodiment wherein the polymer housing
extends fully beneath the base portion of the metal lead:
16. A pressure transducer package for housing a pressure
transducer comprising:
a metal lead having a downset portion, and a base portion
upon which said pressure transducer is secured; and
a plurality of polymeric walls forming a chamber, said
metal lead extending through one of said walls such that said
base portion is contained in said chamber wherein said downset
portion is encapsulated by a polymeric wall.
REJECTION D.1:
THE OBVIOUSNESS REJECTION OF CLAIMS 16-21, 23, 24, 28, 29, 31, AND 33
OVER HITACHI IN VIEW OF KOHARA
The Examiner finds that Hitachi teaches all of the limitations of
independent claim 16 with the following exceptions: “Hitachi does not teach
the materials for the walls of the chamber and does not teach any
encapsulation of the downset portion.” RAN 54. The Examiner further
finds that Kohara teaches these features and that motivation existed to
incorporate these features into Hitachi’s package. RAN 54-55.
In reaching the above findings, the Examiner appears to be
interpreting the claim term “downset portion” as reading on only the medial
portion of Fig. 5B’s metal lead 25’ that extends downwardly from the
uppermost plane of the plurality of leads where wire bonding takes place,
but excluding the lowermost portion of lead 25’ that, in turn, includes the
widened base portion 26’ upon which the transducer is to rest.
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We disagree that the Examiner’s interpretation constitutes the
broadest reasonable interpretation. We instead find that the term, “said
downset portion,” is broad enough to read on the downwardly extending
medial portion of the lead in combination with the base portion. “Before
considering the rejections . . ., we must first [determine the scope of] the
claims . . . .” Geerdes, 491 at 1260.
We reach this conclusion through a careful analysis of the ‘379 patent.
The specification of the ‘379 patent nowhere uses “downset portion” to refer
to the downwardly extending medial portion alone – as a structure distinct
from the base 26. Instead, the ‘379 patent expressly uses the term “downset
portion” to additionally include the base portion 26. Solanki, col. 3, ll. 53-
55 (stating “by electrically grounding the metal lead 25[,] which has a
downset portion that serves as the base 26. . .”).
Based upon this understanding of “downset portion,” we next interpret
the meaning of the entire clause that contains the term “downset portion”:
“wherein said downset portion is encapsulated by a polymeric wall.” Patent
Owners confirm that claim 16 is directed to the embodiment depicted in
Figure 5B. GE’s App. Br. 3. In relation to this embodiment, Patent Owners
further explain
A plurality of polymeric walls 42’ form chamber 22’ around the
transducer, with the metal lead 25’ extending through one of the
walls 42’ such that the base portion is contained in the chamber
and the downset portion is encapsulated by a polymeric wall.
As described at col. 4, lines 37-39, polymer housing 22’
extends fully beneath the metal base 26’ such that base 26’ is
embedded in the housing which extends beneath it.
GE’s App. Br. 4.
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Fig. 5B depicts the downwardly extending medial portion of lead 25’
as being fully encapsulated, but the base 26’ is only partially embedded in
the underlying housing. The top of the base 26’ is exposed for the
subsequent mount of the pressure transducer thereon. Because the “downset
portion” includes the base portion 26’ (explained supra), it follows that
Patent Owners are using claim 16’s term “encapsulated” to mean at least
partially encapsulated – not fully encapsulated.
This interpretation is supported by the ‘379 patent, itself, which
similarly uses the term “embedded” to mean partially embedded, as opposed
to fully embedded:
Referring to the illustrative drawing of FIG. 5B, there is shown
a cross-sectional view of the alternative housing and lead frame
taken generally along lines 5B—5B of FIG. 5A. The housing
22’ is similar in all respects to the housing 22 of the first
embodiment described above, except that the alternative
polymer housing 22’ extends fully beneath the metal base 26’.
Thus, the base 26’ is embedded within the housing 22’ which
extends beneath it. In essentially all other respects, the
housings 22 and 22’ of the first embodiment and the alternative
embodiment are the same.
Solanki, col. 4, ll. 32-41 (emphasis added).
To summarize, then, we interpret the language of claim 16,
“wherein said downset portion is encapsulated by a polymeric wall,”
as reading on a lead having a downwardly extending medial portion in
combination with a base portion (or die pad), wherein the base portion
and downwardly extending medial portion are at least partially
encapsulated.
Based upon the claim language interpretation outlined above,
we now return to the analysis of the rejection of claim 16. The
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Examiner has erred in finding that Hitachi “does not teach any
encapsulation of the downset portion.” RAN 54. Figure 4 of Hitachi
depicts lead 3 having a downwardly extending medial portion and a
partially encapsulated base portion. While Hitachi’s FIG. 4, being a
cut-a-way view of the package, does not depict the downwardly
extending medial portion as being encapsulated on any more than one
surface, Hitachi’s written specification indicates that, in fact, the
downwardly extending medial portion is encapsulated on all surfaces
except for the interior surface facing the cavity. Hitachi states that “in
FIG. 4, the lead frame base 3 is molded in a L shape to make the
height of the pressure-sensitive unit 2 the same as the lead frame 4, so
that it is possible to facilitate a bonding operation using the wires
6. . .” Hitachi, ¶ 9.
As such, we therefore need not address the Examiner’s reasons
for modifying Hitachi with Kohara so as to encapsulate the downset
portion, as claimed. See RAN 54-55. Nor do we need to address
Patent Owners’ arguments against such a modification. See GE’s
App. Br. 22-24. The only feature of claim 16 not expressly disclosed
by Hitachi is that Hitachi’s package mold is composed of a polymer.
Patent Owners neither dispute that Kohara’s semiconductor package
mold may be composed of a polymer, nor present any persuasive
arguments in relation to whether it would have been obvious to make
Hitachi’s package of a polymer. Id. Rather, Patent Owners
acknowledge that “Kohara may contain teachings relevant to
semiconductor devices where the chips/components must be fully
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encapsulated and sealed from the environment.” GE’s App. Br. 23.
While Hitachi’s lead frame is only partially encapsulated instead of
fully encapsulated, Kohara does teach that a polymer may be used to
encapsulate leads to at least some extent.
Accordingly, we sustain the obviousness rejection of
independent claim 16 over the combination of Hitachi and Kohara.
We likewise sustain the rejection of claims 17-21, 23, 24, 28, 29, and
31, which are not separately argued. GE’s App. Br. 22-24. Due to the
change in the underlying rationale set forth in this Decision, we
designate this rejection as a new ground pursuant to our authority
under 37 C.F.R. § 41.77(a).
CLAIM 33
Independent claim 33 reads as follows:
33. A pressure transducer package for housing a pressure
transducer comprising: a metal lead having a downset portion
and a base portion, said pressure transducer being secured
directly to said base portion of said metal lead; and a plurality
of polymeric walls forming a chamber, said metal lead
extending through one of said walls such that said base portion
is contained in said chamber wherein said downset portion is
encapsulated by a polymeric wall.
Claim 33 is also rejected over Hitachi in view of Kohara, and
the rejection is based upon generally the same rationale as set forth in
relation to claim 16. RAN 56-60. Claim 33, though, additionally
recites “said pressure transducer being secured directly to said base
portion of said metal lead.” The Examiner finds that this claim
language was taught by the embodiment of Hitachi’s Fig. 2 wherein
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the pressure sensor 2 is mounted directly to the metal lead via cement
5. RAN 58.
Patent Owners argue that while some embodiments depict
pressure sensor 2 being secured indirectly to a downset lead via a
glass base or pedestal 8 (e.g., Hitachi, FIG. 4), and while some
embodiments depict the pressure sensor 2 being secured directly to a
lead that is not downset (e.g., Hitachi, FIG. 2), “Hitachi never teaches
the combination of a downset lead secured directly to a transducer.”
GE’s App. Br. 24, 30.
Patent Owner’s arguments are unpersuasive. Read as a whole,
Hitachi reasonably teaches that using an intermediate base 8 (e.g.,
FIG. 4) or using a cement with no base (e.g., FIG. 2) were art-
recognized means of securing the pressure sensor to the lead.
Likewise, Hitachi further teaches that leads with no downset portions
(e.g., FIG. 2) and, alternatively, leads with downset portions (e.g.,
FIG. 4) were art-recognized means of orienting die-pad leads in
pressure sensor packages. Thus, securing Hitachi’s pressure sensor to
the downset portion of Hitachi’s FIG. 4 lead arrangement directly
with the cement as depicted in Hitachi’s FIG. 2, without an interposed
base, merely constituted a simple and obvious substitution of one
known element for another to obtain predictable results. See KSR
Int’l. Co. v. Teleflex, Inc., 550 U.S. 398 at 417 (2007).
Moreover, Takahashi provides further evidence that the use of a
base, or pedestal, was known to be optional:
According to the above-described embodiment, the pressure
sensor has the pedestal 5. A structure having the pedestal may
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be employed when the pressure sensor must exhibit an excellent
accuracy. Furthermore, a structure having no pedestal may be
employed when excellent accuracy is not desired. In this case,
a pressure sensor having no pedestal can be manufactured by
integral molding in the same assembly process if the mold for
the integral molding is changed.
Takahashi, col. 5, ll. 3-11.
We therefore sustain the obviousness rejection of claim 33 over
Hitachi in view of Kohara. We need not address the Examiner’s
alternative rationale that Hitachi’s base 8 may be reasonably
interpreted as constituting part of the pressure sensor. Due to the
alternative rationales set forth in relation to claim 16, supra, as well as
the additional reliance on the teachings of Takahashi, we designate
this rejection as a new ground pursuant to our authority under
37 C.F.R. § 41.77(a).
REJECTION D.2:
THE OBVIOUSNESS REJECTION OF CLAIM 22 OVER HITACHI IN VIEW OF KOHARA
AND ITIHASI
Claim 22 ultimately depends from claim 16:
22. The pressure transducer package of claim 21 further
comprising a cap positioned is said access port, said cap having
a vent hole.
The Examiner rejects claim 22 over the additional reference, Itihasi,
for reasons similar to those set forth in relation to the rejection of claim 10.
RAN 66-67. We do not sustain this rejection for the reasons set forth above
in relation to claim 10.
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REJECTION D.3:
THE OBVIOUSNESS REJECTION OF CLAIM 25 OVER HITACHI IN VIEW OF KOHARA
AND ADAMS
Claim 25 ultimately depends from claim 16:
25. The pressure transducer package of claim 11 comprising
a silicon [sic: silicone]
7
gel disposed in said chamber.
The Examiner combines Adams with Hitachi and Kohara to reject
claim 25 for the same reasons the Examiner combined Adams with Hitachi,
Lin, and Takahashi in rejecting claim 12. RAN 67-68. For the reasons set
forth in relation to claim 12, we likewise sustain the rejection of claim 25.
Due to the alternative rationale we rely upon to sustain the rejection of
independent claim 16, supra, we designate this rejection as a new ground
pursuant to our authority under 37 C.F.R. § 41.77(a).
NEW REJECTION:
OBVIOUSNESS REJECTION OF CLAIM 22 OVER HITACHI IN VIEW OF KOHARA AND
ADAMS
Pursuant to our authority under 37 C.F.R. § 41.77(a), we enter a new
ground of rejection under 35 U.S.C. § 103(a), rejecting claim 22 as obvious
over Hitachi in view of Kohara and Adams. The rationale is for the same as
that set forth for adding a cap as outlined above in relation to the new
rejection of claim 10, as well as the rationale for sustaining the rejections of
claims 16 and 25.

7
The basis for interpreting the claim term “silicon” to mean “silicone” is set
forth in relation to the analysis of the rejection of claim 12, supra.
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REJECTION D.4:
THE OBVIOUSNESS REJECTION OF CLAIMS 26, 27, AND 30 OVER HITACHI IN VIEW
OF KOHARA AND TAKAHASHI
Patent Owners do not present separate arguments for dependent
claims 26 and 27, but instead assert patentability for the same reasons
as set forth in relation to independent claim 16. GE’s App. Br.25. We
therefore sustain rejection of these claims. Due to the alternative
rationale we rely upon to sustain the rejection of independent claim
16, supra, we designate this rejection as a new ground pursuant to our
authority under 37 C.F.R. § 41.77(a).
CLAIM 30
Dependent claim 30 reads as follows:
30. The pressure transducer package of claim 16 wherein a
bottom polymeric wall does not extend beneath said base
portion such that a bottom surface of said base portion is
uncovered.
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). Claim 30 presents claim construction questions because it is not
reasonably clear to which embodiment the claim is intended to be directed,
and it is not reasonably clear what the metes and bounds of claim 30 are
intended to be.
Specifically, claim 30 recites that the bottom surface of the base
portion is uncovered. This implies that the claim is directed to the
embodiment of FIG. 1 – the embodiment to which claim 1 is directed. See
GE’s App. Br. 2. This interpretation is supported by Patent Owners’
statement in the Summary of Claimed Subject Matter that claim 30
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possesses features that are depicted in Fig 1. GE’s App. Br. 3. However,
Patent Owners also confirm that claim 30 is intended to depend from
independent claim 16. Id. But claim 16 is asserted to be directed to the
embodiment of FIG. 5B where the bottom surface of the lead’s downset base
is fully encapsulated. Id. That is, claims 16 and 30 potentially set forth
mutually exclusive characteristics because the bottom surface of the base
simultaneously cannot be uncovered and fully covered.
It is true that a dependent claim is supposed to be construed to
incorporate by reference all the limitations of the claim to which it refers,
and there is also the legal requirement that a dependent claim is to specify a
further limitation, as opposed to an alternative limitation. 35 U.S.C. § 112,
¶ 4. It is also arguable that even though Patent Owners assert that claim 16
is directed to the fully-encapsulated embodiment of FIG 5B (GE’s App. Br.
3), claim 16 still may be able to be interpreted more broader such that it is
generic to the embodiments of both Figs. 5B and FIG. 1. See, REJECTION
D.1: THE OBVIOUSNESS REJECTION OF CLAIMS 16-21, 23, 24, 28, 29, 31, AND 33
OVER HITACHI IN VIEW OF KOHARA, supra (explaining that the recitation of
“said downset portion is encapsulated” only requires that the downset
portion be at least partially encapsulated). That is, claim 16 potentially may
be capable of being interpreted as merely requiring that only part of the
downset portion – only a part of either the downwardly extending medial
portion or only a part of the base portion – be encapsulated.
In light of these considerations, it is not reasonably clear whether
claim 30 is intended to narrow a broad construction of claim 16, or,
alternatively, whether claim 30 is intended to improperly set forth alternative
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limitations. Furthermore, if claim 30 is intended to set forth alternative
limitations, it is unclear which limitations of claim 16 is claim 30 intended to
remove and supersede. To the extent that claim 30 can be interpreted,
though, it appears to be at least as broad as independent claim 1.
In the rejection of claim 1, the Examiner relied on Lin for teaching a
mold that is composed of an epoxy polymeric compound. RAN 12. In the
rejection of claim 30, the Examiner alternatively relies on Kohara for this
teaching. Patent Owners do not dispute whether Kohara teaches this feature.
GE’s App. Br. 22-25; 27-28. For the same reasons that we sustain the
rejection of claim 1 as obvious over Hitachi in view of Lin and Takahashi,
then, we likewise (1) sustain the rejection of claim 30 as obvious over
Hitachi in view of Kohara and Takahashi and, in the alternative, (2) newly
reject claim 30 under 35 U.S.C. § 103(a) as obvious over Hitachi in view of
Lin and Takahashi. We designate this rejection as a new ground pursuant to
our authority under 37 C.F.R. § 41.77(a).

CONCLUSIONS
1. We sustain rejection A.1 – the rejection of claims 1, 4-9, 11 and 13-
15, which stand rejected under 35 USC §103 as unpatentable over Hitachi in
view of Lin and Takahashi.
2. We do not sustain rejection A.2 – the rejection of claim 10, which was
rejected under 35 USC §103 as unpatentable over Hitachi in view of Lin,
Takahashi, and Itihasi.
3. Pursuant to our authority under 37 C.F.R. § 41.77(b), we newly reject
claim 10 under 35 U.S.C. § 103(a) as obvious over Hitachi in view of Lin
and Adams.
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4. We sustain rejection A.3 – the rejection of claim 12, which stands
rejected under 35 USC §103 as unpatentable over Hitachi in view of Lin,
Takahashi, and Adams.
5. We sustain rejection D.1 – the rejection of claims 16-21,23, 24, 28,
29, 31, and 33, which stand rejected under 35 USC §103 as unpatentable
over Hitachi in view of Kohara. With respect to claim 33, we further rely on
Takahashi. Due to the differing reasoning relied upon in the Opinion, we
designate both of these rejections as new grounds.
6. We do not sustain rejection D.2 – the rejection of claim 22, which was
rejected under 35 USC §103 as unpatentable over Hitachi in view of Kohara
and Itihasi.
7. Pursuant to our authority under 37 C.F.R. § 41.77(a), we newly reject
claim 22 under 35 U.S.C. § 103(a) as obvious over Hitachi in view of
Kohara and Adams.
8. We sustain rejection D.3 – the rejection of claim 25, which stands
rejected under 35 USC §103 as unpatentable over Hitachi in view of Kohara
and Adams. Due to the differing reasoning relied upon in the Opinion for
claim 16, we designate this rejection as a new ground.
9. We sustain rejection D.4 – the rejection of claims 26, 27, and 30,
which stand rejected under 35 USC §103 as unpatentable over Hitachi in
view of Kohara and Takahashi. Due to the differing reasoning relied upon
in the Opinion for claim 16, we designate this rejection as a new ground.
10. In further regard to claim 30 and as an alternative, pursuant to our
authority under 37 C.F.R. § 41.77(a), we newly reject claim 30 under
35 U.S.C. § 103(a) as obvious claim Hitachi in view of Lin and Takahashi.
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11. We sustain rejection F – the rejection of claim 32, which stands
rejected under 35 USC §103 as unpatentable over Hitachi in view of Lin.
12. Because at least one rejection has either been sustained or newly
issued for each of the pending claims, we need not address the remaining
rejections:
8

a. Rejection B.1 – the rejection of claims 1, 4-11 and 13-15, which
stand rejected under 35 USC §103 as unpatentable over Itihasi in view
of Hitachi, Lin, and Takahashi;
b. Rejection B.2 – the rejection of claim 12, which stands rejected under
35 USC §103 as unpatentable over Itihasi in view of Hitachi, Lin, and
Adams;
c. Rejection C.1 – the rejection of claims 1,4-6 and 8-11 13, 14 and 32,
which stand rejected under 35 USC §103 as unpatentable over Itihasi
in view of Kohara, and Takahashi;
d. Rejection C.2 – the rejection of claims 7 and 15, which stand rejected
under 35 USC §103 as unpatentable over Itihasi in view of Kohara,
Takahashi, and Hitachi;
e. Rejection C.3 –the rejection of claim 12, which stands rejected under
35 USC §103 as unpatentable over Itihasi in view of Kohara,
Takahashi, and Adams;
f. Rejection E.1 – the rejection of claims 16-19, 21-24, 29 and 31, which
stand rejected under 35 USC §103 as unpatentable over Itihasi in view
of Kohara;

8
See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection).
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g. Rejection E.2 – the rejection of claims 20 and 28, which stand rejected
under 35 USC §103 as unpatentable over Itihasi in view of Kohara
and Hitachi;
h. Rejection E.3 – the rejection of claim 25, which stands rejected under
35 USC §103 as unpatentable over Itihasi in view of Kohara and
Adams;
i. Rejection E.4 – the rejection of claims 26, 27, 30, and 33, which stand
rejected under 35 USC §103 as unpatentable over Itihasi in view of
Kohara and Takahashi;
j. Rejection G – the rejection of claim 32, which stands rejected under
35 USC §103 as unpatentable over Itihasi in view of Hitachi and Lin;
k. Rejection H – the rejection of claim 32, which stands rejected under
35 USC §103 as unpatentable over Takahashi in view of Hitachi; and
l. Rejection I – the rejection of claim 33, which stands rejected under
35 USC §103 as unpatentable over Itihasi in view of Kohara.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 4-9, 11-21, and
23-33.
We reverse the Examiner’s decision rejecting claims 10 and 22.
Pursuant to 37 C.F.R. § 41.77(b), the rejections of claims 10, 16-31,
and 33 constitute new grounds of rejection. Section 41.77(b) provides that
“[a] new ground of rejection . . . shall not be considered final for judicial
review.” That section also provides that Patent Owners , WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
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following two options with respect to the new grounds of rejection to avoid
termination of the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
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appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

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ack

cc:

Patent Owner:

GENERAL ELECTRIC COMPANY
GE GLOBAL PATENT OPERA nON
2 CORPORATE DRIVE, SUITE 648
SHELTON, CT 06484

Third Party Requester:

KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834