Ex Parte Chiyoma et al

Patent Trial and Appeal Board

Dec 4, 2014

12782074 (P.T.A.B. Dec. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HITOSHI CHIYOMA and HIROSHI IWATA
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Appeal 2013-000585
Application 12/782,074
Technology Center 2800
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Before PETER F. KRATZ, KAREN M. HASTINGS, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 13–16 under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of at least Watanabe (US 2004/0211909 A1,
published Oct. 28, 2004), Kameshima et al. (US 2001/0033336 A1,
published Oct. 25, 2001), Der Haar (US 2002/0148968 A1, published Oct.
17, 2002), and Shibayama et al. (US 2007/0029670 A1, published Feb. 8,
2007).1 We have jurisdiction under 35 U.S.C. § 6(b).

1 The rejection of claim 14 includes Iwanczyk et al. (US 2002/0148967 A1,
published Oct. 17, 2002), and the rejection of claim 16 further includes
Taylor (US 4,037,047, issued July 19, 1977) (e.g., Br. 14–15).
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We REVERSE.
Claim 13, the sole independent claim, is illustrative of the claimed
subject matter:
13. A radiation detector comprising:
a fluorescent film configured to convert radiation into light;
a photodetector comprising a photodiode and a thin-film transistor, the
photodiode configured to convert the light into an electrical signal;
a first circuit board configured to electrically drive the photodetector
and electronically process an output signal from the photodetector;
a connection board configured to electrically connect the
photodetector and the first circuit board;
the connection board including:
(a) flexible circuit board, and
(b) an IC mounting board that is connected to the flexible circuit
board, the IC mounting board having rigidity and being less flexible than
the flexible circuit board,
the IC mounting board including:
(c) an IC semiconductor element that is bump-connected onto the IC
mounting board, and
(d) a connector; and
a casing configured to house the photodetector, the first circuit board,
and the connection board,
wherein the flexible circuit board comprises one end which is
electrically connected to the photodetector using an anisotropic conductive
film and another end which is electrically connected to the IC mounting
board, and is bent inside the casing, and
wherein the IC mounting board is electrically connected to the first
circuit board and fixed at a predetermined position in the casing, using the
connector.
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellants’
assertions that the Examiner’s rejection is based on improper hindsight in
proposing to modify Watanabe to have the configuration of elements
including flexible connection circuit board, rigid connection IC mounting
board, and connector, and first circuit board all configured as required by
claim 13.
As detailed by the Appellants in their Briefs, Watanabe has a flexible
circuit board 17 connected to a (first) circuit board 18 (Br. 10–12; Watanabe,
e.g., Fig. 2; ¶ [0027]). The Examiner concludes that it would have been
obvious to modify Watanabe to include an additional IC mounting board,
and a connector based on Der Haar’s disclosure of a printed circuit board 5,
with a flexible section 7 to a printed circuit board 6 with a plug 8 for
connection to an evaluation electronics thereon (Der Haar ¶ [0016]), (and
still further proposes to bump-connect an IC semiconductor element onto the
circuit board of Der Haar based on Shibayama) “in order to obtain a
reinforced connection to the first circuit board” (Final Rej. 6; see also Final
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Rej. 5; Ans. 9). Der Haar, however, teaches sandwiching its flexible section
between two printed circuit boards that “cover the flexible section 7 in the
fashion of a sandwich structure for reinforcing the detector module” (Der
Haar ¶ [0016]). Contrary to the Examiner’s position that the terminations of
Watanabe’s flexible circuit board 17 are “unspecified” (Ans. 10), Appellants
detail that the termination of the flexible circuit board 17 of Watanabe at one
end is directly to its circuit board 18 (e.g., Br. 10). The Examiner has not
come forward with an adequate explanation indicating why one of ordinary
skill in the art would have incorporated the specific configuration of Der
Haar’s flexible section 7 connected to a circuit board (which would then be
modified to have a bump-connected IC semiconductor element thereon)
which has an evaluation plug thereon for use as an intervening connection to
Watanabe’s circuit board 18 (e.g., Br. 12–14). Notably, the Examiner’s
proposed modification is not based on sandwiching the flexible circuit board
17 of Watanabe with the circuit board 18 of Watanabe (Ans. 9, 10); rather, it
is based on connecting the plug 18 of Der Haar (which is described by Der
Haar in ¶ [0016] as for connection to an evaluation electronics that is not
shown in Der Haar) to the circuit board 18 of Watanabe. The Examiner has
not adequately explained why one would have connected such a plug on an
intervening IC mounting board to the circuit board 18 of Watanabe.
Accordingly, we agree with Appellants that the Examiner has not
articulated a sufficient reason for modifying Watanabe with Der Haar and
Shibayama absent the use of impermissible hindsight. KSR, 550 U.S. at 421.
Thus, we are constrained to reverse the Examiner’s § 103 rejections
on appeal.
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CONCLUSION
In summary, the appealed rejections are reversed.
REVERSED

cdc