Ex parte COSTELLO et al.

Board of Patent Appeals and Interferences

Feb 24, 1998

08011094 (B.P.A.I. Feb. 24, 1998)

Application for patent filed January 29, 1993. According1
to the applicants this application is a continuation of
Application 07/793,233, filed November 8, 1991, now abandoned,
which is a continuation of Application 07/453,287, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN A. COSTELLO, HARRY BUHAY,
RICHARD R. PAPANIA, PROSENJIT RAI-CHOUDHURY,
KENNETH J. PETROSKY and GENE A. MADIA
_____________
Appeal No. 95-0638
Application 08/011,0941
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0638
Application 08/011,094
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-15, 36-43, 45-49 and
74-89. Claim 44 has been cancelled. Claims 16-35 and 50-73
stand withdrawn from consideration by the examiner as being
directed to a nonelected invention. An amendment after the first
action final rejection in this case was filed on June 28, 1993
and was entered by the examiner. This amendment resulted in the
removal of a rejection of claim 1 under the second paragraph of
35 U.S.C. § 112.
The disclosed invention pertains to the field of power
microwave generating transistor modules and power transistor
packages. These modules and packages generate a substantial
amount of heat which limits the density of components which can
be interconnected in a given space. Appellants have discovered
that the conventional metallic heat dissipation layers can be
replaced by copper layers of a specific thickness which improve
the dissipation of heat so that the density of the device and the
applied power can be increased without a corresponding increase
in the temperature of the device.
Representative claim 75 is reproduced as follows:
75. A power transistor package, comprising:
a metallic base member;
Appeal No. 95-0638
Application 08/011,094
3
a substrate having a ceramic core with first and
second opposite planar surfaces, each of the planar surfaces
having a layer of copper with a thickness in the range of
approximately 0.5 to 7 mils bonded to each of the planar surfaces
by a metallic film;
a layer of nickel having a thickness substantially
less than the copper layer plated on the copper layer, at least a
portion of the first planar surface being electrically isolated
from the base member for supporting a plurality of power
transistors, the copper layer having the characteristics and
thickness to spread heat from power microwave transistors mounted
on the electrically isolated planar surface, the second planar
surface being brazed to the metallic base member; and
a frame assembly brazed to a metallic surface
surrounding and spaced from the electrically isolated planar
surface of the substrate for connecting electrically at least two
terminals exterior the respective package, the two terminals
being electrically isolated from the substrate and the base
member and from each other.
The examiner relies on the following references:
Freedman et al. (Freedman) 3,814,633 June 04, 1974
Kurihara et al. (Kurihara ’899) 4,556,899 Dec. 03, 1985
Kurihara et al. (Kurihara ’733) 59-175733 Oct. 04, 1984
(Japanese Kokai)
The admitted prior art of appellants’ Figure 13.
Claims 1-15, 36-43, 45-49 and 74-89 stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner offers
the admitted prior art of appellants’ Figure 13 in view of the
teachings of either Kurihara ’733 or Freedman. Claims 76-79
stand additionally rejected based on the admitted prior art in
view of Kurihara ’899.
Appeal No. 95-0638
Application 08/011,094
4
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants'
arguments set forth in the brief along with the examiner's
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner's answer.
It is our view, after consideration of the record before
us, that the collective evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set
forth in claims 1-15, 36-43, 45-49 and 74-89. Accordingly, we
reverse.
Appellants have argued all the claims subject to each
rejection as a single group. Accordingly, all the claims before
us will stand or fall together. Note In re King, 801 F.2d 1324,
Appeal No. 95-0638
Application 08/011,094
5
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702
F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
Appeal No. 95-0638
Application 08/011,094
6
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Admitted prior art Figure 13 is the primary reference for
each of the rejections. Figure 13 shows a fragmentary sectional
view of a typical substrate 24 and base assembly 34 upon which a
power transistor package 20 is placed. The metallized substrate
28 in Figure 13 is coated on both sides by a molymanganese (MoMn)
coating. This coating is selected for its adhesive and thermal
characteristics. The examiner asserts that prior art Figure 13
shows all the claimed features except for the “thick copper layer
bonded to a thin nickel layer for spreading heat from the
transistors to the plate” [answer, page 3]. The difference
between Figure 13 and the claimed invention which is argued to be
critical is that the MoMn coating of Figure 13 has been replaced
in the invention by a copper layer of a particular thickness
which is bonded to the ceramic substrate.
Kurihara ’733 discloses an insulated semiconductor device
in which a ceramic substrate 2 has copper layers 203 and 204 on
both sides each having a thickness of about 100 mm [translation,
page 11]. Kurihara ’899 also discloses an insulated
semiconductor device in which a ceramic substrate 2 is placed
between a composite metal plate 3 and a metal support 1. The
Appeal No. 95-0638
Application 08/011,094
7
metal support has a copper layer with a thickness of 1.5 mm, and
the composite metal plate has a copper layer of 0.2 mm [column 4,
lines 22 and 44]. Freedman discloses a thermoelectric module
which has a metallized ceramic 18 covered on both sides by a
brazed sheet of copper [column 2, lines 53-63]. Freedman offers
no indication of the dimensions of the various layers used in his
device.
Each of the examiner’s rejections basically uses the same
rationale for obviousness. Specifically, the examiner relies on
any one of the secondary references to teach the placement of
copper layers on both sides of a ceramic substrate. The examiner
asserts that the claimed recitation of the copper layers having a
thickness between 0.5 and 7 mils would have been an obvious
design variation to the artisan.
Appellants present similar arguments in response to each
of the rejections made by the examiner. Specifically, appellants
argue that none of the applied references teaches each copper
layer of the device having a thickness in the range of 0.5 to 7
mils. Appellants argue that this particular range of thicknesses
is critical to the invention and gives the invention its superior
properties. It is noted that the thickness in Kurihara ’733
translates to 3,937 mils, while the thickness in Kurihara ’899
Appeal No. 95-0638
Application 08/011,094
8
translates to 7.9 mils. Each of these values is outside the
claimed range. Appellants argue that since none of the applied
prior art teaches the thickness of the copper layers as recited
in the claims, there is no prima facie showing of obviousness by
the examiner.
The examiner argues that the claims do not recite the
usefulness of the thickness of the copper layers. It is not the
function of the claims to describe the useful properties of the
device. The specification in this application properly describes
the advantages of using copper layers of the claimed thickness.
It is enough that the claims on appeal clearly recite a
structural limitation of the thickness of the copper layers. The
examiner cannot ignore clear structural limitations in a claim,
and it is improper to look to the claim for a recitation of the
advantages of a structural limitation.
The examiner also argues that the superior properties of
the claimed invention which are argued by appellants are not
properly incorporated into the claims. However, the superior
properties result from the selection of specific values of
thickness for the copper layers. These specific values of
thickness are in the range of 0.5 to 7 mils and this range is
Appeal No. 95-0638
Application 08/011,094
9
clearly recited in the claims. Therefore, the limitation cannot
be ignored or dismissed as not being properly included within the
claims.
Finally, the examiner asserts that the claimed thickness
of the copper layers could have been obtained by trial and error
without undue experimentation or hardships by the artisan. This
standard clearly is inappropriate under 35 U.S.C. § 103. There
must be something in the prior art which would have led the
artisan to make the claimed modification. It is not enough that
the prior art could have been modified to arrive at the claimed
invention. The prior art must suggest such modification to the
inventor. The only teaching on this record of using copper
layers in this art having a thickness between 0.5 and 7 mils
comes from appellants’ own disclosure. In the absence of
appellants’ disclosure, there would be no motivation to use
copper layers of the claimed thickness.
Thus, for each of the rejections, the issue comes down to
the examiner’s bare assertion that the thickness of the copper
layers is a mere design choice compared to appellants’ arguments
that the specific claimed values represent a critical discovery
Appeal No. 95-0638
Application 08/011,094
10
which is not suggested by any of the applied references. On this
record we agree with appellants that the examiner has failed to
factually support his case. Therefore, we reverse each of the
examiner’s prior art rejections of the claims.
Accordingly, the decision of the examiner rejecting
claims 1-15, 36-43, 45-49 and 74-89 is reversed.
REVERSED
Appeal No. 95-0638
Application 08/011,094
11
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
A. Mich, Jr.
Law Department
Intellectual Property Section
Westinghouse Electric Corporation
Churchill, Pittsburgh, PA 15235