Ex parte Hanamura

Board of Patent Appeals and Interferences

Oct 21, 1998

08106144 (B.P.A.I. Oct. 21, 1998)

Application for patent filed August 13, 1998. According1
to appellant, the appication is a continuation of Application
08/106,144, filed November 30, 1992; now abandoned.
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journal and (2) is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOSHIHIRO HANAMURA
____________
Appeal No. 95-1202
Application No. 08/106,1441
____________
HEARD: October 13, 1998
____________
Before DOWNEY, KIMLIN, and JOHN D. SMITH, Administrative
Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant 35 U.S.C. § 134 from the final
rejection of claims 1-6.
Claim 1 is representative and is reproduced below:
Appeal No. 95-1202
Application No. 08/106,144
2
1. A composite electric circuit part comprising:
an insulating substrate;
first and second terminal electrodes formed so as to be
externally engageable at a first edge end portion of the
insulating substrate;
a third terminal electrode formed so as to be externally
engageable at a second edge end portion of the insulating
substrate;
a first passive element formed on the insulating
substrate, two respective terminals thereof being connected
directly to the first and second terminal electrodes; and
a second passive element formed on the insulating
substrate, two respective terminals thereof being connected
directly to the second and third terminal electrodes;
wherein the first, second and third terminal electrodes
and the first and second passive elements are formed on one
surface of the insulating substrate.
The sole reference of record relied upon by the examiner
is:
Towers, "Hybrid Microcircuits," Pentech Press, 1979, pp.8-11,
76-79.
The appealed claims stand rejected under 35 U.S.C. §
102(b) as anticipated by Towers.
We reverse.
As set forth by the court in Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983),
Appeal No. 95-1202
Application No. 08/106,144
3
cert denied, 465 U.S. 1026 (1984), for a proper anticipation
rejection under 35 U.S.C. § 102(b) it is only necessary for
the claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it." The review of any prior art rejection,
whether for anticipation or obviousness, however requires
first that the claims have been correctly construed to define
the scope and meaning of the relevant limitation. Gechter v.
Davidson, 116 F.3d 1454, 1457, 43 USPQ2nd 1030, 1032 (Fed.
Cir. 1997). In proceedings before the Patent and Trademark
Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, and claim
language should be read in light of the specification as it
would be construed by one of ordinary skill in the art. In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983).
In setting forth his anticipation rejection herein, the
examiner has construed the claim language
first and second terminal electrodes formed so
as to be externally engageable at a first end
edge portion of the insulating substrate
and
Appeal No. 95-1202
Application No. 08/106,144
4
a third terminal electrode formed so as to
be externally engageable at a second end
edge portion of the insulating substrate
as "reading on" any prior art composite electric circuit, such
as shown by Towers' Figure. 1.6, where a cross-sectional view
representative of the circuit shows terminal electrodes "in
the vicinity" of an "edge portion" defined by the plane
forming the top of an insulating substrate and the plane of
the page.
Suffice it to say, the examiner's interpretation of the
relevant claim language regarding the end edge portion is
unreasonable. This is evident from a cursory review of
appellant's Figures 1 and 2 which show a plan view and a cross
sectional view of appellant's electrical device respectively
and appellant's specification which states that a "first
electrode 12 and a second electrode 13 are provided at the
left end portion (In Fig. 1) of a surface of an insulating
substrete," and a "third electrode 14 is provided at the right
end portion of the same surface." See the specification at
page 5, lines 4 through 9.
As appellant correctly points out, a cross-sectional view
of a prior art device, by definition, cannot show any edge of
Appeal No. 95-1202
Application No. 08/106,144
5
the substrate extending in the direction through which the
cross-section is being taken. As a factual matter, we agree
with appellant that Figure 1.6 of Towers does not show any
electrode formed so as to be externally engagable at an end
edge portion of an insulating substrate. Thus, we necessarily
agree with appellant that Towers does not describe an
insulating substrate with first, second, and third electrodes
at end edge portions separately connected to a capacitor and
resistor (i.e, first and second passive elements) in the
manner required by appealed claim 1.
We also agree with appellant that the examiner
unreasonably construed the claim language "second passive
element" as "reading on" a structure which comprises two
separate resistive films connected by some sort of an
electrode structure. We find nothing in appellant's
specification justifying such a broad definition of a "passive
element."
The examiner's reliance on the Figure 6.5(a) embodiment
by of Towers does not remedy the stated anticipation
rejection. While the examiner argues that the need to build
electrodes at an "end edge portion of an insulating substrate"
Appeal No. 95-1202
Application No. 08/106,144
6
is clearly taught by Figure 6.5(a) of Towers, the examiner has
failed to adequately explain how this prior art embodiment
describes first, second and third electrodes at end edge
portions separately connected to first and second passive
elements in the manner required by the appealed claims.
The examiner's rejection of the appealed claims,
therefore, is reversed.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
EDWARD C. KIMLIN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 95-1202
Application No. 08/106,144
7
lp
Appeal No. 95-1202
Application No. 08/106,144
8
BRUMBAUGH, GRAVES, DONOHUE & RAYMOND
30 ROCKEFELLER PLAZA
NEW YORK, NY 10112
Leticia
Appeal No. 95-1202
Application No. 08/106,144
APJ John Smith
APJ kimlin
APJ Downey
DECISION: REVERSE
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejectiion(s): _____
Prepared: August 12, 1999
Draft Final
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