Ex Parte Ito et al

Board of Patent Appeals and Interferences

Jul 23, 2012

11038123 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/038,123 01/21/2005 Shigetoshi Ito 524242001500 7957
7590 07/24/2012
Barry E. Bretschneider
Morrison & Foerster LLP
Suite 300
1650 Tysons Boulevard
McLean, VA 22102
EXAMINER
GOLUB-MILLER, MARCIA A
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
07/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGETOSHI ITO and DAISUKE HANAOKA
____________

Appeal 2010-003391
Application 11/038,123
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003391
Application 11/038,123
2
STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 2, and 6. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Invention
This invention relates to a nitride semiconductor laser device provided
with a cap formed out of a nonconductive material for enclosing wires and a
nitride semiconductor laser chip. (Spec. ¶ [0008]). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A nitride semiconductor laser device comprising:
a mount that is conductive;
a submount that is directly fixed to the mount and that is
insulating;
a nitride semiconductor laser chip that is mounted on the
submount;
a first electrical terminal that is fixed to the mount but
that is insulated therefrom;
a wire that connects the first electrical terminal to a first
electrode, which is a p-electrode, of the nitride semiconductor
laser chip; and
a cap that encloses the wire, the nitride semiconductor
laser chip, and the submount and that is fixed to the mount,
wherein
the mount is formed out of gold-plated metal, and has a
base portion that is plate-shaped and that is formed of metal
predominantly containing iron and a column-shaped portion
that projects from the base portion and that is formed of metal
predominantly containing iron or metal predominantly
containing copper, the insulating submount is directly mounted
on a side face of the column-shaped portion,
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the cap is formed out of a nonconductive material, and is
fixed to the base portion, between the nitride semiconductor
laser chip and the insulating submount, a conductive member is
provided, to which a second electrode, which is an n-electrode,
provided on a bottom face of a substrate of the nitride
semiconductor laser chip is electrically connected, the substrate
being formed out of a nitride semiconductor,
a second electrical terminal is provided that is fixed to
the mount but that is insulated therefrom, the second electrical
terminal being connected, via a wire, to the conductive member,
and
the second electrode of the nitride semiconductor laser
chip is insulated from the mount.

REJECTION
Claims 1, 2, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of U.S. Patent Application No.
2003/0086243 ("Harding"), JP Patent No. 61- 088259 ("Ootsuka"), JP Patent
Publication No. 2003-051637 ("Tsuda"), U.S. Patent No. 4,207,149
("Mason"), and Appellants' Admitted Prior Art ("AAPA") (Figure 7A; and
Appellants' Remarks submitted 12/08/08).

GROUPING OF CLAIMS
Based on the dependencies of the claims, we will decide the appeal of
the obviousness rejection of claims 1, 2, and 6 on the basis of claim 1.

ISSUE
Issue: Did the Examiner err by relying on impermissible hindsight in
combining the Harding, Ootsuka, Tsuda, Mason, and AAPA references?
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Contentions
In the rejection of claim 1, the Examiner finds that one of ordinary
skill would have been motivated to: (1) modify Harding's device with the
Ootsuka's nonconductive cap because Ootsuka 's nonconductive cap is
inexpensive, and (2), modify Harding's laser with Tsuda/AAPA's nitride
laser because the nitride laser produces less heat. (Ans. 4). Reproduced
below are the three principal arguments presented by Appellants:
A.
Appellants present the following contentions:
A. Modifying Harding as proposed by the Examiner to include
a "cap being formed out of nonconductive material," as recited
in claim 1, would render Harding unsatisfactory for its intended
use [.]
. . .
Modifying the TO-Can body 101 so as to be formed out of a
nonconductive material, such as the plastic or resin taught by JP
'259, would substantially reduce the ability of the heatsink pin
140 to absorb heat effectively from the entire TO-Can package
100, particularly in areas further away from the header 104.
Such a modification would result in the TO-Can package 100
retaining a greater amount of heat, which is against Harding's
intended purpose. Accordingly, one of ordinary skill in the art
would have been discouraged rather than motivated to modify
Harding's device by replacing the metallic TO-Can body 101
with the nonconductive cap of JP '259, as suggested by the
Examiner.
(App. Br. 4-5) (emphasis removed).

The Examiner disagrees that the TO-Can body 101 helps transfer heat
to the header 104 and points to paragraph 0021:
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"[H]eat energy [emitted from the laser diode] is
mainly conducted into the laser device carrier 126
from where it is conducted to the heatsink pillar
128. The heat energy is then conducted through
the TO-Can header [104]"
. . .
Therefore, modifying Harding to replace the metal TO-Can
body with a plastic material would not reduce the ability of the
heatsink pin 140 to absorb heat effectively from the entire TO-
Can package.
(Ans. 5-6).
B.
Appellants present the following additional contentions:
B. The Examiner does not provide sufficient evidence of a
credible reason or motivation for one of ordinary skill in the art
to incorporate the teachings of JP '259 into the device of
Harding.
. . . The Examiner states on pages 4-5 of the final Action that
one of ordinary skill in the art would have been motivated to
combine the transparent cap of JP '259 with the device of
Harding for the purpose of making an inexpensive transparent
cap in a single molding step. The Examiner has not established,
however, that a transparent cap costs less than a metallic TO-
Can body, as taught by Harding, or that such a reason would
actually have occurred to a person of ordinary skill in this art at
the time appellants' invention was made without the benefit of
hindsight. Without knowing the cost differential between the
two elements, the Examiner cannot rely on the cost of the
transparent cap as a proper motivation for substituting the
transparent cap for the TO-Can body because one of ordinary
skill in the art would continue to use the metallic body if it were
cheaper.
(App. Br. 5)

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The Examiner disagrees:
The examiner points out that the reason for indicating that the
plastic cap was "inexpensive" comes from the prior art
reference '259. . . . The examiner is not required to provide a
cost benefit analysis for substituting one component for the
other, since the prior art already provides a teaching and a
motivation for such substitution. The fact that the prior art
recognizes that the TO-Can body can be made from plastic
materials instead of metal is a sufficient evidence of
obviousness.
Furthermore, the appellant's assertion of hindsight is
unfounded since the '259 reference discloses using a plastic cap
instead of a metal cap in a TO-Can package.
(Ans. 6).
C.
Appellants present the following additional contentions:
C. The Examiner provides no credible reason or motivation for
one of ordinary skill in the art to incorporate the teachings of
Tsuda or Figure 7 of AAPA into the device of Harding.
. . .
One of ordinary skill in the art would have recognized the
disadvantages of Harding, would have recognized that such a
package was not needed when using a nitride semiconductor
chip because of the reduced heat emission of the chip, and thus
would have been motivated to use a smaller, cheaper structure
like that illustrated by Figure 7A of this application. Absent the
teachings of this application, a person of ordinary skill in the art
would have had no reason or motivation to mount a nitride
semiconductor chip in the TO-Can package of Harding.
(App. Br. 6- 7) (emphasis removed).
The Examiner disagrees:
The examiner responds that Harding reference is silent on the
details of the materials of the laser diode, which means that the
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TO-Can of Harding is suitable for use with any composition of
semiconductor laser. All laser diodes produce heat during
operation, no matter what materials are used to make them.
The heat produced by the laser diode would need to be removed
from the laser package in order for the laser to function
properly. Therefore pin 140 would not be superfluous and the
principle of operation the device of Harding would not change
no matter what semiconductor materials are used to make the
laser diode.
(Ans.7).
ANALYSIS
The dispositive question in this appeal is whether Appellants have
shown the Examiner erred by relying upon impermissible hindsight in
combining the Harding, Ootsukaa, Tsuda, Mason, and AAPA references to
formulate the nitride laser chip device having a nonconductive cap, as
recited in claim 1.
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000 (Fed. Cir. 1999)). Where the claimed subject matter involves more
than the simple substitution one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness must be based on “an apparent
reason to combine the known elements in the fashion claimed.” KSR Int’l v.
Teleflex, Inc., 550 U.S. 398, 417-18 (2007). That is, “there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id., 550 U. S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on
interrelated teachings of multiple patents, the effects of demands known to
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the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR, 550
U.S. at 417-18.
We are cognizant that our reviewing courts have not established a
bright-line test for hindsight. However, in KSR, the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co.,
383 U.S. 1, 36 (1966)). Nevertheless, in KSR the Supreme Court also
qualified the issue of hindsight by stating that “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR, 550 U.S. at 421.
Post KSR, we view the hindsight analysis as essentially a balancing
test that weighs the predictable use of familiar elements against a “but for”
causation analysis:
We see the question before us to be whether the Examiner’s
proffered combination of Harding, Ootsukaa, Tsuda, Mason,
and AAPA is merely: (1) “the predictable use of prior art
elements according to their established functions” by an
artisan possessing common sense (KSR, 550 U.S. at 417), or,
(2) would the same artisan have reasonably combined the
references in the manner proffered by the Examiner (to
formulate a nitride semiconductor laser chip device having a
nonconductive cap) but for having the benefit of Appellants’
claims to use as a guide?

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The case before us presents a close question. However, Appellants'
three principal arguments collectively persuade us that the Examiner relied
on impermissible hindsight. Firstly, we see no deficiency in the teachings of
Harding that would have reasonably led an artisan familiar with laser
devices to look to Ootsuka's teaching of a nonconductive cap. We agree
with Appellants' argument to the extent that Ootsuka's non-conductive cap
would transfer less heat than Harding's metal cap. (App. Br. 4-5). Since
Harding strives to increase cooling, one skilled in the art would have been
discouraged from modifying Harding's device with Ootsuka's
nonconductive, thermally insulating, cap.
Secondly, while the Examiner proffers that Ootsuka's teaching of a
molded transparent cap would be inexpensive (Ans. 4), Appellants are
correct that "[t]he Examiner has not established [] that a transparent cap
costs less than [Harding's] metallic TO-Can body." (App. Br. 5). Because
the Examiner has not produced evidence of record that establishes Ootsuka's
nonconductive cap is less expensive than Harding's metal cap, we decline to
engage in speculation regarding the relative costs of the two types of caps.
Thirdly, we find persuasive Appellants' argument that a person of
ordinary skill in the art would have had little motivation to mount a low heat
producing nitride semiconductor chip in Harding's high heat dissipating
package, because the low heat producing nitride semiconductor chip would
not require the high heat dissipating package of Harding. (App. Br. 6-7).
Thus, after weighing the aforementioned arguments and evidence, we
find an artisan possessing common sense would not have reasonably been
led to combine the references to meet the claimed nitride laser chip device
having a nonconductive cap, without having the benefit of Appellants’
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Application 11/038,123
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claims to use as a guide. We are also mindful that every Examiner begins the
search for prior art by searching the claims of the patent application.
Although the teaching, suggestion, or motivation (TSM) test is no longer a
rigid rule post KSR, "the best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is rigorous application
of the requirement for a showing of the teaching or motivation to combine
prior art references." Dembiczak, 175 F.3d at 999.
On this record, we agree with Appellants that the Examiner has not set
forth an articulated reasoning with the requisite rational underpinning
required to support the legal conclusion of obviousness. In particular, we
are unconvinced that an artisan possessing common sense would have
reasonably combined the Harding, Ootsuka, Tsuda, Mason, and AAPA
references in the manner proffered by the Examiner, but for having the
benefit of Appellants’ claimed subject matter.

DECISION
We reverse the Examiner’s rejection of claim 1 and that of claims 2
and 6, which depend therefrom.

REVERSED

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