Ex Parte Kitajima

Patent Trial and Appeal Board

Feb 14, 2018

14100103 (P.T.A.B. Feb. 14, 2018)

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.
14/100,103 12/09/2013 Hiromichi KITAJIMA 36856.2886 5467
54066 7590 02/16/2018
MURATA MANUFACTURING COMPANY, LTD.
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
CHEN, ZHITONG
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
02/16/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
JKEATING@KBIPLAW.COM
u spto @ kbiplaw. com
cbennett @ kbiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROMICHI KITAJIMA
Appeal 2017-009352
Application 14/100,103
Technology Center 2600
Before JAMES R. HUGHES, CATHERINE SHIANG, and
JESSICA C. KAISER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2—19, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to circuit
modules that include a mounting substrate provided with signal electrodes, a
ground electrode arranged between the signal electrodes when viewed in
plan, and via conductors connected to the ground electrode. See Spec. 11.
Claim 2 is exemplary:
Appeal 2017-009352
Application 14/100,103
2. A circuit module comprising:
a mounting substrate including a plurality of signal
electrodes, a ground electrode that is arranged between the signal
electrodes when viewed in plan and isolated from the signal
electrodes, and a plurality of via conductors that are connected to
the ground electrode;
wherein each of the plurality of via conductors is arranged
so that an edge of the ground electrode is superposed with at least
a portion of an end surface of the via conductor when viewed in
plan; and
all of the plurality of signal electrodes and all of the
plurality of via conductors are spaced away from edges of the
mounting substrate.
References and Rejection
Claims 2—19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the collective teachings of Kemmochi et al. (US
2004/0032706 Al; publ. Feb. 19, 2004) (“Kemmochi”), Nagano et al. (US
2007/0247258 Al; publ. Oct. 25, 2007) (“Nagano”), and Hatano et al. (US
2009/0302970 Al; publ. Dec. 10, 2009) (“Hatano”).
ANALYSIS
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the Final Office Action from
which this appeal is taken (Final Act. 4—6) and (ii) the Examiner’s Answer
(Ans. 4—10) to the extent they are consistent with our analysis below.1
On this record, the Examiner did not err in rejecting claim 2.
I
1 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
2
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Application 14/100,103
Appellant contends the Examiner has not provided the requisite
rationale for combining the teachings of Kemmochi, Nagano, and Hatano.
See Appeal Br. 3—15; Reply Br. 2—6. In particular, with respect to the
combined teachings of Kemmochi and Nagano, Appellant argues:
Nagano et al. does not teach or suggest that the arrangement of
the small portion (annotated portion) of the vias 51 with respect
to an edge of the ground electrodes 41 and 42 contribute to
enhancing filter device isolation.
[TJhere would have been no reason or motivation to combine the
alleged teachings of Nagano et al. with the device of Kemmochi
et al. because Nagano et al. fails to teach, suggest, or even
contemplate that the arrangement annotated portion of the vias
51 of Nagano et al. should or could possibly have been included
in the device of Kemmochi et al.
Appeal Br. 8—9 (emphases added) (original emphasis omitted); see
also Appeal Br. 8—9, 14—15; Reply Br. 2—6.
With respect to the combined teachings of Kemmochi (as
modified by Nagano’s feature) and Hatano, Appellant contends:
Hatano et al. does not teach or suggest that the arrangement of
the signal electrodes (4, 6, 8) and the via conductors (36) being
spaced away from edges of the substrate (2) as shown in Fig. 2
of Hatano et al. contributes to a reduced size and reliable
isolation between terminal pads.
[0]ne of ordinary skill in the art would readily understand that
modifying Kemmochi et al. such that the signal electrodes
(GSM1800 RX/TX, EGSM900 RX/TX, and ANT) would have
been spaced away from edges of the laminate would have at
least required increasing the size of laminate or a complete
redesign and reconfiguration of the internal and external
structure of the laminate ....
3
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Application 14/100,103
Appeal Br. 11—12 (emphasis added) (original emphases omitted); see
also Appeal Br. 12—15; Reply Br. 2—6.2
Appellant has not persuaded us of error. The U.S. Supreme Court has
held “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Kemmochi, Nagano, and Hatano. See Final Act. 6;
Ans. 4—5. In particular, the Examiner finds—and Appellant does not
dispute—Kemmochi, Nagano, Hatano are analogous art and suitable for the
proposed combination. See Ans. 4—5. The Examiner correctly determines
one skilled in the art would have modified Kemmochi’s system to
incorporate Nagano’s technique to achieve the predicable result of
enhancing device isolation. See Final Act. 6. The Examiner also correctly
determines one skilled in the art would have modified Kemmochi’s system
(as modified by Nagano’s teachings) to incorporate Hatano’s technique to
achieve the predicable result of reliable isolation between terminal pads. See
Final Act. 6.3 The Examiner finds Appellant’s arguments are unpersuasive
2 Appellant’s assertion that “Hatano et al. is completely silent regarding the
spacing between the signal electrodes (4, 6, 8) or the via conductors (36) and
the edges of the substrate (2) as shown in Fig. 2 of Hatano et al.” (Appeal
Br. 11) is incorrect. Because Appellant acknowledges the spacing feature is
“shown in Fig. 2 of Hatano et al.,” Hatano is not “completely silent” about
that feature.
3 Alternatively, the Examiner determined one skilled in the art would have
pursued the proposed combination to achieve size reduction. See Final Act.
6. Because the Examiner has already provided the above rationale for the
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because Appellant ignores common knowledge known to one skilled in the
art. See Ans. 4. The Examiner further finds improving device performance
by enhancing isolation was well known in the art. See Ans. 4.
Appellant does not persuasively show why the Examiner’s
determinations are incorrect. In particular, “[i]f the claim extends to what is
obvious, it is invalid under § 103” and “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418—19.
Therefore, Appellant’s arguments that Nagano (and similarly Hatano) does
not specify the cited feature achieves the desired isolation result is
unpersuasive. Similarly, the following argument is unpersuasive:
Since Hatano et al. fails to teach or suggest that the
arrangement of the signal electrodes (4, 6, 8) and the via
conductors (36) being spaced away from edges of the substrate
(2) as shown in Fig. 2 of Hatano et al. would even have been
suitable for use in the laminate of Kemmochi et al., which clearly
shows that the signal electrodes (GSM 1800 RX/TX, EGSM900
RX/TX, and ANT) are provided at the edges of the mounting
substrate (laminate), there would have been no reasonable
likelihood of success of combining the alleged teachings of
Hatano et al. with Kemmochi et al.
Appeal Br. 12. Under KSR, 550 U.S. at 418—19, Hatano does not
need to specify its feature is suitable for use in Kemmochi, and
Appellant has not shown the absence of that specific statement would
proposed modification, we do not need to evaluate the alternative
determination, which is cumulative and unnecessary.
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Application 14/100,103
have resulted in “no reasonable likelihood of success,” as Appellant
asserts (Appeal Br. 12).
Further, Appellant’s assertion that modifying Kemmochi’s
system with Hatano’s spacing away technique “would most certainly
not have . . . achieved isolation between terminal pads” (Appeal Br.
12, 15) is unpersuasive because it is conclusory, and lacks persuasive
analysis and support.
The Examiner’s findings and conclusion are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” since the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420-21. Appellant does not
present adequate evidence that the resulting arrangements would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418—19). In particular, Appellant’s assertion that the proposed
combination of Kemmochi and Hatano would have required “a complete
redesign and reconfiguration” (Appeal Br. 12, 15 (original emphases
omitted)) is speculative and unsupported. For example, Appellant does not
persuasively show why and how the proposed modification would have
required “a complete redesign and reconfiguration” of the “circuit electrode
patterns, wiring patterns, via-holes” (Appeal Br. 12, 15 (original emphases
omitted)). To the contrary, one skilled in the art would have increased the
size of the substrate—not a complete redesign and reconfiguration of those
patterns and via holes—to incorporate the spacing away feature.
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Finally, Appellant’s argument about teaching, suggestion, or
motivation (Appeal Br. 14—15) is outdated and contradicts the current legal
standard. See KSR, 550 U.S. at 419 (“The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents”).4
Accordingly, we agree with the Examiner that applying Nagano’s and
Hatano’s techniques in Kemmochi’s system would have predictably used
prior art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.
II
Appellant argues the proposed combination is motivated by
impermissible hindsight. See Appeal Br. 15—17.
We disagree. Our reviewing courts have not established a bright-line
test for hindsight. 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 arguments reliant upon ex post reasoning.” KSR, 550
4 Appellant’s assertion that “as discussed above, none of. . . any other
evidence of record, such as knowledge generally available to one of
ordinary skill in the art, provides any reason or motivation whatsoever to
have modified Kemmochi [to achieved the proposed combinations]”
(Appeal Br. 14 (emphases added)) is incorrect and contradicts the record.
Appellant has not presented such discussion “above” with respect to
“knowledge generally available to one of ordinary skill in the art,” as
Appellant asserts (Appeal Br. 14). Therefore, that assertion is unpersuasive
because it is conclusory, and lacks persuasive analysis to support the
conclusion.
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U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
36 (1966)). “Rigid 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.
As discussed above, Appellant has not demonstrated the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., 485 F.3d
at 1162. In particular, Appellant’s assertion that the Examiner
impermissibly relies on the Specification (Reply Br 4) is incorrect and
contradicts the record. To the contrary, the Examiner correctly cites the
Specification to show Kemmochi, Nagano, Hatano, and this invention are all
in the same field of endeavor, and the cited references constitute analogous
art. See Ans. 4—5; In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(citations omitted) (To determine this invention’s field of endeavor, we
consider the “explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.”).
Further, after reviewing the respective teachings and suggestions of
Kemmochi, Nagano, and Hatano, we find the weight of the evidence shows
the proffered combination is merely a predictable use of prior art elements
according to their established functions, because the combination uses prior
art elements of (i) arranging each of the via conductors, so that an edge of
the ground electrode is superposed with at least a portion of an end surface
of the via conductor; and (ii) spacing all of the signal electrodes and via
conductors away from edges of the mounting substrate, according to their
well-known function of enhancing isolation, which leads to better device
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Application 14/100,103
performance. Therefore, on this record, Appellant has not persuaded us the
Examiner engaged in impermissible hindsight.
Ill
In the Reply Brief, Appellant argues:
However, contrary to the Examiner’s allegations, Nagano
et al. fails to teach or suggest that “each of the plurality of via
conductors is arranged so that an edge of the ground electrode is
superposed with at least a portion of an end surface of the via
conductor when viewed in plan” ... as required by Appellant’s
claim 2. As shown in Figs. 6-8 of Nagano et al. annotated and
reproduced below, there are many vias 51, in fact more vias 51
(circled below in Fig. 6 of Nagano et al.) than those indicated by
the arrows as annotated by the Examiner, that are not arranged
so that an edge of the ground electrode 4lor 42 is superposed
with at least a portion of an end surface of the via conductor 51
when viewed in plan. Further, neither paragraphs [0040]-[0045]
nor any other portions of Nagano et al. discuss or even mention
the arrangement of the vias 51 with respect to an edge of the
ground electrodes 41 and 42.
Reply Br. 3 (original emphases omitted).
Even if the above arguments are timely, they are unpersuasive
for the following reasons.
First, the claim merely requires “each of the plurality of via
conductors is arranged so that an edge of the ground electrode is
superposed with at least a portion of an end surface of the via
conductor when viewed in plan” (emphasis added). The Examiner
maps “the plurality of via conductors” to Nagano’s vias indicated by
arrows (Final Act. 5—6)—not all of the vias in Nagano’s drawings.
Appellant’s argument about the remaining vias (Reply Br. 3) is
unpersuasive because it is not directed to the Examiner’s findings.
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Second, Appellant’s argument that “neither paragraphs [0040]-
[0045] nor any other portions of Nagano” use words to explicitly
discuss that feature (Reply Br. 3) is unpersuasive. Although Nagano’s
text does not repeat the recited claim limitation verbatim, one skilled
in the art would understand the recited claim limitation encompasses
the Nagano drawings cited by the Examiner. See In re Bond, 910 F.2d
831, 832—33 (Fed. Cir. 1990) (whether a reference teaches a claim
limitation “is not an ‘ipsissimis verbis’ test”) (internal citation
omitted). In fact, the Examiner finds—and Appellant does dispute—
Nagano’s drawings teach “the plurality of via conductors [are]
arranged so that an edge of the ground electrode is superposed with at
least a portion of an end surface of the via conductor when viewed in
plan.” See Final Act. 5—6; Ans. 7—8.5
Because Appellant has not shown the Examiner erred, we sustain the
Examiner’s rejection of claim 2.
We also sustain the Examiner’s rejection of corresponding dependent
claims 3—19, as Appellant does not advance separate substantive arguments
about those claims.
DECISION
We affirm the Examiner’s decision rejecting claims 2—19.
5 Because Nagano’s drawings teach the limitation, Appellant’s assertion that
“Nagano et al. is completely silent regarding the arrangement of the vias 51
with respect to an edge of the ground electrodes 41 and 42” (Appeal Br. 8
(emphasis added)) is incorrect.
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Application 14/100,103
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
11