Ex parte Matsuzaki

Board of Patent Appeals and Interferences

May 8, 1998

08148271 (B.P.A.I. May. 8, 1998)

Application for patent filed November 8, 1993.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KAZUO MATSUZAKI

_____________
Appeal No. 96-2576
Application 08/148,2711
______________
ON BRIEF
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Before JERRY SMITH, FLEMING and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2576
Application 08/148,271
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-9, which constitute all
the claims in the application.
The disclosed invention pertains to a battery mounted
integrated circuit device. Specifically, the invention relates
to a thin film laminated battery mounted on a semiconductor chip.
Power receiving circuits within the semiconductor chip receive
battery power through switches located within the semiconductor
chip.
Representative claims 1 and 4 are reproduced as follows:
1. A battery mounted integrated circuit device,
comprising:
a semiconductor chip in which an integrated circuit
including a plurality of power receiving circuits with different
operating voltages is formed;
a thin film laminated battery, made of a solid
electrolytic film mounted on said semiconductor chip, for
producing a plurality of voltages; and
a power source switch incorporated in said integrated
circuit for connecting said battery to said power receiving
circuits to supply said plurality of voltages from said battery
to said power receiving circuits on demand.
4. A battery mounted integrated circuit device,
comprising:
a semiconductor chip in which an integrated circuit
including at least one power receiving circuit is formed;
a normal power source for supplying power to said
integrated circuit;
Appeal No. 96-2576
Application 08/148,271
3
a thin film laminated battery made of a solid
electrolytic film mounted on said semiconductor chip; and
a power source switch incorporated in said integrated
circuit for connecting said battery to said at least one power
receiving circuit;
wherein said battery is previously charged by said normal
power source while said integrated circuit is being operated by
said normal power source, and during power failure, said power
source switch is automatically operated so that power is supplied
from said battery to said at least one power receiving circuit.
The examiner relies on the following references:
Shimohigashi 4,672,586 June 09, 1987
McCain 5,153,710 Oct. 06, 1992
Claims 1-9 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers McCain in view of
Shimohigashi.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner's
Appeal No. 96-2576
Application 08/148,271
4
rationale in support of the rejection 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 1-9. Accordingly, we reverse.
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.,
Appeal No. 96-2576
Application 08/148,271
5
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
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the examiner has at
least two responsibilities in setting forth a rejection under 35
U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have been the result of an obvious
modification of the prior art. Since the differences between the
claimed invention and the applied prior art in this case appear
to have been properly identified and argued by the examiner and
appellant, the question for disposition is whether the examiner’s
conclusion of obviousness is supported by the evidence of record
in this case and the analysis provided by the examiner.
With respect to independent claim 1, appellant argues
that the following recitations of the claim are not suggested by
the applied prior art: (1) the semiconductor chip has a plurality
Appeal No. 96-2576
Application 08/148,271
6
of power receiving circuits with different operating voltages;
(2) the battery is mounted on the semiconductor chip; and (3) a
power source switch is incorporated within the integrated
circuit. Appellant also argues that there is no motivation for
duplicating the single integrated circuit of McCain and then
using the different voltage sources as taught by Shimohigashi.
In other words appellant questions whether there is any
suggestion to modify the teachings of McCain with the teachings
of Shimohigashi in the manner proposed by the examiner.
We will not concern ourselves with the propriety of each
of the three distinctions raised by appellant because we agree
with appellant that there is no suggestion to duplicate McCain’s
integrated circuit and to add plural operating voltages as
suggested by the examiner. The invention of claim 1 would
require a modification of McCain and a combination with
Shimohigashi which could come only from a hindsight
reconstruction of the invention. Although the examiner asserts
that it is obvious to duplicate components and provide plural
voltages, we agree with appellant that the modification proposed
by the examiner would not result in the invention of claim 1
[reply brief, page 5]. The mere fact that the prior art may be
modified in the manner suggested by the examiner does not make
Appeal No. 96-2576
Application 08/148,271
7
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We find no
such suggestion here.
With respect to independent claim 4, appellant argues
that the following recitations of the claim are not suggested by
the applied prior art: (1) the battery is previously charged by
the normal power source; (2) the battery is mounted on the
semiconductor chip; and (3) a power source switch is incorporated
within the integrated circuit. We will base this decision
primarily on this latter point raised by appellant. With respect
to this point, the examiner asserts that the McCain power switch
is located within the integrated circuit because McCain seeks to
minimize the need for additional external pins [answer, page 3].
Alternatively, the examiner simply concludes that it would have
been obvious to broadly integrate the claimed power source switch
within the integrated circuit [answer, pages 3 and 4-5].
The examiner and appellant disagree on where the power
switch in McCain is located. We find the examiner’s
understanding of McCain and her reasoning to be speculative at
best. We are not inclined to support a rejection based upon a
Appeal No. 96-2576
Application 08/148,271
8
completely speculative interpretation of a reference. The
examiner’s burden to present a prima facie case of obviousness is
not satisfied by such speculation. Additionally, the examiner’s
rationale that it would have been obvious to locate the power
source switch within the integrated circuit simply because
integration is desirable fails to address the obviousness of
applying that principle to the particular invention set forth in
the claims before us.

In summary, we cannot sustain the examiner’s rejection on
obviousness because the evidence of record in this case does not
provide the factual support necessary to support the examiner’s
position. Therefore, the decision of the examiner rejecting
claims 1-9 is reversed.
REVERSED
Appeal No. 96-2576
Application 08/148,271
9
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
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