Ex Parte Park et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10766101 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHUL WOO PARK,
SUK GU KO, SANG JAE JANG,
SUNG SU PARK, and CHOON HEUNG LEE
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Appeal 2009-002985
Application 10/766,101
Technology Center 2800
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Decided:1 June 25, 2009
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Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002985
Application 10/766,101

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
I. STATEMENT OF THE CASE
The invention relates to a memory card, for example a multi-media
card (MMC), and the method of fabricating the memory card (Spec. ¶ 3). In
particular, the memory card eliminates the need for a cap or lid due to a two-
stage molding process of forming first and second encapsulation parts on
opposed surfaces of a substrate (Spec. ¶¶ 7 and 8). Claim 1 is illustrative of
the subject matter on appeal:
1. A memory card, comprising:
a substrate having opposed top and bottom surfaces and a plurality of
terminals disposed on the bottom surface thereof;
at least one component mounted to the top surface of the substrate and
electrically connected to the terminals thereof;
a first encapsulation part formed on the bottom surface of the
substrate; and
a second encapsulation part formed on the top surface of the substrate
and encapsulating the component mounted thereto, the second encapsulation
part being completely separated from the first encapsulation part by the
substrate;
the first and second encapsulation parts each being exposed in the
memory card.
The Examiner’s maintains the following rejections:
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Application 10/766,101

1. Claims 1, 2, 6-12, and 16-232 rejected under 35 U.S.C. § 102(e) as
anticipated by U.S. Patent No. 6,988,668 B2, issued January 24, 2006 to
Osako et al. (hereinafter “Osako”)3;
2. Claims 3, 4, 13 and 14 rejected under 35 U.S.C. § 103(a) as obvious
over Osako in view of U.S. Patent No. 6,417,444 B1, issued July 9, 2002, to
Hirai et al.;
3. Claim 24 rejected under 35 U.S.C. § 103(a) as obvious over Osako
in view of U.S. Patent No. 5,244,840, issued September 14, 1993, to Kodai
et al.; and
4. Claims 5 and 15 under 35 U.S.C. § 103(a) as obvious over Osako
in view of U.S. Patent No. 6,145,023, issued November 7, 2000, to Iwaskai.
II. ISSUE ON APPEAL
All of the independent claims recite that the first encapsulation portion
and the second encapsulation portion (or the mold compound applied to the
bottom surface and the mold compound applied to the top surface of the

2 The Final Office Action stated the rejection as only directed towards
claims 1, 2, 11, 12, and 20, but made findings particularly directed to claims
6-10, 16-19, and 21-23 (Final Office Action, 2-4). The Examiner included
the previously unlisted claims in the stated rejection in the Answer (Ans. 3),
and Appellants Brief treats the claims as rejected (Br. 6-7). Therefore, the
error was harmless.

3 Appellants indicate that dependent claims stand or fall with their respective
independent claims (Br. 7) and present no separate arguments with respect to
any of the dependent claims. Accordingly, the issue raised with respect to
the first rejection, which incorporates all the independent claims, disposes of
all the rejections on appeal.

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Application 10/766,101

substrate)4 be “completely separated” from one another “by the substrate”
(see claims 1, 11, and 20-22).
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: have the Appellants shown that the
Examiner reversibly erred in finding that Figures 1-3 of Osako teach first
and second encapsulation portions (or the mold compounds applied to the
top and bottom surfaces of the substrate) “completely separated” from one
another “by a substrate”?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. The Examiner relies on the first embodiment taught by Osako,
illustrated in Figures 1-3 (see Final Office Action 7; Ans. 4 and 8).
2. The Examiner finds that sealing portion 3 and sealing portion 8 are a
“first encapsulating part” and a “second encapsulating part,” respectively as
required by the claims (see Final Office Action 2; Ans. 3-4 and 8).
3. The Examiner finds that “[t]he first and second sealing portions (3 and
8) [are] completely separated from each other by the substrate (5) of the IC
card/memory body (4), see figure 2” (Ans. 8) (emphasis omitted).
4. Osako teaches that “the sealing portion of the IC body 4 is formed
from a thermosetting resin material so that contact, with the sealing portion
8, of the resin material 3a heated to high temperature causes neither melting
nor softening of the sealing portion 8” (Osako, col. 9, l. 65 to col. 10, l. 2).

4 Appellants’ arguments do not distinguish between the teachings of Osaka
constituting an “encapsulating portion” vs. a “mold compound” (see
generally Br. and Reply Br.).
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Application 10/766,101

5. Figure 2 of Osako shows sealing portion 3 extending around a side
surface of substrate 5 and contacting sealing portion 8. (Osako, Figure 2).
Figure 2 of Osako is reproduced below:

Figure 2 depicts a cross sectional view of an IC card (Osako, col. 2, ll. 46-
47).
IV. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “A single reference must
describe the claimed invention with sufficient precision and detail to
establish that the subject matter existed in the prior art.” Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).
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Application 10/766,101

V. ANALYSIS
We agree with the Appellants that Figures 1-3 of Osako do not teach
sealing portion 3 and sealing portion 8 completely separated by substrate 5.
The Examiner’s findings to that effect are erroneous (FF 1-3). We find that
Osako teaches that sealing portion 3 and sealing portion 8 contact one
another (FF 4-5), as shown in Figure 2, and thus are not “completely
separated” as required by the clams. Accordingly, the Appellants have
shown reversible error in the Examiner’s factual findings. Hence, the
Examiner has not established that every limitation of the claimed invention
is disclosed by Osako.
VI. CONCLUSION
For the reasons discussed above, we cannot sustain the Examiner’s
rejection of claims 1, 2, 6-12, and 16-23 under 35 U.S.C. § 102(e) as being
anticipated by Osako. Since the rejections of the remaining dependent
claims also rely upon Osako in the same capacity as applied to claim 1, 2, 6-
12, and 16-23 (see Ans. 5-7), and the additional references are not relied
upon to remedy the above discussed deficiency, we cannot sustain any of the
Examiner’s rejections.
VII. DECISION
We reverse the Examiner’s decision.

REVERSED

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Appeal 2009-002985
Application 10/766,101

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