Ex parte Sharpes et al.

Board of Patent Appeals and Interferences

Jul 28, 1998

08091953 (B.P.A.I. Jul. 28, 1998)

Application for patent filed July 15, 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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHAEL J. SHARPES
and
ROBERT L. TOTORICA
_____________
Appeal No. 96-0396
Application 08/091,9531
______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge, and FRANKFORT
and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-0396
Application 08/091,953
2
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 1 through 16, all of the claims in the
application.
Appellants’ invention relates to an apparatus utilized
in the testing and burning in of semiconductor components.
Claim 1 is representative of the subject matter on appeal and a
copy of claim 1, as it appears in the Appendix to appellants’
brief, is attached to this decision.
The examiner relies on the following references:
Dice 4,145,620 Mar. 20, 1979
Yoshizaki 4,468,616 Aug. 28, 1984
Hamilton 4,900,948 Feb. 13, 1990
Claims 5 through 16 stand rejected under 35 U.S.C.
§ 112, first paragraph, since, in the examiner’s opinion, the
specification as originally filed does not provide support for
the invention as it is now claimed. The examiner argues that the
specification as originally filed teaches the use of a DC to DC
converter that reduces both voltage and current, and that by
Appeal No. 96-0396
Application 08/091,953
3
changes made in the substitute specification filed July 12, 1994
appellants have changed the meaning of the DC to DC converter.
More specifically, the examiner asserts (Answer, page 3) that the
now claimed feature of the DC to DC converters raising a low
power supply current to a higher current has not been disclosed
in the original specification.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Yoshizaki in view of Hamilton.
Claims 3 through 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yoshizaki and Hamilton and
further in view of Dice.
OPINION
Looking first to the rejection of claims 5 through 16
under 35 U.S.C. § 112, first paragraph, we understand this
rejection to be based upon the written description requirement of
the first paragraph of § 112. In general, the test for determin-
ing compliance with the written description requirement of § 112
is whether the disclosure of the application as originally filed
Appeal No. 96-0396
Application 08/091,953
4
reasonably conveys to the artisan that the inventor had posses-
sion at that time of the later claimed subject matter, rather
than the presence or absence of literal support in the specifica-
tion for the claim language under consideration. Further, it is
also well settled that the content of the drawings may be consid-
ered in determining compliance with the written description
requirement. See Wang Lab. Inc. v. Toshiba Corp., 993 F.2d 858,
865, 26 USPQ2d 1767, 1774 (Fed. Cir. 1993); Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). See also In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ
1089, 1096 (Fed. Cir. 1983).
The examiner has taken the position, that appellants
set forth that the DC to DC converters in the specification,
as originally filed, operated to lower both the DC voltage
and current. The originally filed specification (page 8,
lines 5-10) does appear to indicate, or at least imply, that
both the voltage and current were to be lowered by the DC to DC
converters. However, one of ordinary skill in the art would have
recognized that the power input to a DC to DC converter must
equal the power leaving the DC to DC converter, minus the losses
Appeal No. 96-0396
Application 08/091,953
5
due to resistance in the windings, magnetic losses, etc. This
means that if a DC to DC converter raises the voltage, the
amperage of the supplied current must be reduced and vice-versa.
Thus to the extent that the originally filed specification may
have mistakenly implied that both the voltage and current would
be lowered by the DC to DC converter, this would have been
readily understood by one of ordinary skill in the art to be an
impossibility under the operating conditions otherwise described
in the originally filed specification. After reviewing the
disclosure as a whole, we are convinced that the skilled artisan
would have readily understood the passage at page 8, lines 5-10,
of the originally filed specification in the manner now set forth
in the substitute specification. Accordingly, since in our
opinion, one of ordinary skill in the art would have reasonably
understood that the inventors herein had possession of the now
claimed subject matter at the time of original filing of the
application, we reverse the examiner’s rejection of claims 5
through 16 under 35 U.S.C. § 112, first paragraph.
Appeal No. 96-0396
Application 08/091,953
6
Next we review the examiner’s rejection of claims 1
and 2 under 35 U.S.C. § 103 as being unpatentable over Yoshizaki
in view of Hamilton. We will not sustain this rejection.
The combined teachings of Yoshizaki and Hamilton fail
to provide any suggestion of the use of a high voltage-low
current DC power being supplied along a bus bar to at least one
slot board, and the use of a DC to DC converter on the slot
board, which would lower the DC voltage to an appropriate level
and provide appropriate amperage for digital circuitry on the
Device Under Test (DUT) board. Both Yoshizaki and Hamilton fail
to teach any explicit details of their power supply. Neither
Yoshizaki nor Hamilton mentions a DC power supply or DC to DC
converters on the slot boards therein. The examiner’s conjecture
(in the paragraph bridging pages 5 and 6 of the answer) concern-
ing the possibility of a DC power supply and DC to DC converters
on the slot boards of a burn-in oven is without factual support
in the record and appears to be total speculation based on the
hindsight benefit of having first viewed appellants’ disclosure.
Accordingly, since Yoshizaki and Hamilton fail to teach or
Appeal No. 96-0396
Application 08/091,953
7
suggest the limitations of the claims, we reverse the examiner’s
rejection of claims 1 and 2 under 35 U.S.C. § 103.
Claims 3 through 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yoshizaki in view of Hamilton
and further in view of Dice. We will not sustain this rejection.
The same deficiency that required us to reverse the
rejection of claims 1 and 2 exists in this rejection too, namely
the lack of a single high voltage-low current DC supply and DC to
DC converters on each of the slot boards for converting the high
voltage-low current DC to a low voltage-high current DC needed by
the DUT on each given DUT board. In fact, the combination of
Yoshizaki, Hamilton, and Dice appears to teach away from the
claimed invention, by teaching the use of multiple power supplies
(elements 16, 18, 20 and 22 of Fig. 1 of Dice), which are sup-
plied to all the slot boards as required. Accordingly, since
Yoshizaki, Hamilton, and Dice fail to teach or suggest the
limitations of claims 3 through 16, we reverse the examiner’s
rejection of claims 3 through 16 under 35 U.S.C. § 103.
The decision of the examiner is reversed.
Appeal No. 96-0396
Application 08/091,953
8
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-0396
Application 08/091,953
9
Kevin D. Martin
Micron Semiconductor, Inc.
2805 East Columbia Road
Boise, ID 83706
Appeal No. 96-0396
Application 08/091,953
- A1 -
APPENDIX
1. A modularly designed burn-in oven, comprising:
an oven chamber;
an electrical components chamber;
an insulated wall separating said oven chamber from
said components chamber;
at least one DUT board in said oven chamber, said DUT
board having first and second ends and an electrical connector at
said first end;
a slot board in said components chamber, said slot
board having first and second ends, a first electrical connection
on said first end, and a second electrical connection on said
second end, said slot board positioned so that said first elec-
trical connection fits through said insulated wall and couples to
said electrical connector of said DUT board;
a direct current (DC) to DC power converter on said
slot board for receiving DC power from a power supply and lower-
ing a voltage level and providing appropriate amperage for
digital circuitry on said DUT board;
and
a seal positioned between said oven chamber and said
components chamber so as to pressure fit said electrical connec-
tion of said slot board to said DUT board.