Ex parte UDA

Board of Patent Appeals and Interferences

Sep 4, 1998

08344624 (B.P.A.I. Sep. 4, 1998)

Application for patent filed November 17, 1994. 1
According to the appellant, this application is a continuation
of Application 08/025,462, filed March 3, 1993, now abandoned.
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not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NOBUYA UDA

_____________
Appeal No. 96-1191
Application 08/344,6241
______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 96-1191
Application 08/344,624
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-11, which constitute
all the claims in the application.
The disclosed invention pertains to a semiconductor
integrated circuit chip having an input terminal and an output
terminal connected to an oscillator. More particularly, the
invention is directed to the manner in which a ground terminal
is connected with respect to the input and output terminals.
Representative claim 1 is reproduced as follows:
1. A semiconductor integrated circuit with a
semiconductor chip fixed on a metallic plate of ground
potential and sealed in a package, which has an output
terminal and an input terminal connected to an oscillator,
said package comprising:
a ground potential terminal provided between said
oscillator input and output terminals and extending from the
metallic plate, wherein said oscillator input and output
terminals do not extend from the metallic plate.
The examiner relies on the following reference:
Kadowaki 5,057,805 Oct. 15, 1991
Claims 1-11 stand rejected under 35 U.S.C. § 102(e) as
anticipated by, or in the alternative, under 35 U.S.C. § 103
as obvious over Kadowaki.
Appeal No. 96-1191
Application 08/344,624
3
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 rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. 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 rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure of Kadowaki neither anticipates
nor renders obvious the invention as set forth in claims 1-11.
Accordingly, we reverse.
We consider first the rejection of claims 1-11 under
35 U.S.C. § 102 as anticipated by the disclosure of Kadowaki.
Anticipation is established only when a single prior art
Appeal No. 96-1191
Application 08/344,624
4
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to independent claims 1 and 3, the
anticipation question basically reduces to a consideration of
the oscillator in claims 1 and 3. Appellant argues that there
are three oscillator recitations in these claims which are not
present in Kadowaki. Specifically, appellant argues that
Kadowaki does not disclose the following:
(1) terminals/electrodes connected to
an oscillator;
(2) a ground potential terminal
positioned between the oscillator
input and output terminals/electrodes;
and wherein
(3) the ground potential extends from
a metal plate, while the oscillator
input and output terminals/electrodes
Appeal No. 96-1191
Application 08/344,624
5
do not extend from the metal plate
[brief, pages 5-6].
The examiner asserts that the oscillator is not part of the
invention and is merely a functional use of the invention
which is not given any patentable weight [answer, pages 3-5].
The examiner’s position is without merit. Independent
claims 1 and 3 clearly recite that the integrated circuit/chip
is connected to an oscillator, and these claims also clearly
recite specific connections involving the input and output
terminals/electrodes of the oscillator. We fail to see how
the device of Kadowaki, which discloses no oscillator, can
fully meet the recitations of claims 1 and 3. It was an error
for the
examiner to treat the oscillator recitations as
nondistinguishing limitations in the claim. Therefore, we do
not sustain the examiner’s rejection of independent claims 1
and 3 as anticipated by Kadowaki. It necessarily follows that
we also do not sustain this rejection of any of the dependent
claims as well.
We now consider the rejection of claims 1-11 under 35
U.S.C. § 103 as unpatentable over the teachings of Kadowaki.
Appeal No. 96-1191
Application 08/344,624
6
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an examiner is under a burden to make
out a prima facie case of obviousness. If that burden is met,
the burden of going forward then shifts to the applicant to
overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685,
686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
With respect to independent claims 1 and 3, appellant
argues that (1) the examiner has failed to establish a prima
facie case of obviousness; (2) the examiner has not made
appropriate factual findings; and (3) the examiner has
provided no motivation to modify Kadowaki so as to arrive at
the claimed invention [brief, pages 7-11]. Since the examiner
has alternatively rejected the claims under Sections 102 and
103, there is little discussion on the question of
obviousness. The examiner’s only comment is that it would
Appeal No. 96-1191
Application 08/344,624
7
have been an obvious design choice to connect an oscillator to
the Kadowaki device [answer, pages 3-4].
We will not concern ourselves with whether the
examiner’s rejection meets the legal threshold for a prima
facie case of obviousness because the rejection would fail on
the merits in any case. The examiner’s bald conclusion that
it would have been obvious to connect an oscillator to the
Kadowaki device lacks any support on this record. We agree
with appellant that the teachings of Kadowaki are not
automatically applicable to an oscillator connection, and even
if an oscillator were connected to the leads in Kadowaki, the
invention of claims 1 and 3 would not necessarily result.
Kadowaki is concerned with creating a coplanar high frequency
transmission path between a pair of ground leads and a single
signal lead. The signal leads in Kadowaki are not
distinguished as being input or output leads so that it is not
clear that the connections of the input and output
terminals/electrodes of claims 1 and 3 would have been obvious
in view of the Kadowaki teachings. Therefore, we do not
sustain the rejection of independent claims 1 and 3 under 35
U.S.C. § 103 as unpatentable over the teachings of Kadowaki.
Appeal No. 96-1191
Application 08/344,624
8
It necessarily follows that we also do not sustain the
rejection of any of the dependent claims as well.
In summary, we have not sustained either of the
examiner’s alternative rejections under 35 U.S.C. §§ 102 and
103. Accordingly, the decision of the examiner rejecting
claims 1-11 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-1191
Application 08/344,624
9
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