Yoshihiro Yamaguchi et al.

Patent Trials and Appeals Board

Jul 25, 2019

14268219 - (D) (P.T.A.B. Jul. 25, 2019)

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.
14/268,219 05/02/2014 Yoshihiro YAMAGUCHI 433828US 1031
22850 7590 07/25/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
STOWE, SCOTT C
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIHIRO YAMAGUCHI and YOSHIKO OBIRAKI
____________

Appeal 2017-0114691
Application 14/268,219
Technology Center 2800
____________

Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 9–12, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We reverse.

1 An oral hearing was held June 25, 2019.
2 According to Appellants, the real party in interest is Mitsubishi Electric
Corporation. App. Br. 1.
Appeal 2017-011469
Application 14/268,219

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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to “a connecting technique for
a semiconductor device in which a plurality of semiconductor chips, such as
power semiconductor devices, are provided on a substrate.” Spec. 1:10–12.
Claim 9, which is illustrative of the claimed invention, reads as follows:
9. A semiconductor device comprising:
a plurality of semiconductor chips formed on a substrate;
and
a plate electrode full-cut into a given pattern for
connecting electrodes of said plurality of semiconductor chips,
said plate electrode having half-cut portions, the half-cut
portions being formed by half-pressing a plate to provide raised
sides having sheared edge surfaces at the half-cut portions,
wherein the raised sides are bonded by bonding material with
said electrodes of said semiconductor chips.

Rejections
Claims 9–11 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Hozoji et al. (US 7,589,400 B2, issued Sept. 15, 2009)
(“Hozoji”). Final Act. 5–7.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hozoji and Chang et al. (US 2004/0188706
A1,published Sept. 30, 2004) (“Chang”). Id. at 8.

ANALYSIS
Issue: Did the Examiner err in finding that Hozoji discloses “said
plate electrode having half-cut portions, the half-cut portions being formed
by half-pressing a plate to provide raised sides having sheared edge surfaces
at the half-cut portions,” as recited in claim 9?
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Application 14/268,219

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Regarding the disputed limitation, the Examiner finds Hozoji
discloses a plate electrode with bent portions that each contact a chip of an
insulated gate bipolar transistor (IGBT) device. Ans. 2 (citing Hozoji Figs.
5, 13). The Examiner finds Hozoji teaches “the bent portions are formed by
pressing” and therefore discloses the claimed “half-cut portions.” Ans. 2–3
(citing Hozoji 9:58–63). In particular, the Examiner finds:
[T]he [S]pecification does not set forth a special definition of half
pressing so as to exclude any pressing process of the prior art
from being capable of creating half cut portions and further half
cut portions are not defined in terms of any parameters such as
thickness and thus one of ordinary skill would not inherently
limit any parameters of a half cut portion other than being bent
from a plate as one can reasonably infer from the [A]ppellants[’]
figures. Furthermore there are no examples of a half pressing
process or parameters associated with such a process in the
original disclosure so as to the limit the half pressing process
inherently and also limit the resulting half cut portions to any
specific parameters. Moreover the limitation “a plate having half
cut portions formed by half pressing” is a product by process
limitation in a device claim and thus only the resultant structure
of the method process is given weight in the device claim. In this
case the resulting structure is a plate having half cut portions. As
similarly discussed above, half cut portions are not limited in the
specification to any specific dimensions such as thickness and
based off the drawings the half cut portions are bent relative to
the plate using a half pressing process (see Appellants Fig. 1).
Therefore, Hozoji’s plate with bent portions is within the scope
of the claimed limitation a plate having half cut portions.

Ans. 3. The Examiner further finds “[s]heared surfaces is not described in
the original disclosure and thus is not inherently limited to any particular
structure of the half cut portions.” Ans. 5. Additionally, the Examiner finds
“Hozoji discloses the connection terminals are bent by press . . . thus it is
interpreted that at least some amount of shearing force in the bent direction
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Application 14/268,219

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would be applied to the connection terminals during manufacture thus they
are reasonably interpreted as having sheared surfaces.” Id. We disagree.
During prosecution, claim terms are given their broadest reasonable
interpretation in light of the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret
claim terms using “the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). We presume that claim terms have their ordinary and customary
meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
2016) (“Under a broadest reasonable interpretation, words of the claim must
be given their plain meaning, unless such meaning is inconsistent with the
specification and prosecution history.”); In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
the meaning that the term would have to a person of ordinary skill in the art
in question.” (internal quotation marks omitted)).
The definition of “shear” includes “cut something off,” which is
consistent with the Specification’s use of the term. Microsoft Encarta
Dictionary, 802 (2004); Spec. 2:14–22, 8:4–18. Thus, we interpret the
claimed “sheared edge surfaces” to refer to edge surfaces formed by cutting.
Further, we agree with Appellants (App. Br. 3–5), that one of ordinary skill
in the art at the time of Appellants’ invention would have understood “that
the sheared edge of a half-cut portion in a plate material is distinctive of
cutting and is physically distinguishable from a raised side formed by simply
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Application 14/268,219

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bending the plate material” (Declaration of Yoshihiro Yamaguchi Under 37
C.F.R. § 1.132, executed Aug. 19, 2013). See also Donald F. Eary and
Edward A. Reed, Techniques of Pressworking Sheet Metal: An Engineering
Approach to Die Design, chapters 2 (Forces for Cutting Sheet Metal), 3
(Classification of Cutting Operations), 4 (Bending of Sheet Metal) (2nd
Edition, Prentice Hall, Inc.) (1974). Hozoji discloses “the position and
height of the connection terminals, is bent by a press, and has a bent part
LC-C in the middle of it.” Hozoji 9:61–63. Because Hozoji discloses that
the connection terminals are formed by bending with a press, rather than by
cutting, we agree with Appellants that Hozoji fails to disclose the claimed
“half-cut portions.”
Accordingly, we do not sustain the Examiner’s rejection of claim 9;
and claims 10 and 11, which depend, directly or indirectly, from claim 9.
Claim 12 depends from independent claim 9. The Examiner has not
established on this record that the secondary reference relied on in rejecting
this claim cures the deficiencies of Hozoji as set forth above with respect to
claim 9. Accordingly, we do not sustain the Examiner’s § 103 rejection of
claim 12 for the reasons discussed supra.

DECISION
We reverse the Examiner’s rejection of claims 9–11 under 35 U.S.C.
§ 102(a)(1).
We reverse the Examiner’s rejection of claim 12 under 35 U.S.C.
§ 103.

REVERSED