Ex Parte Hartmann et alDownload PDFPatent Trials and Appeals BoardJun 28, 201914878466 - (D) (P.T.A.B. Jun. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/878,466 10/08/2015 Samuel Hartmann 137670 7590 06/28/2019 ABB - Whitmyer IP Group LLC 600 Summer Street Stamford, CT 06901 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 04190-P0090A 9520 EXAMINER STARK, JARRETT J ART UNIT PAPER NUMBER 2822 MAIL DATE DELIVERY MODE 06/28/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMUEL HARTMANN, FRANC DUGAL, OLLE EKWALL, and ERIC DORE 1 Appeal2017-009669 Application 14/878,466 Technology Center 2800 Before BRADLEY W. BAUMEISTER, SHARON PENICK, and RUSSELL E. CASS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Non-Final Rejection of claims 1-4 and 6-12. App. Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was conducted on June 24, 2019. A transcript of the oral hearing will be made of record in due course. We affirm-in-part. 1 Appellants list ABB SCHWEIZ AG as the real party in interest. Appeal Brief filed March 2, 2017 ("App. Br.") 2. 2 Rather than repeat the Examiner's positions and Appellants' arguments in their entirety, we refer to the above-mentioned Appeal Brief, as well as the following documents: the Non-Final Action mailed September 12, 2016 ("Non-Final Act."); the Examiner's Answer mailed May 4, 2017 ("Ans."); and the Reply Brief filed July 5, 2017 ("Reply Br."). Appeal2017-009669 Application 14/878,466 We designate our affirmance as constituting a new ground of rejection pursuant to our discretionary authority under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellants describe the present invention as follows: A power semiconductor module includes a first main electrode, a second main electrode and a control terminal. The power semiconductor module includes controllable power semiconductor components arranged between the first main electrode and the second main electrode. At least some of the controllable power semiconductor components are arranged in a ring arrangement, wherein the controllable power semiconductor components of the ring arrangement are arranged at least approximately along a first circular line of the ring arrangement, and a control conductor track of the ring arrangement is arranged on the first main electrode, wherein the control conductor track runs at least approximately along a second circular line of the ring arrangement, and the second circular line runs concentrically relative to the first circular line. Abstract. Independent claim 1, reproduced below, illustrates the claimed invention: 1. A power semiconductor module comprising: a first main electrode, a second main electrode, and a control terminal, and controllable power semiconductor components arranged between the first main electrode and the second main electrode, wherein each controllable power semiconductor component has a first electrode, a second electrode and a control electrode, and the first electrode of each controllable power semiconductor component is electrically connected to the first main electrode, the second electrode of each controllable power semiconductor component is electrically connected to the second main electrode, and the control electrode of each controllable power semiconductor component is 2 Appeal2017-009669 Application 14/878,466 electrically connected to the control terminal, wherein the controllable power semiconductor components are arranged in a plurality of ring arrangements, characterized in that each ring arrangement of the plurality of ring arrangements has the respective controllable power semiconductor components arranged at least approximately along a first circular line as well as a control conductor track which is arranged on the first main electrode and runs at least approximately along a second circular line, the second circular line of the respective ring arrangement runs concentrically and outside relative to the first circular line of the respective ring arrangement, wherein all of the controllable power semiconductor components are arranged in the plurality of ring arrangements, wherein the control electrode of each controllable power semiconductor component of the respective ring arrangement is connected via an electrical connection to the control conductor track of the respective ring arrangement, and the control conductor track of the respective ring arrangement is connected via a further electrical connection to the control terminal. Claims 1-4 and 6-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Oetjen (DE19644009 Al; published May 7, 1998) and Lake (EP O 645 814 A2; published Mar. 29, 1995). Non-Final Act. 3-9.3 In rejecting the claims, the Examiner finds that Oetjen generally discloses most of the limitations of independent claims 1 and 12, including teaching that two concentric-ring control conductor tracks are disposed outside of the respective two inner concentric rings of controllable power semiconductor components, as claimed. Non-Final Act. 3-5 (citing Oetjen col. 4, 11. 11-15 and 40-62; Figs. 1, 2). The Examiner finds that Oetjen 3 The Examiner clarifies that in the Examiner's Answer that the Non-Final Office Action contains a clerical error, and that all pending claims, in fact, stand rejected as obvious under 35 U.S.C. § 103. Ans. 5. 3 Appeal2017-009669 Application 14/878,466 does not teach a third control conductor track disposed concentrically around Oetjen's third, outermost ring of semiconductor components. Id. at 5. Thus, the Examiner finds that Oetjen does not disclose the claim requirement that "all of the controllable power semiconductor components are arranged in the plurality of ring arrangements" and in each of these ring arrangements "a control conductor track ... runs at least approximately along a second circular line [that runs] concentrically and outside" of "controllable power semiconductor components arranged at least approximately along a first circular line." The Examiner cites Figure 4 of Lake as evidence that it was known to one of ordinary skill in the art at the time of the invention to provide a control conductor track so as to surround the outermost ring of semiconductor components. Id. The Examiner concludes that "rearranging the layout as taught in Oetjen to include a conductor track outside the circular lines [ of semiconductor components] would [have been] a[ n] obvious design choice to one of ordinary skill in the art at the time of the invention as it [was] a known arrangement and does not produce unexpected results and/or benefit." Id. (citing MPEP § 2144.04 VI). Appellants present arguments on appeal regarding the rejection of the independent claims and of various dependent claims. We address these arguments seriatim, below. In so doing, we review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 4 Appeal2017-009669 Application 14/878,466 CLAIMS 1-4, 6, AND 10-12 I. Appellants first argue that Lake fails to cure the deficiencies of Oetjen. App. Br. 9-11. More specifically, Appellants argue the following: Lake describes a semiconductor switching device module consisting of only one ring of substrate subassemblies 10 (FIG. 1) mounted to a baseplate 44 (FIG. 7; col. 17, 11. 17-23), wherein each subassembly includes a transistor 18 and leads 34, 36 .... As such, Lake does not teach or suggest a situation where a module comprises a plurality of ring arrangements, wherein each ring arrangement has a first circular line of power semiconductor components and a second circular line of control conductor track and wherein the second circular line runs concentrically and outside relative to the first circular line. App. Br. 9-10. Appellants next argue that no motivation exists to modify Oetjen with Lake because such a modification would require a change in the principle of operation of Oetjen. Id. at 12-13. These arguments are unpersuasive because Appellants are improperly arguing the references individually and improperly arguing against the bodily incorporation of Lake into Oetjen. See In re Keller, 642 F.2d 413, 426 (CCP A 1981) (holding that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references); see also id. at 425 ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art"). In the present case, the Examiner is not determining that Lake teaches the plurality of ring arrangements, or that the combination used in the 5 Appeal2017-009669 Application 14/878,466 rejection is based on an integration of the circuitry of Oetjen and Lake. The Examiner, instead, is relying on Lake merely for the proposition that a circular conductor track may be provided outside a ring of semiconductor components as opposed to inside the ring. The Examiner uses this teaching to support the conclusion that it would have been obvious to provide Oetjen with a circular control conductor track outside of the outermost ring of power semiconductor chips instead of inside the ring. We, therefore, are not persuaded by Appellants' arguments regarding Lake's alleged deficiency with respect to teaching a plurality of ring arrangements. We, likewise, are not persuaded by Appellants' arguments that the Examiner's findings and conclusions regarding the integration of Oetjen and Lake constituted reversible error. Appellants next argue that the combination of Oetjen and Lake would not arrive at the presently claimed invention. Id. at 13-14. More specifically, Appellants argue that if one were to "rearrange" the layout of Oetjen, then a skilled worker would merely relocate or reorient the outer ring of contacts 22, 24 to surround the outermost ring of power chips 6. However, with such reorientation, the middle ring of power chips 6 would then no longer be part of the claimed ring arrangements as required by Claims 1 and 12. Id. at 13. Appellants relatedly argue that a skilled worker viewing the combination of Oetjen and Lake "would only be motivated to modify Oetjen so that the outer contacts 22, 24 (shown in FIG. 2 surrounding the middle ring of power chips 6) are reoriented to surround both the outermost ring of power chips 6 and the middle ring of power chips 6." Id. at 14. 6 Appeal2017-009669 Application 14/878,466 These arguments are unpersuasive. We understand the Examiner's rejection is not based on moving Oetjen's outer ring of contacts 22, 24 from between the second and third ring of power chips and relocating the ring of contacts to be outside of the third ring of power chips. We, instead, understand the Examiner's position to be that it would have been obvious perform either of two modifications. First, it would have been obvious to duplicate the ring of contacts so that the second ring of contacts 22, 24 would remain located as taught by Oetjen, and so that a new or duplicated, third ring of contacts would be disposed outside of the third ring of power chips for electrical connection thereto. Non-Final Action 3. Second, it would have been obvious to omit the third ring of power chips from Oetjen, thereby resulting in the existing outer conductor ring 22, 24 being the device's outermost ring. Id. at 4. That is, we understand the Examiner's position to be that it would have been obvious to provide each ring of power chips with its own ring of surrounding concentric control conductor track so that Oetjen's existing second conductor ring 22, 24 no longer makes electrical connection to both the second and third ring of power chips, but, instead, makes electrical connection only to the second ring of power chips. See Answer 5 ("should one of ordinary skill in the art not desire the outer most chip ring of the device of Oetjen fig. 2, one may simply omit[] the additional ring [ and thereby] have the conductor tracks 22/24 at the outer periphery"). The courts have held that the mere duplication or omission of parts generally is obvious. See, e.g., In re Harza, 274 F.2d 669, 671 (CCPA 1960) (noting that merely duplicating parts has no patentable significance unless a new and unexpected result is produced); 1n re Kuhle. 526 F2d 553, 7 Appeal2017-009669 Application 14/878,466 188 USPQ 7 (CCPA 1975) (deleting a prior art s,vitch member and thereby eliminating its function vvas an obvious expedient); Iv1PEP § 2144.04 IL VI. Appellants do not provide persuasive arguments in their Appeal Brief for why, in the present case, such a duplication or omission of parts would have been unobvious to one of ordinary skill in the art. See App. Br. 13-14. Accordingly, Appellants have not persuaded us of error in the Examiner's obviousness rejection of independent claims 1 and 12. We, therefore, sustain the Examiner's rejection of those claims, as well as claims 2-4, 6, 10, and 11, which Appellants do not argue separately. See id. 15-16. II. For the sake of completeness, we additionally note that Oetjen, alone, is sufficient to establish the obviousness of at least independent claim 1. As noted above, the Examiner relies upon Lake for teaching that it was known to one of ordinary skill in the art at the time of the invention to provide a control conductor track so as to surround the outermost ring of power chips. Non-Final Act. 5. But Oetjen, itself, teaches that it was known to dispose the control conductor track exterior to a ring of electrically connected power chips. See Oetjen, Fig. 2 ( depicting the two sets of contact rings 22, 24 disposed exterior to the inner two rings of power chips 6). Furthermore, Oetjen teaches that a circular control conductor track can be electrically connected to only a single interior ring of power chips 6, as well as being electrically connected to two, sandwiching rings of power chips 6. See id. ( depicting the inner set of contact rings being disposed for electrical connection only to the interior ring of innermost power chips 6 and alternatively depicting the outer set of contact rings being disposed for 8 Appeal2017-009669 Application 14/878,466 electrical connection to both the interior, second ring of power chips and also the exterior, third ring of power chips.) Based on the combination of Oetjen teachings, it would have been obvious to one of ordinary skill in the art that Oetjen' s module of Figures 1 and 2 alternatively could have been arranged such that the third contact ring 22, 24 is relocated interior to the third ring of power chips 6, and a third set of contact rings 22, 24 is added exterior to the third ring of power chips. It also would have been obvious that the third ring of power chips alternatively could be omitted from Oetjen's module of Figure 2 along with their associated functionality. See, e.g., In re Harza, 274 F.2d 669, 671 (CCPA 1960); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); 11PEP § 2144J)4 JI~ VL Regardkss, we see r10 harm ir1 the Examiner additionally relying on Lake's further teachings in reaching the conclusion of the claims' obviousness. CLAIM7 Dependent claim 7 reads as follows: 7. The power semiconductor module as claimed in claim 1, characterized in that an electrically conductive contact element is arranged between the second main electrode of the power semiconductor module and each controllable power semiconductor component, said contact element connecting the second main electrode to the second electrode of the power semiconductor component, wherein the contact element and the power semiconductor component define a current carrying direction (S) that is at least approximately at right angles with respect to the first main electrode. Appellants argue Oetjen merely teaches that the contacts 22 and 24 are electrically connected to a gate and source terminal of the module. See 9 Appeal2017-009669 Application 14/878,466 col. 4, 11. 16-22. However, the written description and figures of Oetjen lack any disclosure about the contact 24 and the power semiconductor component defining a current carrying direction that is at least at right angles with respect to the contact plate 2. App. Br. 16. We understand the Examiner to be interpreting the claimed electrically conductive contact element as reading on Oetjen' s contact plate webs 20. These plate webs 20 are arranged in an electrical path that runs between the second main electrode 4 of the power semiconductor module and each controllable power semiconductor component 6, and the plate webs 20 electrically connect the second main electrode 4 to the second electrode of the power semiconductor component 6. Oetjen Fig. 1. Furthermore, the plate webs 20 and the power semiconductor components 6 define a current carrying direction (S) that is at least approximately at right angles with respect to the first main electrode 2. That is, current flows through the plate webs 20 in a direction that is normal to the first main electrode 2. Thus, Oetjen discloses that the direction of current from the contact element ( contact plate webs 20) to the power semiconductor component ( controllable power semiconductor component 6) is "at least approximately at right angles with respect to the first main electrode," as claim 7 requires. Accordingly, we sustain the obviousness rejection of dependent claim 7. CLAIM 8 Dependent claim 8 further recites "[t]he power semiconductor module as claimed in claim 7, characterized in that each contact element is embodied as a press contact." Appellants contend that "Oetj en lacks any description of 10 Appeal2017-009669 Application 14/878,466 the contact 24 being configured as a press contact or being pressed. Further, the Office Action does not explain how FIGS. 1 and 2 show a press contact." We do not sustain this rejection. The Examiner provides no explanation or reasoning in support of the determination that Oetjen's Figures 1 and 2 teach press contacts. See Non-Final Act. 6. Furthermore, the Examiner does not respond to the argument in the Appeal Brief regarding claim 8. See Ans. 2-6 (wherein the Examiner only responds to arguments regarding the independent claims). However, this is not the end of the inquiry. Appellants acknowledge in their Specification that press contacts were art-recognized conventional means of providing electrical connection between a semiconductor chip and an opposing contact such that current flows in a direction normal to the semiconductor chip. See, e.g., Spec. ,-J,-J 55-57. Accordingly, Appellants' prior-art admissions provide evidence that it would have been obvious to one or ordinary skill in the art at the time of the invention to have substituted a press contact for Oetjen's contact plate web and bond wires because press contacts were art-recognized functional equivalent connectors. We therefore newly reject claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Oetjen as applied to claim 1, either alone or further combination with Lake, and further in view of Appellants' prior art admissions. 4 4 Even ifwe assume that the outermost contact plate webs 20 for Oetjen's module of Figures 1 and 2 additionally serves as a module housing, this feature is not presently claimed. 11 Appeal2017-009669 Application 14/878,466 CLAIM9 Dependent claim 9 further recites, "[t]he power semiconductor module as claimed in claim 7, characterized in that the further electrical connection runs at least substantially parallel to the current carrying direction." Appellants argue that Figures 1 and 2 of Oetjen "do not show the contact 24 running at least parallel to a current carrying direction, which is at least at right angles with respect to the contact plate 2. The written description of Oetjen is also silent with respect to such feature." App. Br. 16-17. We do not sustain this rejection. The Examiner provides no explanation or reasoning in support of the determination that Oetjen's Figures 1 and 2 teach a further electrical connection that runs at least substantially parallel to the current carrying direction. See Non-Final Act. 7. Furthermore, the Examiner does not respond to the argument in the Appeal Brief regarding claim 9. See Ans. 2-6 (wherein the Examiner only responds to arguments regarding the independent claims). CONCLUSIONS We affirm the obvious rejection of claims 1-4, 6, 7, and 10-12. Because we provide additional reasoning for sustaining the obviousness rejection beyond the reasoning set forth by the Examiner, we designate our affirmance as constituting a new ground pursuant to 37 C.F.R. § 41.50(b). We reverse the obvious rejection of claims 8 and 9. We newly reject claim 8 under 35 U.S.C. § 103(a) as unpatentable pursuant to discretionary authority under 37 C.F.R. § 41.50(b). 12 Appeal2017-009669 Application 14/878,466 DECISION The Examiner's decision rejecting claims 1-4, 6, 7, and 10-12 is affirmed. The Examiner's decision rejecting claims 8 and 9 is reversed. We enter new grounds of rejection for claims 1-4, 6-8, and 10-12 under 35 U.S.C. § 103(a) pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), Rule 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Rule 41.50(b) also provides the following guidance: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been 13 Appeal2017-009669 Application 14/878,466 misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 14 Copy with citationCopy as parenthetical citation