Ex Parte Hartmann et al

Patent Trials and Appeals Board

Jun 28, 2019

14878466 - (D) (P.T.A.B. Jun. 28, 2019)

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
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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.
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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).
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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
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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.
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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,
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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
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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
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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
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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.
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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).
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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
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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)
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