Mitsubishi Electric Corporation

Patent Trials and Appeals BoardMay 4, 2021

2020002955 (P.T.A.B. May. 4, 2021)

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. 15/094,469 04/08/2016 Rei YONEYAMA 004700-ME0150 1655 78198 7590 05/04/2021 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 EXAMINER THOMAS, LUCY M ART UNIT PAPER NUMBER 2836 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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): info@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REI YONEYAMA, FUMITAKA TAMETANI, MANABU MATSUMOTO, HARUHIKO TAKEMOTO, HIROSHI YOSHIDA, and MOTONOBU JOKO Appeal 2020-002955 Application 15/094,469 Technology Center 2800 Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mitsubishi Electric Corporation. Appeal Br. 2. Appeal 2020-002955 Application 15/094,469 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A semiconductor device comprising: a power semiconductor element; a main electrode terminal of the power semiconductor element; a sensor section that emits a signal corresponding to a physical state of the power semiconductor element; a sensor signal terminal connected to the sensor section; a drive terminal that supplies power to drive the power semiconductor element; and a case that accommodates the power semiconductor element, the main electrode terminal, the sensor section, the sensor signal terminal and the drive terminal, wherein the sensor signal terminal and the drive terminal are provided so as to be connectable from outside the case. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Otsuki US 2013/0082283 A1 Apr. 4, 2013 Noebauer US 2014/0332877 A1 Nov. 13, 2014 THE REJECTION Claims 1–18 under 35 U.S.C. § 103 are rejected as being unpatentable over Otsuki in view of Noebauer. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) Appeal 2020-002955 Application 15/094,469 3 (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position. Accordingly, we reverse the Examiner’s rejection on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. The dispositive issue in this case concerns the limitation of “wherein the sensor signal terminal and the drive terminal are provided so as to be connectable from outside the case”. Appellant’s Figure 8B depicts such a configuration. Figure 8B shows sensor signal terminal 200 and drive terminal 220. They are arranged outside case 36 while semiconductor device 30 and the control substrate 32 are connected. Figure 8B is reproduced below. Appeal 2020-002955 Application 15/094,469 4 Figure 8B is a cross-sectional view showing a wiring distance between the control substrate 32 and the power semiconductor element 46 in a state in which the semiconductor device 30 and the control substrate 32 are connected. In making the rejection, the Examiner acknowledges that Otsuki does not disclose the recited feature of the sensor signal terminal provided so as to be connectable from outside the case. Final Act. 3. The Examiner relies upon Noebauer for teaching the recited feature of the sensor signal terminal being provided so as to be connectable from outside the case. Noebauer, Figure 6B and ¶ [0036]. Final Act. 3. Appellant argues that Noebauer does not disclose or suggest the claimed feature of a sensor signal terminal that is “connectable from outside the case”. Rather, Noebauer discloses a semiconductor device in which a power transistor is integrated with Id sensor 530 and Vds sensor 520. Appeal Br. 6. Appellant argues that Figure 6B of Noebauer shows the Id sensor 530 positioned between a drain terminal 254 of the semiconductor device and a first transistor 210, and the Vds sensor 520 positioned in parallel to a second transistor 220. Appeal Br. 6. Appellant states that in Figure 6B of Noebauer, both of the Id sensor 530 and the Vds sensor 520 transmit sensing signals to a control circuit 240. Appellant states that in Noebauer, there is no disclosure related to a case accommodating the Id sensor 530 and Vds sensor 520. Nor does Noebauer show any of the structures of Figures 1A to 3 having a sensor signal terminal as being connectable from outside the case as claimed. Appeal Br. 6. Thus, Appellant submits that Noebauer fails to disclose the recited feature of the sensor signal terminal provided so as to be connectable from outside the case. Appeal 2020-002955 Application 15/094,469 5 The Examiner’s response is set forth on pages 6–8 of the Answer. Therein, the Examiner states, inter alia, that Noebauer teaches “signal terminals [that are] connectable from outside, the sensor signal terminal of Noebauer in the combination, externally connectable from outside the case 26 of Otsuki”. Appellant argues that this statement is not correct. Reply Br. 2. Specifically, Appellant argues that in fact, while Noebauer’s terminals 250, 252, and 254 are external to control circuit 240, there is no indication that such terminals would be “externally connectable from outside the case 26 of Otsuki”. See, e.g., Fig. 1A of Noebauer. Reply Br. 2. Appellant argues that Noebauer fails to teach any specific structure regarding control circuit 240 in relation to a case. Reply Br. 2. We agree. Appellant further argues that the proposed combination of Otsuki in view of Noebauer would involve mounting Noebauer’s control circuit 240 to Otsuki’s control substrate, but such combination fails to provide any suggestion that control circuit 240 is, in any way, is externally connectable from outside of Otsuki’s case 26. Appellant therefore submits that the applied art does not teach “signal terminals connectable from outside, the sensor signal terminal of Noebauer in the combination, externally connectable from outside the case 26 of Otsuki”, contrary to the Examiner’s stated position. In view of the above, we are persuaded by Appellant’s arguments. After evidence or argument is submitted by the applicant in response to the Examiner’s case, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990); In re Corkill, 771 F.2d 1496, 1500 Appeal 2020-002955 Application 15/094,469 6 (Fed. Cir. 1985); In re Caveny, 761 F.2d 671, 674 (Fed. Cir. 1985); In re Johnson, 747 F.2d 1456, 1460 (Fed. Cir. 1984). In the instant case, the preponderance of the evidence favors Appellant’s position. We thus reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–18 103 Otsuki, Noebauer 1–18 REVERSED