Ex Parte 6340309 et alDownload PDFPatent Trial and Appeal BoardJun 30, 201590012891 (P.T.A.B. Jun. 30, 2015) Copy Citation 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. 90/012,891 06/12/2013 6340309 578119-620120 3581 24325 7590 06/30/2015 PATENT GROUP 2N JONES DAY NORTH POINT 901 LAKESIDE AVENUE CLEVELAND, OH 44114 EXAMINER HOTALING, JOHN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/30/2015 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 HON HAI PRECISION INDUSTRY CO., LTD. ____________ Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B11 Technology Center 3900 ____________ Before DAVID M. KOHUT, ERIC B. CHEN, and ANDREW J. DILLON, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL 1 Issued January 22, 2002, based on Application 09/797,629, filed March 1, 2001. Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 2 This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s rejection of claims 125 of Patent 6,340,309 B1 (hereinafter “’309 Patent”). Final Office Action mailed June 4, 2014 (hereinafter “Final Act.”). We have jurisdiction under 35 U.S.C. §§ 6(b) and 306. We AFFIRM. STATEMENT OF THE CASE This ex parte reexamination proceeding was initiated by a “REQUEST FOR REEXAMINATION” filed on June 12, 2013, by Third- Party Requester, William F. Ahmann (hereinafter “Requester”). The ’309 patent describes zero insertion force sockets. Claim 6 on appeal reads as follows: 6. An electrical assembly comprising: a socket including: a dielectric base defining a plurality of cavities receiving a plurality of contacts therein; a cover slidably mounted on said base with a plurality of holes in alignment with the corresponding cavities, respectively, in a vertical direction; a Central Processing Unit (CPU) seated upon the cover, said CPU being dimensioned not to extend beyond a horizontal contour of said cover; and a pair of slots formed in two opposite lateral side edge portions of the cover; wherein each of said slots is dimensioned and configured to be large enough to allow a corresponding finger to enter and efficiently grasp a corresponding edge of the CPU, while be small enough not to jeopardize structural strength of said cover thereabouts; wherein each of said slots does not extend through said corresponding lateral side edge portion in a lateral direction perpendicular to said vertical direction. Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 3 Requester proposes rejections of the claims over the following prior art references: Carter US 4,836,798 June 6, 1989 Scheitz US 5,489,217 Feb. 6, 1996 Hsu US 5,569,045 Oct. 29, 1996 Mizumura EP 1 006 618 A2 Dec. 6, 1999 Appellant/Patent Owner appeals the Examiner’s adoption of the following rejections:2 Claims 1 and 38 under 35 U.S.C. § 102(b) as anticipated by Scheitz; Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of Scheitz and Carter; Claim 9 under 35 U.S.C. § 103(a) as unpatentable over the combination of Scheitz and Hsu; Claims 1, 310, and 1225 under 35 U.S.C. § 103(a) as unpatentable over Hsu and Scheitz; and Claims 2 and 11 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hsu, Scheitz, and Carter.3 Ans. 2-36; Final Rej. 312. 2 The Examiner withdrew the adoption of the rejections of claims 19 as anticipated by Mizumura, claims 19 as unpatentable over the combination of Scheitz and Mizumura, and claims 2 and 11 as unpatentable over the combination of Hsu and Scheitz. Ans. 37. 3 The rejection of claims 2 and 11 was added in the Examiner’s Answer on pages 3739 and was indicated as a new ground of rejection. Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 4 ISSUES Did the Examiner err in finding that the combination of Hsu and Scheitz teaches or suggests two slots that are “dimensioned and configured to be large enough to allow a corresponding finger to enter and efficiently grasp a corresponding edge of the CPU, while being small enough not to jeopardize structural strength of said cover thereabouts,” as recited in independent claim 6 and similarly recited in independent claims 15, 19, and 20? Did the Examiner err in finding that the combination of Hsu and Scheitz teaches or suggests two slots “whereby a user’s fingers can more easily grip the CPU to pull the CPU away from the socket in order to replace the CPU with another one wherein each of said slots does not extend through said corresponding lateral side edge portion,” as recited in independent claim 1 and similarly recited in independent claims 8, 10, and 17? Did the Examiner err in finding that the combination of Hsu and Scheitz teaches or suggests “wherein each of said slots does not extend through said corresponding side wall in a lateral direction perpendicular to said vertical direction,” as recited in independent claim 8 and similarly recited in independent claim 17? Did the Examiner err in finding that the combination of Hsu, Scheitz, and Carter teaches or suggests “wherein four standoffs are formed in four corners of a bottom of the dielectric base, respectively?” Did the Examiner err in finding it obvious to combine Hsu and Scheitz? Did the Examiner err in finding that the combination of Hsu and Scheitz teaches or suggests “each of the slots extending from a top face to Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 5 the bottom of the main body in the vertical direction,” as recited in independent claim 10 and similarly recited in independent claims 15 and 17? ANALYSIS Claims 6, 7, 15, 16, and 1925 We select claim 6 as representative of the group comprising claims 6, 7, 15, 16, and 1925 as Patent Owner has not argued any of the claims with particularity. 37 C.F.R. § 41.37(c)(1)(vii). Claim 6 recites “a pair of slots formed in two opposite lateral side edge portions of the cover; wherein each of said slots is dimensioned and configured to be large enough to allow a corresponding finger to enter and efficiently grasp a corresponding edge of the CPU, while be small enough not to jeopardize structural strength of said cover thereabouts.” Patent Owner cites to Figure 3 of the’309 Patent to show that the claimed slots are big enough for, and were intended to accommodate, a finger (App. Br. 13) and then argues that these limitations are not taught or suggested by the combination of Hsu and Scheitz. App. Br. 14 and 17; Reply Br. 8. The Examiner finds that Figure 2 of Hsu teaches slots right above reference numeral 43. Ans. 24. Alternatively, the Examiner finds that Figure 1 of Scheitz also teaches slots located on each edge of the cover. Ans. 24. In each situation, the Examiner finds that these slots are big enough to accommodate a finger and to allow removal of a CPU and small enough not to jeopardize the structural strength, as required by the claim. Ans. 4. Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 6 Patent Owner cites to the MPEP, as well as case law, to suggest that because the drawings and the specifications in the references do not mention size or scale that they cannot be used to read on the claims. App. Br. 15 and 1718; Reply Br. 45. Specifically, Patent Owner contends that neither Hsu nor Scheitz even mentions the size of the slots. App. Br. 15 and 18. Additionally, regarding Scheitz, Patent Owner first contends that the slots in Scheitz were not configured for finger access because one of the four slots shown in Figure 1 is obstructed by a raised area. App. Br. 15. Second, Patent Owner contends that the slots in Scheitz were developed to provide a shallow air gap and would not and could not be configured to allow finger access. App. Br. 16. Additionally, regarding Hsu, even if the cited figure was scaled appropriately, Patent Owner first contends that the cited notches would not be big enough to grab an edge of the CPU and if the notches were enlarged to accommodate a finger the structural strength of the cover would be compromised. App. Br. 18. Second, Patent Owner argues that none of the references teach a notch that is big enough to allow a finger to grab the edge of a CPU. App. Br. 18. We do not find any of these arguments to be persuasive. First, we note that the claim itself does not make any reference to the actual size of the slots either. Instead, the claim only makes relative statements regarding the size, i.e., large enough for a finger and small enough not to jeopardize the strength. Second, Patent Owner’s contentions amount to mere attorney argument unsupported by factual evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (stating that attorney’s arguments cannot take the Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 7 place of evidence). Patent Owner has not provided sufficient evidence to support a finding that the slots in either reference could not be used to more easily remove a CPU. Third, as indicated by the Examiner (Ans. 45), drawings are evaluated for what they suggest to one of ordinary skill in the art, not just by what features are intended or explained in the Specification. See also In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). We agree with the Examiner (Ans. 45 and 51), that one of ordinary skill in the art would have known to use the notches in the drawings of the references to aid in the removal of a CPU. For all of the reasons stated supra, we sustain the Examiner’s decision to adopt Requester’s proposed rejection of claim 6 over Hsu and Scheitz and claims 15, 16, and 1925 that have been grouped with claim 6. Claims 15 and 1014 Claims 15 and 1014 recite similar limitations as claim 6. Patent Owner makes similar arguments with respect to these claims as with respect to claim 6. App. Br. 2027; Reply Br. 811. Therefore, we sustain the Examiner’s decision to adopt Requester’s proposed rejection of the claims over Hsu and Scheitz for the same reasons indicated supra with respect to claim 6. Claims 8, 9, 17, and 18 We select claim 8 as representative of the group comprising claims 8, 9, 17, and 18 as Patent Owner has not argued any of the other claims with Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 8 particularity. 37 C.F.R. § 41.37(c)(1)(vii). Claim 8 recites “wherein each of said slots does not extend through said corresponding side wall in a lateral direction perpendicular to said vertical direction.” Patent Owner argues that the combination of Hsu and Scheitz does not teach this disputed limitation. App. Br. 30; Reply Br. 14. Patent Owner contends first that the Examiner conceded that Hsu did not teach the disputed limitation. App. Br. 30; Reply Br. 14. Additionally, Patent Owner contends that Scheitz also does not teach the disputed limitation because the reduced thickness area that the Examiner relies on are not formed around a corner of the top and side, as required by the claim. App. Br. 31; Reply Br. 15. Lastly, Patent Owner argues that combining Hsu with Scheitz would render the prior art being modified unsuitable for its intended purpose. App. Br. 3032; Reply Br. 1416. We disagree. In rejecting the claims, the Examiner cited to Figure 1 of Scheitz. Ans. 72. In the Examiner’s annotated version of Figure 1, found on page 73 of the Answer, the Examiner shows a cover 40 that is placed over a base 20. As can be seen from the annotated version of Figure 1, the cover 40 contains a sidewall that extends over the sidewall of the base 20 and the reduced thickness area does not go all the way through the cover on either the top or the side. Ans. 73. As such, we agree with the Examiner (Ans. 68-70) that the slots do not extend through the side wall in a lateral direction that is perpendicular to the vertical direction, as claimed. The Examiner’s position is not based on combining every aspect of Hsu and Scheitz. Instead, the Examiner is simply relying on Scheitz to show that it was known in the art have a slot that did not extend through the side wall. Ans. 73. As such, the combination of the teaching of Scheitz’s slot Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 9 with Hsu’s slot is nothing more than a combination of familiar elements according to known methods in order to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). For all of the reasons stated supra, we sustain the Examiner’s decision to adopt Requester’s proposed rejection of claim 8, 9, 17, and 18 over Hsu and Scheitz. Claims 2 and 11 Claims 2 and 11 both recite “wherein four standoffs are formed in four corners of a bottom of the dielectric base, respectively.” The Examiner originally rejected both of these claims over Hsu and Scheitz. Ans. 37. Patent Owner argues that neither of these references teaches this limitation. App. Br. 33. In response, the Examiner withdrew the rejection (Ans. 37) and added a new 35 U.S.C. § 103(a) rejection of the claims over the combination of Hsu, Scheitz, and Carter. Ans. 3739. Patent Owner does not specifically address the Examiner’s finding with regard to these claims in the Reply Brief. Therefore, we summarily sustain the Examiner’s rejection of claims 2 and 11 over Hsu, Scheitz, and Carter. Claims 125 Rationale to Combine Patent Owner argues that the Examiner has not established a prima facie case of obviousness because the Examiner has failed to provide a rational reason for combining the references. App. Br. 34; Reply Br. 16. Specifically, Patent Owner contends that the Examiner only provided Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 10 conclusory statements without any factual support and applied hindsight reconstruction. App. Br. 3435; Reply Br. 1617. We disagree. Our review of the record establishes that the Examiner’s case for obviousness is only based on knowledge which was within the level of ordinary skill at the time of Patent Owner’s invention and does not include knowledge gleaned only from Patent Owner’s disclosure. The Examiner identifies the relevant portions of each of the references relied on throughout the rejection. See Ans. 1236. To the extent that the Examiner relies on the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, the conclusions of obviousness are clearly articulated and based on detailed factual findings that are supported by the references of Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 11 record. See Ans. 1236. Additionally, the Examiner provides several reasons why a skilled artisan would combine the references. Ans. 7677. We find no error in the Examiner’s reasoning. Thus, for all of the reasons discussed supra, we do not agree with Patent Owner that the Examiner erred in establishing a prima facie case of obviousness regarding claims 125. Claims 1018 and 2125 We select claim 10 as representative of the group comprising claims 1018 and 2125 as Patent Owner has not argued any of the claims with particularity. 37 C.F.R. § 41.37(c)(1)(vii). Claim 10 recites “each of the slots extending from a top face to the bottom of the main body in the vertical direction.” Patent Owner argues that the references fail to teach the disputed limitation and that the Examiner ignored the limitation. App. Br. 37; Reply Br. 1718. Specifically, Patent Owner argues that the slots from Figure 1 of Scheitz, relied on by the Examiner, do not extend to the bottom of the main body. App. Br. 38. However, the Examiner did not find that the reference explicitly taught that limitation. Instead, the Examiner finds that because Figure 1 of Scheitz teaches slots that do not extend through the edge portion, that the edge could be extended by a person of ordinary skill in the art. Ans. 82. The Examiner finds that this would simply be a design choice that “would maintain the respective properties and functions.” Ans. 82. Patent Owner has not rebutted the Examiner’s specific finding regarding design choice. Therefore, we do not find Patent Owner’s arguments to be persuasive and Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 12 sustain the Examiner’s decision to adopt Requester’s proposed rejection of claims 1018 and 2125 over Hsu and Scheitz. Claims 125 Other Arguments and Proposed Rejections Our conclusions above address the patentability of all of the claims on appeal and, thus, render it unnecessary to reach the propriety of the Examiner’s decision to adopt the proposed rejections of the same claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the other proposed and adopted rejections identified in the Right of Appeal Notice on pages 239. CONCLUSION The Examiner did not err in finding that the combination of Hsu and Scheitz teaches or suggests two slots that are “dimensioned and configured to be large enough to allow a corresponding finger to enter and efficiently grasp a corresponding edge of the CPU, while being small enough not to jeopardize structural strength of said cover thereabouts,” as recited in independent claim 6 and similarly recited in independent claims 15, 19, and 20. The Examiner did not err in finding that the combination of Hsu and Scheitz teaches or suggests two slots “whereby a user’s fingers can more easily grip the CPU to pull the CPU away from the socket in order to replace the CPU with another one wherein each of said slots does not extend through Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 13 said corresponding lateral side edge portion,” as recited in independent claim 1 and similarly recited in independent claims 8, 10, and 17. The Examiner did not err in finding that the combination of Hsu and Scheitz teaches or suggests “wherein each of said slots does not extend through said corresponding side wall in a lateral direction perpendicular to said vertical direction,” as recited in independent claim 8 and similarly recited in independent claim 17. The Examiner did not err in finding that the combination of Hsu, Scheitz, and Carter teaches or suggests “wherein four standoffs are formed in four corners of a bottom of the dielectric base, respectively.” The Examiner did not err in finding it obvious to combine Hsu and Scheitz. The Examiner did not err in finding that the combination of Hsu and Scheitz teaches or suggests “each of the slots extending from a top face to the bottom of the main body in the vertical direction,” as recited in independent claim 10 and similarly recited in independent claims 15 and 17. DECISION We affirm the Examiner’s decision to adopt the rejection of claims 1, 310, and 1225 under 35 U.S.C. § 103(a) as unpatentable over Hsu and Scheitz; and claims 2 and 11 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hsu, Scheitz, and Carter. AFFIRMED Appeal 2015-005086 Reexamination Control No. 90/012,891 Patent 6,340,309 B1 14 For Appellant/Patent Owner: Jones Day North Point 901 Lakeside Avenue Cleveland, OH 44114 For Third Party Requester: Sheppard Mullin Richter & Hampton LLP 379 Lytton Avenue Palo Alto, CA 94301-1432 Copy with citationCopy as parenthetical citation