Ex Parte 6530798 et al

Patent Trial and Appeal Board

Jun 27, 2013

90009869 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,869 01/06/2011 6530798 18EY-159303 9116
24325 7590 06/27/2013
PATENT GROUP 2N
JONES DAY
NORTH POINT
901 LAKESIDE AVENUE
CLEVELAND, OH 44114
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/27/2013 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 COMPANY, LTD.
Appellant
____________
Appeal 2013-006699
Reexamination Control No. 90/009,869
U.S. Patent No. 6,530,798
Technology Center 3900
____________

Before KEVIN F. TURNER, ERIC B. CHEN, and JOHN A. EVANS,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-006699
Reexamination Control No. 90/009,869
U.S. Patent No. 6,530,798

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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1-5 and 7-25. The Examiner has confirmed the
patentability of claim 6. We have jurisdiction under §§ 134(b) and 306. We
affirm.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 6,530,798
(the ‘798 patent) was filed on January 6, 2011 and assigned Reexamination
Control No. 90/009,869.
The ‘798 patent, entitled “Ball Grid Array Socket Connector,” issued
March 11, 2003, to Ren-Chih Li, Jwomin Wang, and Yao-Chi Huang, based
on Application No. 09/999,804, filed October 24, 2001.
The ‘798 patent is said to be assigned to Hon Hai Precision Industry
Company, Ltd., said to be the assignee and real party in interest.

Appellant’s Invention
Appellant’s invention relates to a ball grid array socket connector that
includes an insulative base, conductive contacts fixed to the base, solder
balls attached to tail portions of the contacts, and a cover attached to the
base. The base has cavities that are arranged in a matrix, such that the
contacts are received in corresponding cavities of the base. The base
includes stand-offs, which downwardly protrude from a bottom surface of
the base. (Abstract.)
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Related Litigation
The ‘798 patent has been subject to multiple patent infringement suits,
Lotes Co. v. Hon Hai Precision Industry Co., No. 5:11-cv-1036 (N.D. Cal.
Mar. 7, 2011) and Hon Hai Precision Industry Co. v. Suyin Co., No. 8:11-
cv-289 (C.D. Cal. Feb. 17, 2011).

The Claims
Independent claim 1 is exemplary, with disputed limitations in italics:
1. A ball grid array socket connector adapted for electrically
connecting an [integrate] integrated circuit package assembly to a PC
board, comprising:
an insulative base having a top surface, a bottom surface and
defining a plurality of cavities through the top surface and the bottom
surface, the cavities being generally arranged in a matrix;
a plurality of notches defined in the bottom surface of the base,
the notches located at outer sides of the matrix of cavities;
a plurality of stand-offs downwardly protruding from the
bottom surface of the base and terminating at a plane generally
parallel with the bottom surface of the base;
a plurality of conductive contacts received in corresponding
cavities of the base, each contact having a tail portion remained in the
cavity;
a plurality of solder balls attached to the tail portions of
corresponding contacts, each solder ball having a bottom tip
downwardly extending beyond the plane that the stand-offs terminate
at before the solder balls have been heated and melted, and the stand-
offs adapted to support the socket connector onto the PC board after
the solder balls have been heated and melted; and
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a cover attached to the top surface of the base and defining a
matrix of apertures, the cover being movable relative the base along
the top surface of the base between multiple locations, the apertures of
the cover being aligned with corresponding cavities of the base at one
of the multiple locations.

The Rejections
Claims 1-5, 16, 19, and 21-25 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Wang (U.S. Patent No. 6,135,791;
Oct. 24, 2000) (“Wang (U.S.)”), Hoffmann (U.S. Patent No. 5,805,427;
Sept. 8, 1998), and Higuchi (Japanese Patent Office Publication No. 10-
335017; Dec. 18, 1998).
Claims 1-5, 16, 19, and 21-25 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Wang (Chinese Application Publication No. CN
1261216A; July 26, 2000) (“Wang (China)”), Hoffmann, and Higuchi.
Claims 21-25 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 7-20 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Wang (U.S.), Hoffmann, Higuchi, Taylor (U.S.
Patent No. 5,746,608; May 5, 1998), Melton (U.S. Patent No. 5,186,383;
Feb. 16, 1993), and Huang (U.S. Patent No. 6,152,756; Nov. 28, 2000) or, in
the alternative, over the combination of Hoffmann, Higuchi, Taylor, and
Melton.
Claims 7-20 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Wang (China), Hoffmann, Higuchi, Taylor, Melton,
and Huang, or, in the alternative, the combination of Hoffmann, Higuchi,
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Taylor, and Melton, or, in the alternative, the combination of Wang (China),
Wang (U.S.), Hoffmann, Higuchi, Taylor, Melton, and Huang, or, in the
alternative, the combination of Wang (U.S.), Hoffmann, Higuchi, Taylor,
and Melton.

ANALYSIS
§ 103 Rejections
Claims 1, 3, 4, 16, 19, 21, 23, and 24
We are unpersuaded by Appellant’s arguments (App. Br. 21-28; see
also Reply Br. 2-9) that the combination of Wang (U.S.), Hoffmann, and
Higuchi would not have rendered obvious independent claim 1, which
includes the limitations “a plurality of stand-offs downwardly protruding
from the bottom surface of the base” and “the stand-offs adapted to support
the socket connector onto the PC board after the solder balls have been
heated and melted.”
The Examiner acknowledged that Wang does not disclose the
limitations “a plurality of stand-offs downwardly protruding from the bottom
surface of the base” and “the stand-offs adapted to support the socket
connector onto the PC board after the solder balls have been heated and
melted” (Final Office Action 20) and thus, relied upon Hoffman for teaching
a surface mount package with a standoff (Final Office Action 20; Ans. 16;
Hoffman, figs. 2-10) and Higuchi for teaching a solder ball crush prevention
stand (Final Office Action 20; Ans. 17; Higuchi, drawing 4).
The Examiner concluded that:
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Therefore to employ standoffs related to the solder ball
downward tips of the Wang ‘791 BGA connector as claimed
would be obvious to one of ordinary skill in the art in view of
the teachings of Hoffman and Higuchi in light of the
recognition that such would further minimize/prevent solder
joint fatigue/damage as well as enhance dissipation of
expansion causing heat encountered by the connector and the
desirability of such by Wang ‘791.
(Final Office Action 21.) We agree with the Examiner.
Wang (U.S.) relates to “a method for achieving uniform expansion of
a dielectric plate” (col. 1, ll. 5-7), for example, a ball grid array (BGA)
connector 4 having a dielectric base plate 40 (col. 1, ll. 21-22) soldered to a
circuit board 5 (col. 1, ll. 37-43; see also fig. 3). Wang (U.S.) explains that
an “object of the present invention is to provide a method for achieving
substantially uniform thermal expansion between a connector and a circuit
board to which the connector is mounted.” (Col. 1, ll. 61-64.) Figure 1 of
Wang (U.S.) illustrates an exploded view of an electrical connector 1,
including a base plate 11 mounted to a circuit board 5 and a cover mounted
to the base plate 11. (Col. 2, ll. 42-45.)
Hoffman relates to “a standoff for a ball grid array electronic
package” such that “the amount of solder ball collapse is determined by a
standoff.” (Col. 1, ll. 6-9.) Figure 1 of Hoffman illustrates a ball grid array
(BGA) electronic package 10 that includes a standoff 12 (col. 3, ll. 17-19),
such that when the electronic package 10 is bonded to a printed circuit
board 38 with solder balls 26, the height of the solder balls 26 is partially
defined by the standoff 12 (col. 3, ll. 45-50). Hoffman explains that “by
providing a direct thermal link between the standoff 12 and the printed
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circuit board 38, efficient dissipation of heat [from a semiconductor
device 28] is achieved.” (Col. 3, ll. 63-65.) Figures 2-10 of Hoffman
illustrate alternative standoffs. (Col. 4, l. 45.) In particular, Figure 9 of
Hoffman illustrates a standoff 72 having “extensions 78 protruding from the
first surface 74.” (Col. 5, ll. 33-35.) Thus, Hoffman teaches the limitation
“a plurality of stand-offs downwardly protruding from the bottom surface of
the base.”
Higuchi1 relates to “the technology of connecting a solder ball and [a]
contact.” (¶ [0001].) Drawings 1 and 3 of Higuchi illustrate a solder ball
connector 2 formed from an insulator 20 (¶¶ [0009]-[0010]) and Drawing 4
of Higuchi illustrates that a solder ball connector 1 is mounted to a printed-
circuit board 4 using reflow soldering (¶ [0015]). The insulator 20 includes
a solder ball crushing prevention stand 50 on each of the four comers of the
insulator 20 such that “the solder ball crushing prevention stand 50 prevents
the solder ball 10 from being crushed.” (¶ [0016].) Thus, Higuchi teaches
the limitation “the stand-offs adapted to support the socket connector onto
the PC board after the solder balls have been heated and melted.”
A person of ordinary skill in the art would have recognized that
incorporating the stand-off of Hoffman or the solder ball crush prevention
stand of Higuchi with the ball grid array (BGA) connector of Wang (U.S.)
would improve Wang (U.S.) by either facilitating dissipation of heat or
preventing damage to solder balls. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Alternatively, combining Wang (U.S.), Hoffman, and

1 Reference is made to the English-language machine translation supplied
by the Japanese Patent Office.
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Higuchi is no more than incorporating the known standoff of Hoffman or the
known solder ball crush prevention stand of Higuchi with the known BGA
connector of Wang (U.S.), to yield predictable results. Id. at 416. Thus, we
agree with the Examiner (Final Office Action 21) that modifying Wang
(U.S.) to incorporate the stand-off of Hoffman or the solder ball crush
prevention stand of Higuchi would have been obvious.
First, Appellant argues that “Wang ‘791 (i.e., Wang US) nor Wang
China recognizes the problem of soft or melting solder balls collapsing and
bridging to adjacent soft or melting solder balls, which was solved by the
standoffs of the ‘798 patent” and “[t]hus, neither the Wang US nor the Wang
China reference discloses the desirability for stand-offs.” (App. Br. 21.)
However, the Examiner cited to Hoffman and Higuchi, rather than Wang
(U.S.) for teaching the limitation “the stand-offs adapted to support the
socket connector onto the PC board after the solder balls have been heated
and melted.” (Ans. 9-10.)
Second, Appellant argues that “the Hoffman ‘427 patent is directed to
a ball grid array electronic package and not a ball grid array socket
connector.” (App. Br. 23; see also App. Br. 16-18.) Similarly, Appellant
argues that “regarding rejections based on Hoffman ‘427, it would not be
obvious to a person of ordinary skill in the art to combine aspects of
Hoffman ‘427, which is directed to a semiconductor package, with aspects
of a socket connector.” (Reply Br. 5.) Although Appellant has argued that
electronic packages and socket connectors are different structures (App.
Br. 16-18), Appellant has not provided any persuasive evidence that one of
ordinary skill in the art would not combine the aspects of electronic
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packages and socket connectors, both of which connect and mount a
semiconductor device to a PC board. Arguments of counsel cannot take the
place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139-140 (Fed. Cir. 1996).
Third, Appellant argues that “the Hoffman ‘427 patent fails to
disclose (a) ‘multiple stand-offs on the bottom surface thereof [of the base of
a ball grid array socket connector].’” (App. Br. 23; see also Reply Br. 8-9.)
However, the Examiner found that the protrusions of Hoffman, illustrated in
Figures 2 to 10 (e.g., dimples 64 or ridges 65 of Figures 4 and 5), correspond
to the claimed “plurality of stand-offs.” (Ans. 16.) Furthermore, as found
by the Examiner (Ans. 24), Appellant’s arguments are not commensurate in
scope with claim 1, because the claim does not require claimed “stand-offs”
to protrude directly from “the bottom surface of the base.”
Fourth, Appellant argues that “[a]s Drawing 4 . . . clearly illustrates,
Higuchi ‘017 fails to teach or suggest that its crushing prevention stands,
which are the end elements, support the connector after the solder balls are
heated and melted” because “there is a quite visible air gap between the
circuit board and the bottom of the crushing prevention stands.” (App.
Br. 25.) Similarly, Appellant argues that the “claim phrase ‘the stand-offs
adapted to support the socket connector onto the PC board after the solder
balls have been heated and melted’ mirrors the language used in the patent
specification and must be interpreted as requiring standoffs to support the
connector as a result of the solder balls having been heated and melted”
(App. Br. 25-26; see also Reply Br. 11-12.) However, as found by the
Examiner (Ans. 16-17), Appellant’s arguments are not commensurate in
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scope with claim 1, because the claim recites “after the solder balls have
been heated and melted” but does not require the solder balls to remain in a
liquid state when melted. Furthermore, Higuchi explains that the solder ball
connector 1 is mounted to the printed-circuit board 4 using reflow soldering
(¶ [0015]) and “[w]hen a solder ball connector has the external force by an
accident . . . the solder ball crushing prevention stand 50 prevents the solder
ball 10 from being crushed” (¶ [0016]). Because Higuchi expressly states
that the solder ball crushing prevention stand 50 “prevents the solder ball 10
from being crushed” (¶ [0016]), the “gap” in Drawing 4 between the
mounted to the printed-circuit board 4 is likely an illustration error. Without
additional evidence, Appellant’s arguments with respect to Drawing 4 are
not persuasive. Accordingly, Higuchi teaches the limitation “the stand-offs
adapted to support the socket connector onto the PC board after the solder
balls have been heated and melted.”
Last, Appellant argues that “[n]one of the applied references
recognize or address the problem addressed by the ‘798 patent” and that “the
only reason for modifying and combining the references in a way to disclose
the claimed invention would be to achieve the goal of reconstructing the
claimed invention.” (App. Br. 28.) However, as discussed previously, the
combination of Wang (U.S.), Hoffman, and Higuchi is based on the
improvement of a similar device in the same way as in the prior art, or in the
alternative, by combining known elements to achieve predictable results.
Thus, we agree with the Examiner that the combination of Wang
(U.S.), Hoffmann, and Higuchi would have rendered obvious independent
claim 1, which includes the limitations “a plurality of stand-offs downwardly
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protruding from the bottom surface of the base” and “the stand-offs adapted
to support the socket connector onto the PC board after the solder balls have
been heated and melted.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claim 3 depends from claim 1, and Appellant has not
presented any substantive arguments with respect to this claim. Therefore,
we sustain the rejection of claim 3 under 35 U.S.C. § 103(a), for the same
reasons discussed with respect to independent claim 1.
Independent claims 4, 16, 19, 21, and 24 recite limitations similar to
those discussed with respect to independent claim 1, and Appellant has not
presented any substantive arguments with respect to these claims. We
sustain the rejection of claims 4, 16, 19, 21, and 24, as well as dependent
claim 23, for the same reasons discussed with respect to claim 1.
Because we agree with the Examiner that claims 1-5, 16, 19, and 21-
25 are obvious under 35 U.S.C. § 103(a), we do not reach additional issues
regarding cumulative rejections of these claims over Wang (China),
Hoffmann, and Higuchi.

Dependent claims 2, 5, 22, and 25
We are further unpersuaded by Appellant’s arguments (App. Br. 29-
30) that the combination of Wang (U.S.), Hoffmann, and Higuchi would not
have rendered obvious dependent claim 2, which includes the limitation
“wherein at least one of the stand-offs is not aligned with the other stand-
offs in the bottom surface of the base.”
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The Examiner found that the diagonal pattern of dimples 70 illustrated
in Figure 8 of Hoffman corresponds to the limitation “wherein at least one of
the stand-offs is not aligned with the other stand-offs in the bottom surface
of the base.” (Ans. 24; Hoffman, fig. 8.) We agree with the Examiner.
Hoffman explains that “ribs or a pattern of reinforcing dimples 70
may be provided in noncritical portions of the standoff, such as along a
diagonal or disposed about the center of the standoff to increase the stiffness
of the central portion 56.” (Col. 5, ll. 17-20.) Figure 8 of Hoffman
illustrates two diagonals of dimples, such that dimples selected from
opposite diagonals are “not aligned.”
Appellant argues that “the dimples and ridges [of Hoffman] are
disclosed as being aligned.” (App. Br. 30.) Similarly, Appellant argues that
“Fig. 8 [of Hoffman] discloses ridge/dimples that are aligned diagonally.”
(Reply Br. 9.) However, as found by the Examiner (Ans. 8), Figure 8 of
Hoffman illustrates that some dimples 70 are “not aligned” with other
dimples.
Thus, we agree with the Examiner that the combination of Wang
(U.S.), Hoffmann, and Higuchi would have rendered obvious dependent
claim 2, which includes the limitation “wherein at least one of the stand-offs
is not aligned with the other stand-offs in the bottom surface of the base.”
Accordingly, we sustain the rejection of dependent claim 2 under 35
U.S.C. § 103(a).
Dependent claims 5, 22, and 25 recite limitations similar to those
discussed with respect to dependent claim 2, and Appellant has not
presented any substantive arguments with respect to these claims. We
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sustain the rejection of claims 5, 22, and 25, for the same reasons discussed
with respect to claim 2.

Claims 7-20
Although Appellant nominally argues the rejection of claims 7-20
separately (App. Br. 32-39), the arguments presented do not point out with
particularity or explain why the limitations of the claims are separately
patentable. Instead, Appellant merely reiterates arguments previously
presented and have not presented any substantive arguments with respect to
these claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Accordingly, we sustain these rejections.

§ 112, First Paragraph, Rejection
With respect to independent claim 21, we are persuaded by
Appellant’s arguments (App. Br. 31; see also Reply Br. 14) that the claim
limitation “wherein at least one of the multiple stand-offs is not located at a
central portion of the base” complies with the written description
requirement under 35 U.S.C. § 112, first paragraph.
The Examiner found that independent claim 21 fails to comply with
the written description requirement because the limitation of “wherein at
least one of the multiple stand-offs is not located at a central portion of the
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base” is not supported by the originally filed Specification. (Ans. 25-26;
Final Office Action 32-33.) We do not agree.
Figure 1 of the ‘798 patent illustrates an exploded view of an
electrical connector 1 (col. 2, ll. 3-4) that includes an insulative base 10 and
a cover 20, such that “[e]ach of the base 10 and the cover 20 define a
generally square hollow 24 at centers thereof” (col. 2, ll. 46-49) and
“[a]round the hollow 24, there are a plurality of the cavities 12, which
construct a generally square matrix” (col. 2, 49-51). Accordingly, the
generally square matrix of cavities 12 surrounding the hollow 24 illustrated
in Figure 1 of the ‘798 patent provides support for the recitation of “a central
portion of the base.” Additionally, the Specification of the ‘798 patent
explains that “[a]s clearly shown in FIGS. 2, 4 and 6, the base 10 provides
multiple stand-offs 28 on the bottom surface 16 thereof which are generally
located at four corners of the base 10.” (Col. 2, 62-64.) Because the stand-
offs 28 are generally located at four corners of the base 10 and away from
the square matrix of cavities 12, the Specification of the ‘798 patent provides
adequate written description support of the limitation “wherein at least one
of the multiple stand-offs is not located at a central portion of the base.”
Accordingly, we do not sustain the rejection of independent claim 21
under 35 U.S.C. § 112, first paragraph. Claims 22 and 23 depend from
claim 21. Therefore, we do not sustain the rejection of claims 22 and 23
under 35 U.S.C. § 112, first paragraph, for the same reasons discussed with
respect to independent claim 21.
Independent claim 24 recites limitations similar to those discussed
with respect to independent claim 21. We do not sustain the rejection of
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claim 24, as well as dependent claim 25, for the same reasons discussed with
respect to claim 21.

DECISION
The Examiner’s decision rejecting claims 1-5 and 7-25 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

cu

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PATENT OWNER :

Patent Group 2N
Jones Day
North Point
901 Lakeside Avenue
Cleveland, OH 44114

THIRD PARTY REQUESTER :

Sheppard Mullin Richter & Hampton, LLP
390 Lytton Avenue
Palo Alto, CA 94301