Ex Parte 6530798 et al

Patent Trials and Appeals Board

Jun 27, 2013

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

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.
90/009,869 01/06/2011 6530798 578119-620011 9116
24325 7590 03/20/2014
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
03/20/2014 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 90/009,869
Patent 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 REQUEST FOR REHEARING
Appeal 2013-006699
Reexamination Control 90/009,869
Patent 6,530,798

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Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal entered June 27, 2013. (“Decision”), which affirmed the
Examiner’s final rejection of claims 1-5 and 7-25.
The Request for Rehearing is denied.

DISCUSSION
Hoffman
First, Appellant argues that “[i]t cannot be disputed that Hoffman does
not disclose a plurality of standoffs that protrude from or are on the bottom
surface of the base of a connector” because “Hoffman is directed to a
standoff for an electronic package and not a standoff for a connector.” (Req.
for Reh’g 3.)
However, Appellant’s Appeal Brief argues that “[a]s an initial matter,
the Hoffman ‘427 patent is directed to a ball grid array electronic package
and not a ball grid array socket connector” (App. Br. 23), which was
addressed in our Decision at pages 8-9 (bridging paragraph). Other than
reiterating an argument that was previously presented (Req. for Reh’g 3),
Appellant has failed to “state with particularity the points believed to have
been misapprehended or overlooked by the Board” as required by 37 C.F.R.
§ 41.52.
Second, Appellant argues that “Hoffman teaches away from applying
its standoff to a connector” because “[a]n important objective of Hoffman
is achieved by the standoff 12 of Hoffman being bonded to the base 14 of
the electronic package 10 and not to the base of a connector.” (Req. for
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Reh’g 4.) Third, Appellant argues that “[c]laims 1-3, 7-8, 11-13, 16-18, and
21-23 all recite ‘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’” (Req. for Reh’g 7) and accordingly,
the “Decision misapprehended or overlooked the claim language, as
properly construed, which requires a plurality of standoffs to terminate in a
plane, (i.e., to have a flat bottom surface) and the dimples and ridges of
Hoffman terminate in a curved surface instead of a plane” (Req. for Reh’g
8).
However, these are new arguments not raised in the Briefs before the
Board. Such new arguments will not be considered. “Arguments not raised
in the briefs before the Board and evidence not previously relied upon in the
brief and any reply brief(s) are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) and (a)(3) of this section.”
37 C.F.R. § 41.52(a)(1). Appellant has not identified a reason for meeting
one of these exceptions.
Fourth, Appellant argues that “[t]he Decision appears to
misapprehend the claim language in claims 2, 5, 12, 15, 17, 20, 22 and 25,
which recite ‘wherein at least one of the stand-offs is not aligned with the
other standoffs.’” (Req. for Reh’g 8.) In particular, Appellant argues that
“[t]his claim language requires that at least one stand-off to not be in a
straight line with another stand-off, based on the ordinary meaning of the
term ‘align’ which is to “place or arrange (things) in a straight line” and
“[t]he claim language does not require that each stand-off must be in the
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same line as each of the remaining stand-offs as suggested by the Decision.”
(Id.)
However, our Decision states:
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.”
(Dec. 12.) Appellant further admits Figure 8 of Hoffman illustrates that
“dimples 70 along one diagonal are not aligned with dimples 70 in another
diagonal.” (Req. for Reh’g 9.) Stated differently, the claim language
“wherein at least one of the stand-offs is not aligned with the other
standoffs” is broad enough to encompass Figure 8 of Hoffman, because the
dimples 70 of one diagonal are “not aligned” with some of the dimples 70
from the opposite diagonal.
Fifth, Appellant argues that “[c]laims 21-23 recite: ‘wherein at least
one of the plurality of stand-offs is not located at a central portion of the
base’ and claims 24-25 recite: ‘wherein at least one of the multiple stand-
offs is not located at a central portion of the base.’” (Req. for Reh’g 10.)
Appellant further argues that the “Decision misapprehended or overlooked
the claim language, as properly construed, which requires ‘at least one of the
plurality of [or multiple] stand-offs [to] not [be] located at a central portion
of the base’. . . .” (Req. for Reh’g 11.)

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With respect to claims 21-25, Appellant’s Appeal Brief states that:
Claims 21-23 . . . recite “wherein at least one of the plurality of
stand-offs is not located at a central portion of the base.”
Claims 24-25 . . . recite “wherein at least one of the multiple
stand-offs is not located at a central portion of the base.” The
Patent Owner submits that none of the applied references
disclose these claim features and thus claims 21-25 are
patentable for this additional reason.
(App. Br. 27.) Appellant’s previously presented arguments are not
substantive because such arguments merely provide a conclusory statement
that the references do not teach the features of dependent claims 21-25. 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,
these are new arguments not raised in the Briefs before the Board and such
new arguments will not be considered. 37 C.F.R. § 41.52(a)(1).

Higuchi
Sixth, Appellant argues “[t]he Decision has taken the position that the
unambiguous disclosure of the solder balls supporting the connector and not
the stands supporting the connector through drawing 4 of Higuchi should be
disregarded as an illustration error” and that
[t]his position appears to be based on the Decision’s apparent
view that the only way for the crushing prevention stands 50 to
prevent the solder ball from being crushed when subjected to a
force by accident is if the crushing prevention stand 50 supports
the connector instead of the solder balls supporting the
connector.
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(Req. for Reh’g 14.) Our Decision states that:
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.
(Dec. 10.) Contrary to Appellant’s argument that our previous Decision
relies upon “the unambiguous disclosure of the solder balls supporting the
connector and not the stands supporting the connector through drawing 4”
(Req. for Reh’g 14), our Decision relies upon the express explanation in
Higuchi that “the solder ball crushing prevention stand 50 prevents the
solder ball 10 from being crushed” (¶ [0016]). Regardless of the existence
of a “gap” in Drawing 4 of Higuchi, the claim language “adapted to support
the socket connector onto the PC board after the solder balls have been
heated and melted” is broad enough to encompass the “the solder ball
crushing prevention stand 50 [of Higuchi that] prevents the solder ball 10
from being crushed.” (¶ [0016].) Even if Appellant is correct that the “gap”
of Drawing 4 exists, Higuchi states that the solder ball connector 1 is
subjected to a solder reflow process (¶ [0015]), thus softening and melting
the solder balls 10. Accordingly, because the solder balls 10 soften during
reflow soldering and are unable to provide mechanical support for the solder
ball connector 1, any “gap” between the solder ball connector 1 and the
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printed-circuit board 4 would be eliminated due to the weight of the solder
ball connector 1.
Appellant also argues that “it is more likely that the crushing
prevention stand 50 allows some compression of the solder ball when
subjected to a force by accident, but not enough to allow the solder ball to be
crushed” and “it could be that upon application of a force by accident, the
circuit board could flex enough to allow one leg of the crushing prevention
stand 50 to support the connector relieving some of the pressure on a solder
ball to prevent the crushing of the solder ball.” (Req. for Reh’g 15.)
However, 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).
Appellant further argues that “[m]oreover, if there is some error in the
drawings, Higuchi is inoperative and cannot be used as a prior art
reference.” (Req. for Reh’g 16.) However, Higuchi is presumed to be
operable and the burden is on Appellant to provide facts rebutting this
presumption of operability. In re Sasse, 629 F.2d 675, 681 (CCPA 1980).
Appellant has not provided any persuasive rebuttal evidence that Higuchi is
inoperable.
Seventh, Appellant argues that “Higuchi . . . lacks a teaching
regarding ‘being adapted to support the socket connector on the PC board
resulting from the solder balls having been heated and melted,’” as recited
in claims 11-13. (Req. for Reh’g 17.)

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With respect to claims 11-13, Appellant’s Appeal Brief argues:
Claims 11-13 . . . recite “the stand-offs adapted to support the
socket connector onto the PC board after and resulting from
the solder balls having been heated and melted.” None of the
applied references disclose these claim features and thus claims
11-13 are patentable for this additional reason.
(App. Br. 37.) Again, Appellant’s previously presented arguments are not
substantive because such arguments merely provide a conclusory statement
that the references do not teach the features of dependent claims 11-13. See
Lovin, 652 F.3d at 1357. Accordingly, these are new arguments not raised in
the Briefs before the Board and such new arguments will not be considered.
37 C.F.R. § 41.52(a)(1).
Last, Appellant argues that “Higuchi additionally lacks a teaching
regarding ‘being adapted to support the socket connector on the PC board
immediately after the solder balls having been heated and melted,’” as
recited in claims 16-18. (Req. for Reh’g 18.)
With respect to claims 16-18, Appellant’s Appeal Brief argues:
Claims 16-18 . . . recite “the stand-offs adapted to support the
socket connector onto the PC board immediately after the
solder balls have been heated and melted.” None of the applied
references disclose these claim features and thus claims 16-18
are patentable for this additional reason.
(App. Br. 37.) Again, Appellant’s previously presented arguments are not
substantive because such arguments merely provide a conclusory statement
that the references do not teach the features of dependent claims 16-18. See
Lovin, 652 F.3d at 1357. Accordingly, these are new arguments not raised in
the Briefs before the Board and such new arguments will not be considered.
37 C.F.R. § 41.52(a)(1).
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Patent 6,530,798

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CONCLUSIONS
The Request for Rehearing has been considered and is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

ak

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