Ex Parte 6887114 et al

Patent Trials and Appeals Board

Jun 15, 2015

90012447 - (D) (P.T.A.B. Jun. 15, 2015)

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.
90/012,447 08/22/2012 6887114 578119-620118 1566
24325 7590 06/16/2015
PATENT GROUP 2N
JONES DAY
NORTH POINT
901 LAKESIDE AVENUE
CLEVELAND, OH 44114
EXAMINER
PATEL, HETUL B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/16/2015 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 COMPANY, LTD.
Appellant
____________
Appeal 2015-004286
Reexamination Control 90/012,447
Patent 6,887,114 B2
Technology Center 3900
____________

Before DAVID M. KOHUT, ERIC B. CHEN, and ANDREW J. DILLON,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 90/012,447
Patent 6,887,114 B2

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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1–3 and 5–45. Claim 4 has been cancelled. Claims 1, 2,
5, and 9 have been amended during the reexamination proceeding and new
claims 21–45 have been added. 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. 6,887,114
(the ’114 patent) was filed on August 22, 2012 and assigned Reexamination
Control No. 90/012,447.
The ’114 patent, entitled “Electrical Connector with High
Performance Contacts,” issued May 3, 2005, to Fang-Jwu Liao, based on
Application No. 10/896,121, filed July 20, 2004.
The ’114 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 electrical contacts accommodated for
an insulative housing, each contact having a spring arm, a medial portion,
and an upper portion. The upper portion includes an extending beam
connecting with the medial portion, a contacting portion for connecting with
a mating component, and a connecting beam for connecting the extending
beam and the contacting portion. The extending beam has a first axis A,
about which the extending beam is symmetrical, and the contacting portion
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has a second axis B, about which the contacting portion is symmetrical. The
second axis is deflective from the first axis at an angle C. (Abstract.)
Figure 2 of the ’114 patent illustrates a top view of an electrical
contact and is reproduced below:

As illustrated in Figure 2 of the ’114 patent, the electrical contact includes
extending beam 147, connecting beam 148, contacting portion 149, first
axis A, second axis B, and angle C.

Related Litigation
The ’114 patent has been subject to multiple patent infringement
suits, including Lotes Co. v. Hon Hai Precision Industry Co., No. 5:11-cv-
1036 (N.D. Cal. Mar. 7, 2011) and Lotes Co. v. Hon Hai Precision Industry
Co., No. 3:11-cv-1036 (N.D. Cal. Mar. 7, 2011).
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The Claims
Independent claim 1 is exemplary, with disputed limitations in italics
and with underlining and bracketing to indicate claim amendments:
1. An electrical connector used for electrically
connecting a mating electrical component having conductive
pads to a printed circuit board comprising: an insulative
housing:
a plurality of electrical contacts held in the housing
interferentially;
each contact comprising a plate-like base portion, a
fastening portion accommodated in the housing, a spring arm
extending from the base portion, and a soldering portion for
connecting to the printed circuit board;
the spring arm comprising a lower portion connecting
to the base portion, a medial portion extending from the
lower portion, an upper portion formed at a distal end of the
medial portion for connecting to the electrical component;
the upper portion defining an extending beam having a
first axis about which the extending beam is symmetrical,
and a contacting portion having a second axis about which
the contacting portion is symmetrical;
wherein the first axis is deflected from the second axis
and accordingly an angle is formed therebetween on a plane
parallel to the mating electrical component;
wherein the upper portion of the spring arm further
defines a connecting beam for raising the contacting portion
to a position higher than an upper surface of the housing; and
[the] wherein the spring arm obliquely extends from a lateral
side of the base portion.
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The Rejections
Claims 1–3 and 5–45 stand rejected under 35 U.S.C. § 103(a) as
obvious over Applicant’s admitted prior art (“AAPA”) and Mathieu
(6,255,126 B1; July 3, 2001).
Claims 5, 6, 10–13, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Koopman (US 6,585,527 B2; July 1, 2003) and
Mathieu.
The Examiner has withdrawn the rejection of claims 2 and 3 under 35
U.S.C. § 103(a) as obvious over Koopman and Mathieu. (Ans. 2.)

ANALYSIS
Figures 6–9 of the ’114 Patent as Admitted Prior Art
The Examiner concluded that column 1, lines 1–67 of the ’114 patent,
as well as Figures 6–9 of ’114 patent, qualify as Applicant’s admitted prior
art. (Final Act. 5.) The Examiner’s conclusion was based in the findings
that: (i) Figure 6–9 of the ’114 patent are labelled “Prior Art” (Ans. 13–14);
and (ii) the accompanying text describing Figures 6–9 characterizes
contact 60 as “conventional” (Ans. 14). We agree with the Examiner.
Column 1, lines 10–67 of the ’114 patent is the “Description of
Related Art” section. In general, the content of this section includes
“paragraph(s) describing . . . the state of the prior art or other information
disclosed known to the applicant, including references to specific prior art or
other information where appropriate.” MPEP § 608.01(c). The ’114 patent
discloses that “FIGS. 6–9 disclose a conventional contact 60 used in a
conventional connector 70 which is essentially shown in U.S. Pat. No.
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6,652,329 having the same assignee with the instant application” (col. 1,
ll. 33–36 (emphasis added)) and that “FIG. 8 is a top view of the
conventional contact, showing a conductive pad of a mating component
connecting therewith” (col. 2, ll. 55–57 (emphasis added)). In addition,
Appellant’s Figure 6–9 are expressly labelled “Prior Art.”
Because Appellant discloses “conventional” contact 60 in the
“Description of the Related Art” section, in reference to Figures 6–9,
Appellant has conceded that convention contact 60, illustrated in Figures 6–
9, constitute admitted prior art. In re Nomiya, 509 F.2d 566, 571 (CCPA
1975) (“By filing an application containing Figs. 1 and 2, labeled prior art,
ipsissimis verbis . . . appellants have conceded what is to be considered as
prior art in determining obviousness of their improvement.”). Furthermore,
Appellant’s admission that Figures 6–9 are prior art is an admission that
such figures are prior art for all purposes, regardless of a statutory basis
under 35 U.S.C. § 102. Id. at n.5 (“[A] statement by an applicant, whether
in the application or in other papers submitted during prosecution, that
certain matter is ‘prior art’ to him, is an admission that that matter is prior art
for all purposes, whether or not a basis in § 102 can be found for its use as
prior art.”).
Appellant argues that “[t]he alleged AAPA, if prior art, can only be
prior art pursuant to 102(f) since the claims are directed to improvements to
the subject matter alleged as AAPA.” (App. Br. 30.) Accordingly,
Appellant argues, that “[b]ecause all three prongs of pre-AlA 35 U.S.C.
§103(c) have been met, the alleged AAPA must be disqualified as prior art
per the statute.” (Id.) However, Appellant’s argument is merely a
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conclusory statement without supporting facts and evidence that a 35 U.S.C.
§102(f) rejection is appropriate. Moreover, as discussed previously,
Appellant’s admission that Figures 6–9 are prior art is an admission that
such figures are prior art for all purposes, regardless of a statutory basis
under 35 U.S.C. § 102.
Appellant also argues “[t]o remove the confusion regarding whether
AAPA existed in the patent text, the Patent Owner should have been allowed
to amend the drawings to remove the prior art label.” (App. Br. 30.)
Accordingly, Appellant argues, “35 USC § 132 is not a valid ground for
denying entry of the drawing amendment” (App. Br. 31) because “[t]he
labeling as prior art is clearly erroneous from the face of the patent” and “the
correction of figures 6–9 would not constitute new matter” (App. Br. 32).
Contrary to Appellant’s arguments, removal of the “Prior Art” label would
not constitute removal an obvious error because the ’114 patent
characterized contact 60, illustrated in Figure 6–9, as “conventional” and the
accompanying description of conventional contact 60 is in the “Description
of Related Art” section.
Appellant further argues that “if the labeling of Figs. 6–9 as prior art
is held to create applicant admitted prior art, then that labeling can be
considered a disclaimer if the Examiner’s position that removal of that
labeling constitutes new matter is correct” and “[t]he courts recognize that
disclaimers such as these can be rescinded.” (App. Br. 33.) However, the
rejection was based upon the Examiner’s conclusion that Figures 6–9 of the
’114 patent was admitted prior art, rather than prosecution disclaimer in the
context of recapturing claim scope.
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Thus, we agree with the Examiner’s conclusion that Figures 6–9 of
the ’114 patent qualify as admitted prior art.

§ 103 Rejections—AAPA and Mathieu
We are unpersuaded by Appellant’s arguments (App. Br. 13–28; see
also Reply Br. 3–17) that the combination of AAPA and Mathieu would not
have rendered obvious independent claim 1, which includes the limitation
“wherein the first axis is deflected from the second axis and accordingly an
angle is formed therebetween.”
The Examiner found that the conventional contact of AAPA, which
includes a connecting portion extending from the spring arm, corresponds to
the limitation “the upper portion defining an extending beam having a first
axis about which the extending beam is symmetrical . . . wherein the upper
portion of the spring arm further defines a connecting beam for raising the
contacting portion to a position higher than an upper surface of the housing
. . . wherein the spring arm obliquely extends from a lateral side of the base
portion.” (Ans. 3; Final Act. 9.) The Examiner further found that the beam
portion of Mathieu, illustrated in Figure 10d as extending both laterally and
transversely, corresponds to the limitation “wherein the first axis is deflected
from the second axis and accordingly an angle is formed therebetween on a
plane parallel to the mating electrical component.” (Ans. 3; Final Act. 9–
10.) The Examiner concluded that “[o]ne of ordinary skill in the art, based
on the teachings of Mathieu, would shape the spring arm 62 of the AAPA by
bending it so the extending beam would extend at an angle different from the
direction at which the contacting portion and/or connecting beam extends”
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because “the superposed hatched area between the contacting portion 64 and
the conductive pad 800 would increase.” (Ans. 3.) We agree with the
Examiner.
Figure 6 of the ’114 patent, labeled “Prior Art,” illustrates a
perspective view of conventional contact 60 and is reproduced below:

As illustrated in Figure 6 of the ’114 patent, conventional contact 60
includes base portion 61, spring arm 62, connecting portion 63, and contact
portion 64. The ’114 patent discloses “a spring arm 62 extending from a
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lateral side of the base portion 61” such that “[t]he spring arm 62 further
defines a connecting portion 63 extending from the spring arm 62 and a
contacting portion 64 extending from a distal end of the connecting
portion 63.” (Col. 1, ll. 41–45.) Thus, Figure 6 of ’114 patent teaches the
limitations “the upper portion defining an extending beam . . . wherein the
upper portion of the spring arm further defines a connecting beam for raising
the contacting portion to a position higher than an upper surface of the
housing . . . wherein the spring arm obliquely extends from a lateral side of
the base portion.”
Figure 8 of the ’114 patent, also labeled “Prior Art,” illustrates a top
view of conventional contact 60 and is reproduced below:

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As illustrated in Figure 8 of the ’114 patent, both contacting portion 64 and
connecting portion 63 are symmetrical about axis “XX.” Thus, Figure 8 of
’114 teaches the limitation “an extending beam having a first axis about
which the extending beam is symmetrical.” The ’114 patent further
discloses that “[b]ecause of the size and structure limitation of the connector
[60], the contacting portion 64 cannot osculate with the conductive pads
800” (col. 1, ll. 53–55) and that “[s]uch connectors are served for electrical
components, which makes it difficult to improve the structure of the
component” (col. 1, ll. 60–62). Because Figure 8 illustrates that the
superimposed area of contacting portion 64 with conductive pad 800 is
small, represented by cross-hatching (col. 1, ll. 53–61), Figure 8 provides a
suggestion that adjusting the angle of either connecting portion 63 or contact
portion 64 would increase such superimposed area on conductive pad 800.
Mathieu “relates to an interconnection (contact) element suitable for
effective pressure connections between electronic components.” (Col. 1,
ll. 6–8.) Mathieu explains that a need exists for “fabricating
interconnections suitable for present fine-pitch electrical connections that is
scalable for future technologies” (col. 3, ll. 55–57) and that “[t]he invention
addresses and is particularly well-suited to making interconnections to
electronic components having their terminals (e.g., bond pads) disposed at a
fine-pitch” (col. 4, ll. 22–25). Figure 10d of Mathieu illustrates a top view
for a beam portion that extends laterally (x-direction) and transversely (y-
direction) and is reproduced below, with additional annotations indicating
axis “A” and axis “B” with two dashed lines:
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Mathieu explains that “[t]he laterally and transversely extending beam
portions may be desirous, for example, when fabricating contact elements to
particularly minimize the pitch between adjacent contact elements.”
(Col. 15, ll. 13–16.)
A person of ordinary skill in the art would have recognized that
incorporating the beam portion of Mathieu, which extends both laterally (x-
direction) and transversely (y-direction), with the spring arm of AAPA,
having a connecting portion and a contacting portion, would improve AAPA
by providing the ability align the contacting portion of the spring arm with
conductive pads. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”). Furthermore, a person of ordinary
skill in the art would have recognized that it would have been “obvious to
try” extending the contacting portion of AAPA laterally (x-direction) while
extending the connecting portion of AAPA transversely (y-direction), or
vice versa, because this configuration is one of a finite number of identified,
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predictable configurations. See id. at 421 (“When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.”). Thus, we
agree with the Examiner (Ans. 3) that modifying AAPA with Mathieu would
have been obvious.
First, Appellant argues that “because the tip portion 16 of Mathieu
does not extend at an angle different from that of the beam portion 14,
Mathieu cannot teach or suggest extending the connecting beam 148 and the
contact portion 149 at an angle different from the direction at which the
extending beam 147 extends.” (App. Br. 15.) Accordingly, Appellant
argues that:
A combination of the Mathieu’s teaching of extending the beam
portion laterally and transversely with the contact 60 of the
alleged AAPA would at best yield an extending beam that
extends laterally and transversely and a connecting beam that
rises from the laterally and transversely extended end of the
extending beam and connects the transversely extended end of
the extending beam and the contacting portion.
(App. Br. 16.) However, the Examiner’s finding was based on the beam
configuration illustrated in Figure 10d of Mathieu, having two different
axes, rather than the angle of beam portion 14 relative to tip portion 16.
(Ans. 3; Final Act. 9–10.)
Second, Appellant argues that “[a]n axis drawn through the midpoints
of the edges of [middle] section B of 145d [of Mathieu] show that the
portion of [middle] section B of 145d above the axis does not have the same
shape as the portion of [middle] section B of 145d below the axis” and thus,
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Mathieu does not teach the limitation “upper portion defining an extending
beam having a first axis about which the extending beam is symmetrical.”
(Reply Br. 8.) However, the Examiner cited to AAPA, rather than Mathieu,
for teaching the limitation “the upper portion defining an extending beam
having a first axis about which the extending beam is symmetrical.” (Final
Act. 9.)
Third, Appellant argues that “[a]t best, Fig. 10d of Mathieu shows
structure roughly analogous to an extending beam . . . and a contacting
portion” but “does not show a connecting beam that is intermediate between
the extending beam and the contacting portion for raising the contacting
portion.” (Reply Br. 8; see also Reply Br. 9–11.) However, the Examiner
cited to AAPA, rather than Mathieu, for teaching the limitations “extending
beam,” “connecting beam,” and “contacting portion.” (Final Act. 9.)
Fourth, Appellant argues that “a person skilled in the art would have
no desire to reduce or adjust the pitch and thus have no desire to apply
teachings from Mathieu to the alleged AAPA.” (App. Br. 20; see also Reply
Br. 3–6.) In particular, Appellant argues that “[t]he pitch of the alleged
AAPA must be matched to that of its mating component 80” but “[c]hanging
that pitch could result in a pitch mismatch.” (App. Br. 20.) However,
Appellant’s arguments do not directly rebut the Examiner’s articulated
reasoning that “[o]ne of ordinary skill in the art, based on the teachings of
Mathieu, would shape the spring arm 62 of the AAPA by bending it so the
extending beam would extend at an angle different from the direction at
which the contacting portion and/or connecting beam extends.” (Ans. 3.)
As discussed previously, Figure 8 of the ’114 patent provides a suggestion
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that adjusting the angle of either connecting portion 63 or contact portion 64
would increase such superimposed area on conductive pad 800.
Fifth, Appellant argues that “Mathieu instructs that its teachings are
only relevant to components having a pitch between terminals of less than 5
mils.” (App. Br. 22.) Accordingly, Appellant argues, “LGA connectors,
such as those disclosed by the alleged AAPA . . . have a pitch between
terminals much larger than 5 mils” but “[a] person of ordinary skill in the
art, therefore, would not find Mathieu, because of its express teachings,
applicable to . . . the alleged AAPA.” (App. Br. 23 (footnote omitted).)
However, the Examiner cited Mathieu for the general concept of configuring
the beam portion laterally and transversely, rather than the dimensions of the
components. (Ans. 3; Final Act. 9–10.)
Sixth, Appellant argues that “Mathieu teaches away from a
combination with . . . the alleged AAPA” because “Mathieu instructs that its
teaching should only be applied to lithographic techniques and not to
mechanical techniques used to fabricate contact elements.” (App. Br. 24;
see also Reply Br. 10–11.) Mathieu explains that “this [invention] is
preferably achieved by taking advantage of the close tolerances that readily
can be realized by using lithographic rather than mechanical techniques.”
(Col. 4, ll. 28–32). In other words, Mathieu may teach that mechanical
techniques can be “somewhat inferior,” rather than “teaching away” from
the use of all mechanical techniques. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
Last, Appellant argues that “Mathieu teaches away from a
combination with . . . the alleged AAPA” because “Mathieu teaches to
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reduce the surface area of the contact whereas the problem sought to be
solved by the ’114 patent was to increase the surface area of the contact.”
(App. Br. 26.) Again, the Examiner cited Mathieu for the general concept of
the beam portion laterally and transversely, rather than the dimensions of the
components. (Ans. 3; Final Act. 9–10.)
Thus, we agree with the Examiner that the combination of AAPA and
Mathieu would have rendered obvious independent claim 1, which includes
the limitation “wherein the first axis is deflected from the second axis and
accordingly an angle is formed therebetween.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a).
Independent claims 2, 5, 11, 21, and 42–45 recite limitations similar
to those discussed with respect to independent claim 1, and Appellant has
not presented any additional substantive arguments with respect to these
claims. We sustain the rejection of claims 2, 5, 11, 21, and 42–45, as well as
dependent claims 3, 6–10, 12–20, and 22–41, for the same reasons discussed
with respect to claim 1.

§ 103 Rejections—Koopman and Mathieu
We do not reach the additional rejection of claims 5, 6, 10–13, 17, and
18 under 35 U.S.C. § 103(a) as obvious over Koopman and Mathieu.
Affirmance of the obviousness-based rejection discussed previously renders
it unnecessary to reach the remaining obviousness rejections, as all of
pending claims have been addressed and found unpatentable. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
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DECISION
The Examiner’s decision rejecting claims 1–3 and 5–45 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
rvb

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