Ex Parte Andresen et al

Patent Trial and Appeal Board

Sep 28, 2017

13655135 (P.T.A.B. Sep. 28, 2017)

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.
13/655,135 10/18/2012 Mark E. Andresen XRPS920090120US2 1768
127893 7590 09/28/2017
Streets & Steele - Lenovo (Singapore) Pte. Ltd.
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
EXAMINER
AYCHILLHUM, ANDARGIE M
ART UNIT PAPER NUMBER
2847
MAIL DATE DELIVERY MODE
09/28/2017 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 MARK E. ANDRESEN and VIRGINIA OTT
____________

Appeal 2016-008085
Application 13/655,1351
Technology Center 2800
____________

Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
JULIA HEANEY Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claim 1 under 35 U.S.C. § 103(a) over Mickievicz2 in
view of Zollo3 and Takada,4 and of claims 2‒8 in further view of Copeland.5
We have jurisdiction under 35 U.S.C. § 6. We REVERSE.

1 Lenovo Enterprise Solutions (Singapore) Pte. Ltd. is identified as the real
party in interest. Appeal Br. 3.
2 Mickievicz et al., US 2005/0263322 A1, published December 1, 2005.
3 Zollo et al., US 2006/0215379 A1, published September 28, 2006.
4 Takada et al., US 6,590,165 B1, issued July 8, 2003.
5 Copeland et al., US 5,793,998, issued August 11, 1998.
Appeal 2016-008085
Application 13/655,135

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THE INVENTION
The subject matter of the claims on appeal relates to a printed circuit
board. Specification filed October 18, 2012 (“Spec.”), Abstract.
Claim 1—the sole independent claim—is reproduced below.
1. A printed circuit board, comprising:
a planar substrate having a first face, a second face
opposite the first face, and a plurality of conductive layers
disposed between nonconductive layers of the planar substrate;
a plurality of holes extending into the planar substrate
from the first face to a predetermined depth intermediate the
first and second faces, wherein the hole extends through a first
subset of the conductive layers but does not extend through a
second subset of the conductive layers;
a plurality of mechanical locating pins, each pin received
into one of the plurality of holes, wherein the mechanical
locating pin is disposed to mechanically align a first component
for electronically interfacing with the planar substrate; and
a second component on the second face directly opposite
of the hole, wherein the second component is in electronic
communication with conductive traces or interconnects formed
on the second face directly opposite of the hole.
Appeal Brief filed December 11, 2015 (“Appeal Br.”), (Claims Appx.) 20.
DISCUSSION6
We are persuaded that the Examiner has failed to meet the Office’s
burden of establishing the unpatentability of the claims. For any ground of
rejection, “the Examiner bears the initial burden . . . of presenting a prima

6 In our discussion, we refer to the Specification, the Final Office Action
issued July 23, 2015 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer issued July 19, 2016 (“Ans.”), and the Reply Brief filed August 17,
2016 (“Reply Br.”).

Appeal 2016-008085
Application 13/655,135

3
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Claim 1 requires, inter alia, “a planar substrate having a first face, a
second face opposite the first face, . . . holes extending into the planar
substrate from the first face to a predetermined depth intermediate the first
and second faces, . . . [and] a second component on the second face directly
opposite of the hole, . . . in electronic communication with conductive traces
or interconnects formed on the second face directly opposite of the hole.”
The Examiner relies on Mickievicz for disclosing a printed circuit
board having a first face, a second face, and a plurality of holes into the first
face of the planar substrate. Final Act. 3; Ans. 3, 7.
The Examiner relies on Zollo for teaching a second component on the
second face directly opposite the hole, identifying component 52 in Figures
5 and 6 as being on the second face directly opposite hole 19. Final Act. 3;
Ans. 3‒4, 8. The Examiner further finds “Zollo’s component 52 are [sic]
conveniently exposed for further processing and interconnects, (please see
paragraph [0031], lines 4‒5) teaches if the component 52 communicates for
further processing.” Ans. 8. The Examiner concludes that “it would have
been obvious to one having ordinary skill in the art at the time the invention
was made to arrange Zollo’s component 52 into Mackievicz’s device.” Id.
Appellants contend reversible error on the basis, inter alia, that
Zollo’s component 52 is an embedded component and is not on the second
face of the substrate opposite the first face of the planar substrate as claimed.
Appeal Br. 12 (citing Zollo ¶¶ 29‒30, Fig. 5); see also Reply Br. 9.
Appellants’ argument is well-founded. The fact that Zollo’s
component 52 is exposed is of no import because, as disclosed, it is
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Application 13/655,135

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nonetheless embedded below the level of the second surface, and there is no
sufficient reasoning to modify its location. See generally Final Act.; Ans.
We find lacking, therefore, the requisite basis for “a second component on
the second face directly opposite of the hole” required by claim 1 (emphasis
added). See, e.g., Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015) (“[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”). On this
record, accordingly, the Examiner’s articulated reasoning falls short of that
necessary for a prima facie case. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”); In re Sporck, 301 F.2d 686, 690 (CCPA 1962); see also Oetiker,
977 F.2d at 1445.
We decline to scour the record in the first instance for facts that might
support a prior art rejection of the claim on appeal, as our primary role is
review, not examination de novo.
DECISION
The Examiner’s decision rejecting claim 1‒8 is REVERSED.

REVERSED