Ex Parte Bet-Shliemoun

Patent Trial and Appeal Board

Apr 7, 2014

12366208 (P.T.A.B. Apr. 7, 2014)

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.
12/366,208 02/05/2009 Ashur S. Bet-Shliemoun SUNM 090043 PUS 7398
51344 7590 04/07/2014
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
NGUYEN, TRUC T
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
04/07/2014 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
PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ORACLE AMERICA, INC.1
(Application 12/366,208)
____________

Appeal 2011-013114
from Technology Center 2800
Truc T.T. Nguyen, Primary Examiner
____________

Before RICHARD E. SCHAFER, RICHARD TORCZON and JOHN G. NEW,
Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
The appellant (Oracle) seeks relief from the final rejection of claims 1-18.
We AFFIRM.

1 Br. 2 (real party-in-interest). According to United States Patent and Trademark
Office records, the named inventor has assigned the application to Sun
Microsystems, Inc., but the certificate of merger with Oracle has not been
recorded. Instead, the records (visited March 2014) show a name change from
"Agway Manufacturing Inc." to "AMI Attachments Inc."
http://assignments.uspto.gov/assignments/q?db=pat&qt=pub&pub=20100197151.
Appeal 2011-013114 Application 12/366,208

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OPINION
BACKGROUND
Oracle filed a disclosure of "a socket package including integrated
capacitors."2 Claim 1, one of three independent claims, defines the invention as:3
A socket apparatus to serve as an intermediary device between
a chip package including first contacts and a PCB including second
contacts, comprising:
a housing having planar top and bottom sides lying in parallel
planes defined by x and y axes;
a plurality of interconnection portions, extending along a z axis
between the top and bottom sides of the housing, to connect the first
contacts to the second contacts, wherein at least one interconnection
portion is connected via a connector to an interior portion of a
passage, extending along the z-axis and surrounding the
interconnection portion, the connector allowing the interconnection
portion to move along the x, y and z axes; and
a plurality of capacitors, at least one capacitor connecting at
least a first interconnection portion to at least a second interconnection
portion.
(Emphasis added for contested language). Oracle represents that the other
independent claims have similar language and does not otherwise argue the claims
separately.4 Consequently, the claims stand or fall together.5
The examiner rejected all of Oracle's claims as having been obvious from
the disclosures of patents6 to Goodman7 and Figueroa.8

2 A.S. Bet-Shliemoun, Socket package including integrated capacitors, U.S. Pat.
Appl'n 12/366,208 at 1:4-5 (filed 5 February 2009) ("Spec.").
3 Br., Apdx. 1. All claim language in this opinion comes from the claims appendix
to the appeal brief. See Ans. 3, item (7) (not objecting).
4 Br. 9 & 12.
5 C.W. Zumbiel Co., Inc. v. Kappos, 702 F.3d 1371, 1378 n.2 & 1381 n.4 (Fed. Cir.
2012); In re Dillon, 919 F.2d 688, 695 (Fed. Cir. 1990) (en banc); 37 C.F.R.
§ 41.37(c)(1)(vii) (2011) (rules in effect at the time of briefing).
6 Final Rej. 2, citing 35 U.S.C. 103.
Appeal 2011-013114 Application 12/366,208

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FACTS AND FINDINGS
Oracle specification
[1] Oracle Figure 1 (right) shows:9
a side view of an exemplary
illustrative direct attach
interconnect 10[.]
Interconnect 10 includes a
liquid crystal polymer (LCP)
housing 12 and a plurality of
metal spring contacts 14 (only
one spring contact being
shown). [The h]ousing 12
includes a plurality of
passages 16 (only one
passage being shown)
arranged in a pattern and
extending through top and bottom sides 18, 20 of [the] housing 12.
Spring contacts 14 are individually disposed within and extend out of
[their] respective passages 16.
[2] Each spring contact 14 has "a middle portion 22" and top and bottom
ends 24, 26 that extend out of the passage 16, with a connector 28 that
"movably connects middle portion 22 of spring contact 14 to passage 16 such
that the spring contact may move in the z direction relative to its passage."10

7 G. Goodman & J.V. Murphy, Double-pogo converter socket terminal,
US 7,114,996 B2 (2006).
8 D.G. Figueroa & Y.-L. Li, Integrated circuit socket with capacitors and shunts,
US 6,811,410 B2 (2004).
9 Spec. 4:9-15 (item 18 not shown).
10 Id. at 5:10-15.
Appeal 2011-013114 Application 12/366,208

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[3] The interconnect 10 is placed between a package 28 and a printed circuit
board (PCB) 30 "to mechanically and electrically connect [sic] the package and
the PCB."11
[4] Oracle discloses that:12
[the] spring contacts 14 are held by [the] housing 12 but are decoupled
from the housing such that pressure/forces caused by expansion of
[the] package 28 and [the] PCB 30 relative to one another minimizes
stress on solder joints formed with the spring contacts as such
pressure/forces are absorbed by the spring contacts themselves as they
are movable in x, y, and z directions.
[5] Oracle cautions that its "invention is not to be limited to the disclosed
embodiments, but on the contrary, is intended to cover various modifications
and equivalent arrangements included within the spirit and scope of the
appended claims."13
Goodman
[6] Goodman discloses connections between integrated circuit array packages
and circuit boards.14
[7] Goodman Figure 6B (right) shows a cross-
sectional side view of a ball-grid array (BGA)
converter socket assembly.15
[8] Each solder ball 22 on the BGA package 12 is
connected to the printed circuit board 14 through
an insulative member 16 by a converter socket

11 Id. at 4:19-20.
12 Id. at 5:1-5.
13 Spec. 10:6-10.
14 Goodman 1:6-7.
15 Id. at 3:31-32; 1:8-10 (defining "BGA").
Appeal 2011-013114 Application 12/366,208

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terminal (18, not numbered in the figure) with a contact element 200.
[9] The examiner relies on Goodman Figure 2 to show that the contact
element 200 has room to move horizontally (i.e., along the x and y axes).
[10] According to the examiner, the "interconnection portions 51 [sic, 52]
and 200 are capable of wiggling at the respective ends of the connector 40 due
to available spaces between the interconnection portions [52], 200 and the
connector 40."16
[11] Goodman Figure 2 (detail, right) shows a cross-sectional view
of a single converter socket.17
[12] The socket 18 includes a female socket 40 with a flange 202 to
retain the contact element 200.18
[13] A male terminal 52 has a pin 56, which contact spring 46 with
leaves 48 secures substantially transversely the longitudinal axis to
ensure better electrical contact.19
[14] A metal coiled spring 60 biases the male terminal 52 and the
contact element 200 outward along the longitudinal axis.20
[15] The male terminals 52 can tilt, which can cause electrical shorting, so
Goodman teaches that a sheet 61 (not shown in Figure 2) may be used to secure
the terminals 52 in a proper spaced relationship.21
[16] Goodman teaches that the electrical path from the male terminal 52 through
the spring leaves 48 and female socket 40 to the contact element 200 (in

16 Ans. 6.
17 Goodman 3:21-22. The figure omits Goodman's x and y axes, which differ from
Oracle's axes.
18 Id. at 4:18-26.
19 Id. at 4:34-52 & 5:24-28.
20 Id. at 5:34-37.
21 Id. at 5:13-23.
Appeal 2011-013114 Application 12/366,208

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contrast to the path through the metal coiled spring 60)
might not be reliable in the embodiment of Figure 2.22
[17] To address this unreliability, Goodman teaches an
embodiment (see Figs. 7A-7D, right) in which the
contact element 200a, 200b is itself a spring to ensure
better contact with the body of the female socket 40.23
We find that Goodman's identification of the electrical
path problem in the first embodiment—with a solution
involving springs biasing the contact against the body of the
connector—supports the examiner's finding that the connector of the first
embodiment can move transversely so as to lose contact with the body of the
connector.
Figueroa
[18] Figueroa discloses integrated circuit
packaging and, more specifically, a power
delivery system for an integrated circuit.24
[19] Figueroa Figure 2 (right) shows a partial side
view cutaway a socket.25
[20] A capacitor 280 is removably attached in a socket (110, not numbered in the
figure) by press-fit with two contact elements 290, 291.26

22 Id. at 6:28-37.
23 Id. at 6:38-51.
24 Figueroa 1:7-10.
25 Id. at 1:38-41.
26 Id. at 3:19-24.
Appeal 2011-013114 Application 12/366,208

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[21] Figure 3 (right) shows that each contact element 291 has a
pin 294, arms 296 connecting it to other elements (such as the
capacitor 280).27
[22] A solder ball 292 may attach the contact element 292
to a printed circuit board.28
ANALYSIS
Oracle contends that Goodman's interconnection portion cannot move in the
x, y and z axes because the interconnection includes the female socket 40, which
does not move.29 The examiner's application of Goodman to claim 1 in the final
rejection is somewhat confusing because the examiner associated the claimed
interconnection portion with Goodman's converter socket terminal 18, but also
associated the claimed connector with Goodman's female socket 40.30 In the
claim:
at least one interconnection portion is connected via a connector to an
interior portion of a passage, extending along the z-axis and
surrounding the interconnection portion, the connector allowing the
interconnection portion to move along the x, y and z axes[.]
In the answer, the examiner clarified the rejection by identifying the Goodman's
male terminal 52 and the contact element 200 as "interconnection portions". This
latter clarification is consistent because both the male terminal 52 and the contact
element 200 are surrounded (where they overlap) by the female socket 40.

27 Id. at 3:59-62.
28 Id. at 3:64-65.
29 Br. 10.
30 Final Rej. 2.
Appeal 2011-013114 Application 12/366,208

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Oracle has not pointed to an express definition of "interconnection portion"
in its disclosure. The disclosure explains that:31
The interconnecting portions extend along the z axis between the top
and bottom sides of the housing. The interconnecting portions serve
to connect first contacts included in the chip package to second
contacts included in the PCB.
The disclosure further requires that "at least one capacitor connecting at least a first
interconnection portion to at least a second interconnection portion."32 Neither of
these requirements distinguishes the examiner's reading of the "interconnection
portions" as including separate top and bottom contacts or terminals that are
physically and electrically connected through a connector as in the examiner's
reading of Goodman.
In its reply, Oracle contends that Goodman's male terminal 52 and contact
element 200 cannot be interconnection portions because they do not extend
between the top and bottom side of the housing.33 Oracle never points to a
definition for "interconnection portion", either in its specification or in a relevant
technical resource. The specification itself uses the term broadly, in the same
manner as the claim, but the one labeled element that uses "portion" is Oracle's
"middle portion 22", which is not the entire interconnect 10, but rather a portion of
Oracle's interconnect 10, and which does not extend the entire length of the
passage 16. Hence, Oracle's specification suggests that portions of an interconnect
need not extend the entire length of the passage.

31 Spec. 2:22-24. Again, grammatically, the "between" clause modifies (i.e.,
defines the orientation of) its closest antecedent (the z axis). Note that Goodman
defines the x and y axes differently so this record does not indicate an art-
recognized orientation.
32 Id. at 2:25-27.
33 Reply 2.
Appeal 2011-013114 Application 12/366,208

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Moreover, the claim language does not require the interconnection portion to
extend from the top to the bottom of the housing; rather, the claim requires each
interconnection portion to extend along the z axis. The relevant portion of the
claim is "a plurality of interconnection portions, extending along a z axis between
the top and bottom sides of the housing, . . .". Grammatically, "extending along a z
axis" modifies the interconnection portions, while "between the top and bottom
sides of the housing" modifies its closest antecedent: the z axis.34 This is the only
way that either the specification or the claims define the z axis, which does not
appear to have a standard meaning in the art.35
Oracle relies on functional language to distinguish its claims from the prior
art. Patent law has long recognized that functional limitations in non-process
claims are problematic because they tend to leave the scope of the claimed
structure unclear, thus undermining the essential notice function of claim.36 One of

34 HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270, 1274-75 (Fed. Cir. 2012)
(modifiers are presumed to modify the antecedent noun), citing Wm. Strunk, Jr. &
E.B. White, The Elements of Style 30 (4th ed. 2000); In re Hyatt, 708 F.2d 712,
714 (Fed. Cir. 1983) (requiring that claims be read in accordance with the precepts
of English grammar). If Oracle had wanted the "between" clause to modify the
interconnect portions, it could have used a conjunction or a comma before
"between", although it is not clear whether the specification would have provided
support for such an amendment.
35 In Goodman, Figures 1 and 2 are consistent with ordinary usage, in which
vertical is the y axis, while the z axis is normal to the plane of the figure.
36 E.g., Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 370-71 (1938);
accord Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 12-13 (1946),
modified in part by 35 U.S.C. 112(6) (2012) (now § 112(f)). Oracle has not
invoked the § 112(6) exception.
Appeal 2011-013114 Application 12/366,208

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the risks in functional claiming is that structures different than those the inventor
intended may provide the claimed function.37
HOLDING
Oracle has not shown prejudicial error in the examiner's interpretation of the
claims or in applying the cited prior art to the claims; hence, the final rejection of
claims 1-18 is—
AFFIRMED
bar

For the appellant: BERNARD P. TOMSA, Brooks Kushman P.C., of Southfield,
Michigan.

37 Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1362-63 (Fed.
Cir. 2004) (explaining that unintended breadth is a known risk of functional
claiming without resort to means-plus-function format).