Ex Parte BirgelDownload PDFPatent Trial and Appeal BoardOct 24, 201410507213 (P.T.A.B. Oct. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIETMAR BIRGEL ____________ Appeal 2012-011735 Application 10/507,213 Technology Center 1700 ____________ Before TERRY J. OWENS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judges. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 33, 35, 37, 41–44, and 65. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The sole independent claim 65 is representative of the claimed subject matter (emphasis added): 65. A method for populating a circuit board and soldering a circuit board in a reflow oven including an exit, the circuit board having a first side and a second side and at least one wired, electrical component ("THT- component") having at least one connection wire or connection pin and a housing or casing thermally critical for conventional, automatic soldering technology, comprising the steps of: Appeal 2012-011735 Application 10/507,213 2 populating the first ide of the circuit board with the at least one wired, electrical THT-component, with the connection wire or pin stuck from the first side through a hole and emerging on the second side of the circuit board in the area of a soldering contact surface printed with a solder paste; placing the circuit board so populated into the reflow oven for the soldering; at least partially shielding the first side populated with the one or more THT-components, by the circuit board itself, from a heat or energy feed effecting the soldering, in the reflow oven, acting on the second side for soldering, while also cooling the first side of the circuit board populated with the one or more THT-components adjacent the exit of the reflow oven, wherein: in an essentially horizontal arrangement of the circuit board during travel through the reflow over for soldering the THT-components are located underneath the circuit board and, the first side of the circuit board populated with the one or more THT- components is cooled in the reflow oven. The Examiner maintains the following rejections under 35 U.S.C. § 103(a): 1) Claims 33, 35, and 65 as unpatentable over Shibo (U.S. 6,123,247, issued Sept. 26, 2000); 2) Claims 37, 41, and 44 as unpatentable over Shibo in view of Wentworth (U.S. 5,373,984, issued Dec. 20, 1994); and 3) Claims 42 and 43 as unpatentable over Shibo, Wentworth, and Thomas (U.S. Patent No. 5,920,463, issued July 6, 1999). Appellant’s arguments focus only on claim 65 (App. Br. 5, 6). Appeal 2012-011735 Application 10/507,213 3 ANALYSIS Upon consideration of the evidence on this appeal record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s determination that the subject matter of the claim 65 is unpatentable over the applied prior art. Accordingly, we will sustain all of the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Examiner’s Response to Argument section, and we add the following for emphasis. Appellant’s sole argument is that since Shibo uses a pallet mask to shield/mask components from the cooling air, the circuit board of Shibo is not “shielding” as required by the claims (App. Br. 6; Reply Br. 2). Appellant explains that “[m]asks or other means that are additional [to the circuit board] . . . are in no way contemplated by the present invention” (App. Br. 6). This argument is not persuasive of error. Claim 65 does not preclude additional shields, or the mask as shown in Shibo. Independent claim 65 uses the open-ended term “comprising.” “‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Furthermore, the claim recites “at least partially shielding” which also on its face permits other elements and/or steps for shielding. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the claims cannot be relied upon for patentability). Furthermore, as pointed out by the Examiner, it is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the Appeal 2012-011735 Application 10/507,213 4 applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure (Ans. 13). See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s de facto mere allegations that the circuit board of Shibo does not act as a shield (App. Br. 6; Reply Br. 2) are not sufficient to refute the Examiner’s reasonable findings that this circuit board is comparable to Appellant’s as claimed and disclosed. Appellant has not provided any evidence or persuasive technical reasoning to refute the Examiner’s determination that the resultant function, that is, “at least partially shielding” the components “from a heat or energy feed” of claim 65 will occur. Appellant relies upon the argument presented for claim 65 for all the other claims, including the claims separately rejected (App. Br. 6, 7 (in addressing the separate rejections, Appellant merely argues that each of Wentworth and Thomas do not teach using a circuit board as a shield. The Examiner did not cite these references for this purpose)). Accordingly, we affirm each of the Examiner’s § 103 rejections of the claims. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cam Copy with citationCopy as parenthetical citation