Ex Parte Birgel et al

Patent Trial and Appeal Board

Jun 27, 2013

10572953 (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.
10/572,953 02/21/2007 Dietmar Birgel BIRG3005/FJD 4797
23364 7590 06/27/2013
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
CHAMBERS, TRAVIS SLOAN
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
06/27/2013 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 DIETMAR BIRGEL, KARL-PETER HAUPTVOGEL, and PAUL
BURGER
____________________

Appeal 2011-001016
Application 10/572,953
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J.
DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/572,953

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 50-52. Claims 1-29, 44-49, and 56-58 have been canceled, and
claims 30-43 and 53-55 have been withdrawn due to a restriction
requirement. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
Exemplary Claims
Exemplary independent claims 50 and 51 under appeal, with
emphases added, read as follows:
50. A method for manufacturing a circuit board having at least one
connection bore for receiving a connection wire, or pin, of an electronic
component of a predetermined wire, or pin, diameter, comprising the steps
of:
manufacturing a circuit board with at least one ply, or layer;
drilling a blind hole with a drilling tool having a desired diameter, into
the circuit board at a location desired for the connection bore; and
drilling through the floor of the blind hole with a drilling tool having a
diameter smaller than the wire, or pin, diameter, in order to form a second
bore, so that a narrowing created thereby in the cross section of a part of the
connection bore forms a holding mechanism for secure holding of the
connection wire, or pin.
51. A method for manufacturing a circuit board having at least one
connection bore for receiving a connection wire, or pin, of an electronic
component of a predetermined wire, or pin, diameter, comprising the
steps of:
manufacturing a circuit board with at least one ply, or layer;
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drilling a first blind hole at a location desired for the connection bore,
into the circuit board from a first surface of the circuit board with a drilling
tool of a desired diameter; and
drilling a second blind hole from a second surface of the circuit board,
into the circuit board, which is arranged slightly offset from the first blind
hole and which meets the first blind hole, so that, by the offset of the two
blind holes relative to one another, a restriction is formed, which represents
a holding mechanism for secure holding of the connection wire, or pin.
Examiner’s Rejections
(1) The Examiner rejected claims 50 and 52 as being anticipated
under 35 U.S.C. § 102(b) by Belke, Jr. (US 6,585,903 B1).1 Ans. 4-5.
(2) The Examiner rejected claim 51 as being unpatentable under
35 U.S.C. § 103(a) over Kokubun (US 6,523,257 B1) and Machida (US
4,185,378). Ans. 5-6.
Principal Issues on Appeal
(1) Did the Examiner err in rejecting claims 50 and 52 under
35 U.S.C. § 102(b) as being anticipated because Belke, Jr. fails to disclose a
connection or pin being received in a connection bore of a circuit board,
and/or a narrowing or restriction being formed in the connection bore to
create a holding mechanism for securely holding the connection wire or pin
as recited in independent claims 50 and 52?
(2) Did the Examiner err in rejecting claim 51 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kokubun and
Machida because Kokubun fails to teach or suggest the connection wire or
pin, as recited in claim 51?

1 Separate patentability is not argued for claim 52 (see App. Br. 3-5).
Accordingly, we decide this appeal on the basis of claim 50 and 51.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 4-14) and the Reply Brief (Reply Br. 3-
7) that the Examiner has erred. We agree with Appellants’ contentions as to
claims 50 and 52 (App. Br. 3-5; Reply Br. 2-3) because Belke, Jr. does not
disclose the connection wire or pin, as recited in claims 50 and 52.
We disagree with Appellants’ remaining conclusion regarding claim
51 rejected for obviousness over the combination of Kokubun and Machida.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Ans. 5-6), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 7). We highlight and amplify certain
teachings and suggestions of the reference as follows.
Anticipation Rejection of Claims 50 and 52
We begin our analysis of the anticipation rejection with a construction
of claims 50 and 52 to determine whether or not the connection wire or pin
recited in the claims is a positive recitation required to be met by Belke, Jr.
The determination of whether preamble recitations are
structural limitations or mere statements of purpose or use “can
be resolved only on review of the entirety of the patent to gain
an understanding of what the inventors actually invented and
intended to encompass by the claim.” Corning Glass Works,
868 F.2d [1251] at 1257 [(Fed. Cir. 1989)]. The inquiry
involves examination of the entire patent record to determine
what invention the patentee intended to define and protect.

Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).

In general, the preamble limits a claim if it recites essential structure
or is otherwise “necessary to give life, meaning, and vitality” to the claim,
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Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951)), while the
preamble is not limiting when the claim body defines a structurally complete
invention and the preamble states only a purpose or intended use, Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
In the instant case, the preamble of each of claims 50 and 52 recites a
connection wire or pin being received in a connection bore of a circuit
board, and the body of each of claims 50 and 52 (e.g., the clause at the end
of each claim) recites a narrowing or restriction being formed in the
connection bore to create a holding mechanism for securely holding the
connection wire or pin. Thus, the connection wire or pin of the preamble is
given life and meaning by its relation to the connection bore and holding
mechanism recited at the end of the body of each claim.
The way in which the elements are arranged or combined in the claim
must itself be disclosed, either expressly or inherently, in an anticipatory
reference. “Anticipation requires the presence in a single prior art disclosure
of all elements of a claimed invention arranged as in the claim.” Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (emphasis
added).
In view of the requirement that an anticipatory reference disclose all
of the claimed limitations arranged in the same way as recited in the claim
(discussed supra), we find that Belke, Jr. fails to disclose all of the elements
positively recited in claims 50 and 52, including a connection wire or pin of
an electronic component that is received through a connection bore of a
circuit board and securely held by a holding mechanism created by the
narrowing (claim 50) or restriction (claim 52) of a connection bore.
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Belke, Jr. does not disclose a connection wire or pin (see col. 9, ll. 3-
10), and is silent as to any connection wire or pin passing through the
narrowed/restricted area of aperture 154 (see Fig. 9; col. 7, ll. 12-15) and/or
aperture/hole 212 (see Fig. 12; col. 8, l. 44 to col. 9, l. 11). Belke, Jr. only
discloses a solder slug 36 made of conductive material that is inserted into
aperture 214 (col. 9, ll. 5-7), but is silent as to the slug being connection wire
or pin as recited in claims 50 and 52.
Because we agree with Appellants’ arguments that Belke, Jr., applied
by the Examiner as an anticipatory reference, fails to disclose a connection
or pin being received in a connection bore of a circuit board, and a
narrowing or restriction being formed in the connection bore to create a
holding mechanism for securely holding the connection wire or pin as
recited in claims 50 and 52, we do not sustain the Examiner’s anticipation
rejection of independent claims 50 and 52 based on Belke, Jr.
Obviousness Rejection of Claim 51
Kokubun shows a stepped through hole 6 which allows a connection
wire to pass through to the circuit board (Fig. 1; Title; Abs.). Therefore, we
agree with the Examiner (Ans. 5-7) that Kokubun teaches or suggests
receiving a connection wire in a through hole 6 of a multilayer circuit board
to increase density of the circuit board. Because Kokubun’s stepped through
hole 6 serves to receive a connection wire to the circuit board as recited in
the preamble of claim 51, and the stepped shape serves to securely hold the
connection wire, we do not find Appellants’ arguments (App. Br. 5-6; Reply
Br. 3-4) to be persuasive.
In view of the foregoing, we do not sustain: (1) the Examiner’s § 102
rejection of claims 50 and 52, and we sustain the Examiner’s § 103 rejection
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of claim 51.

CONCLUSIONS
(1) The Examiner erred in rejecting claims 50 and 52 under 35 U.S.C.
§ 102(b) as being anticipated by Belke, Jr. because Belke, Jr. does not
disclose a connection wire or pin, as recited in claims 50 and 52.
(2) The Examiner did not err in rejecting claim 51 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Kokubun and Machida
because Kokubun teaches or suggests receiving a connection wire in a
through hole 6 of a multilayer circuit board to increase density of the circuit
board.

DECISION
(1) The decision of the Examiner rejecting claims 50 and 52 under
35 U.S.C. § 102(b) as being anticipated by Belke, Jr. is reversed.
(2) The decision of the Examiner rejecting claim 51 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kokubun and
Machida is affirmed.
(3) On this record, claims 50 and 52 have not been shown to be
unpatentable.
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).

AFFIRMED-IN-PART

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