Ex Parte Chan

Board of Patent Appeals and Interferences

Feb 27, 2003

09010614 (B.P.A.I. Feb. 27, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH YING-YUEN CHAN
____________
Appeal No. 2002-2118
Application No. 09/010,614
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 5 and
6, which are all of the claims pending in this application.
We AFFIRM-IN-PART.
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Application No. 09/010,614
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BACKGROUND
The appellant's invention relates to a process and apparatus for securing a
temporary lid to a chip substrate to aid in movement of the chip substrate during
automated card assembly operations (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Seto et al. (Seto) 5,507,657 Apr. 16, 1996
Ikesugi et al. (Ikesugi) 5,688,133 Nov. 18, 1997
Claims 1 and 5 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Seto.
Claims 1 and 5 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Ikesugi.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Ikesugi.
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Application No. 09/010,614
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 21, mailed May 20, 2002) for the examiner's complete reasoning in support
of the rejections, and to the brief (Paper No. 20, filed February 25, 2002) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The anticipation rejection based on Seto
We will not sustain the rejection of claims 1 and 5 under 35 U.S.C. § 102(b) as
being anticipated by Seto.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
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Application No. 09/010,614
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anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
Claim 1 reads as follows:
A process for manufacturing a microelectronic package which has at least
two sides, each side having a length, comprising:
frictionally attaching, along the length of at least two sides of the package,
without the use of an adhesive, a removable and temporary clip to the
microelectronic package, the clip having a top surface and at least two sides;
engaging the clip with a pick-and-place tool;
moving the package through a series of manufacturing steps; and
removing the clip.
The appellant argues (brief, p. 7) that Seto does not teach the "frictionally
attaching" step of claim 1. We agree.
Seto discloses an electrical connector 12 for mounting to a mounting surface of
an electrical apparatus, such as a printed circuit board (not shown), through the
engagement of a vacuum-suction nozzle (not shown). As shown in Figure 1, the top of
connector 12 is very irregular in shape and does not present any significant smooth
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Application No. 09/010,614
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1 "Forward" and "rearward" are meant to refer to the direction of arrow "A" (Figure 1) which is the
mounting direction of the cover 14 onto connector 12. "Outward" and "inward" are meant to refer to the
relative dispositions of side walls 40 and 42 laterally of the mounting direction.
surface for engagement by the vacuum-suction nozzle. Consequently, Seto provides a
cover 14 which is slidably mounted onto connector 12 in the direction of arrow "A". The
cover does present a generally planar, smooth surface 16 for engagement by the
vacuum-suction nozzle.
Referring to Figures 1, 3 and 4 of Seto, electrical connector 12 includes a
dielectric housing 18, which includes a bottom surface 20 adapted to be positioned
adjacent the mounting surface of the electrical apparatus, such as on the top surface of
a printed circuit board. Housing 18 also includes a top surface 22 opposite bottom
surface 20 and a pair of side wall means 24 extend between surfaces 20 and 22. The
side wall means include first and second downwardly facing shoulders or surfaces 26
and 28, respectively, which facilitate slidably mounting cover 14 onto connector 12.
Referring to Figures 1 and 8-10 of Seto, cover 14 has a pair of forward and outer
side walls 40 and a pair of rearward and inner side walls 42.1 In other words, as best
seen in Figure 8, side walls 40 are located outward of side walls 42. Side walls 40 of
cover 14 have inwardly directed flanges 40a defining upwardly facing shoulders or
surfaces 40b. Side walls 42 have inwardly directed flanges 42a defining upwardly
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Application No. 09/010,614
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facing shoulders or surfaces 42b. Cover 16 also has forward and rearward transverse
flanges 44 and 46, respectively, which depend from the top wall of the cover that
defines smooth surface 16. The forward transverse flange 44 is engageable with stop
shoulders 48 (Figure 1) of connector housing 18 to define a fully mounted position of
the cover on the connector housing.
In operation, cover 14 is slidably mounted onto connector housing 18 in the
direction of arrow "A" (Figure 1) until the cover reaches a fully mounted position as
shown in Figures 2 and 5-7. Seto teaches (column 3, line 66, to column 4, line 16) that
[t]he cover is mounted on the connector housing with minimal or substantially
zero mounting forces as upwardly facing shoulders or surfaces 40b and 42b of
the cover easily slide beneath downwardly facing shoulders 28 and 26,
respectively, of the connector housing. However, when the cover is mounted on
the housing, the cover can be used to manipulate the connector as upwardly
facing shoulders 40b and 42b of the cover fully engage or abut against the
downwardly facing shoulders 28 and 26, respectively, of the connector. In
essence, these interengageable shoulders on the cover and the housing define
complementary interengageable releasable retention means that retain the cover
on the housing with substantial force in a direction generally normal to smooth
surface 16 of the cover, but that same means allows the cover to be mounted
onto and removed from the connector housing with minimal or substantially zero
forces laterally of that normal direction (i.e. generally parallel to the smooth
surface in the direction of arrow "A").
In our view Seto does not teach the "frictionally attaching" step of claim 1 (i.e.,
frictionally attaching, along the length of at least two sides of the package, without the
use of an adhesive, a removable and temporary clip to the microelectronic package).
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Application No. 09/010,614
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Seto does teach that the cover 14 is slidably mounted onto connector 12 in the direction
of arrow "A" (Figure 1) and that the upwardly facing surfaces 40b and 42b of inwardly
directed flanges 40a and 42a of the cover 14 frictionally engage/contact the downwardly
facing surfaces 26 and 28 of the connector 12 during movement of the combined
connector-cover package by a vacuum-suction nozzle. However, it is our opinion that
such frictionally engagement or contact between the upwardly facing surfaces 40b and
42b of cover 14 and the downwardly facing surfaces 26 and 28 of connector 12 does
not constitute frictionally attaching the cover along the length of at least two sides of the
connector. Accordingly, the "frictionally attaching" step of claim 1 is not readable on
Seto.
For the reasons set forth above, the decision of the examiner to reject claim 1
and claim 5 dependent thereon under 35 U.S.C. § 102(b) is reversed.
The anticipation rejection based on Ikesugi
We sustain the rejection of claims 1 and 5 under 35 U.S.C. § 102(e) as being
anticipated by Ikesugi.
Ikesugi's invention relates generally to electrical connectors, and more
particularly, to a vacuum placement member associated with such connectors which
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Application No. 09/010,614
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provides a support for vacuum attachment to the connectors and which provides
support to the connector walls during the soldering thereof to a circuit board.
As shown in Figures 5 and 6, a connector placement member 1 is attached to
an electrical connector 2 to provide a substantially planar, or flat, surface to the
electrical connector 2 when attached thereto. The electrical connector 2 includes a
rectangular housing 3 formed from an insulative material. The connector housing 3 has
a pair of opposing longitudinal sidewalls 4 which define a slot 10 therebetween which is
intended to receive a mating electric connector therein.
The connector placement member 1 is best shown in Figures 1-4 and includes a
cover plate 8 having a flat top surface 7 which is engaged by a transfer or placement
mechanism in which typically has an internal port communicating with a source of
negative air pressure. Once attached, the connector may be transferred from a supply
source (not shown) to another electronic assembly component, typically a circuit board
100 (Figure 6). The connector placement member 1 remains in place upon the
connector until after the connector is joined to the circuit board.
The connector placement member 1 also includes pairs of resilient engagement
legs 6 joined to the ends of the cover plate 8 at the corners thereof. The legs 6 depend
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Application No. 09/010,614
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from the cover plate 8 to form a general U-shaped structure. The engagement legs 6
may be considered as comprising two distinct sets of legs which engage the connector
2. One set, a first set of first engagement legs 6, may include gripping portions 112 at
their lower ends 114 which may further extend slightly inwardly. Each connector
sidewall 4 has recesses 4c disposed in its outer surface 4a which receive the gripping
portions 112 of the engagement legs 6. The main engagement legs 6 are formed near
the corners of the cover plate 8 with a spacing between opposing aligned legs which is
slightly less than the width W (Figure 6) of the connector housing 2 so as to create a
slight inward bias to resiliently engage the connector sidewalls 4 in a manner in which
the sidewalls 4 are sandwiched therebetween.
In order to resist any deformation which may be induced in the connector
sidewalls 4 by virtue of the inwardly directed forces exerted thereupon by the main
engagement legs 6, Ikesugi includes a second set of auxiliary engagement legs 9 which
depend downwardly from the cover plate 8 and primarily provide support for the
connector sidewalls 4. Each of the auxiliary support legs 9 is preferably aligned with
and spaced part from a corresponding main engagement leg 6 so as to create an
intervening space 12 therebetween which is generally aligned with the longitudinal axes
of each connector sidewall 4. These spaces, 12 as seen in Figure 6, receive and
support the connector sidewalls 4 therein from the interior along their inner surfaces 4b.
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Application No. 09/010,614
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The auxiliary legs 9 may be formed in a number of manners. It may be formed
by bending a selected extension 9 which is segregated from and punched out of the
main engagement leg 6 (Figure 7). When formed, the lateral distance between the
outer surfaces 9b of the opposite auxiliary legs 9 is equal to the lateral distance U
(Figure 6) between the inner surfaces 4b of the connector sidewalls 4. In order to
facilitate the insertion of the connector sidewalls 4 into the intervening space 12, each
auxiliary leg 9 may be equipped with an inwardly-bent end 9a which reduces the
likelihood of snagging the placement cover auxiliary support legs 9 on the inner
surfaces 4b of the connector sidewalls 4.
Ikesugi teaches (column 5, line 65, to column 6, line 20) that
[i]n use, the placement cover 1 is attached to an electric connector 2 by
pushing it against the top of the electric connector 2 until the main engagement
legs 6 ride down the connector sidewall outer surface 4a until their gripping
portions 112 effectively catch in the sidewall recesses 4c. Simultaneously, the
auxiliary engagement legs 9 ride down along the connector sidewall surface 4b
until the sidewall 4 is effectively sandwiched therebetween. The cover plate 8
thereupon lies upon the connector insertion slot 10 of the connector 2. Inasmuch
as the auxiliary support legs 9 extend along the interior 4b of the connector
sidewalls 4, each such sidewall 4 is thereby supported by the engagement legs 9
against the forces applied by the main engagement legs 6 of the collector
placement cover 1.
When carrying the electric connector 2 to a printed circuit board, the
placement member 1 is picked up applying a negative pressure to the flat top
surface 7 of the placement cover 1, and then the placement cover-connector
assembly is transferred to the printed circuit board 100. Then, the
connector-board assembly are passed through a reflow vessel, in which solder
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Application No. 09/010,614
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applied to selected portions 102 of the circuit board 100 is melted to solder the
solder tail portions 11a of the connector terminals 11 to the circuit board 100.
The appellant argues (brief, pp. 9-10) that claims 1 and 5 are not anticipated by
Ikesugi because (1) Ikesugi does not teach the "frictionally attaching" step of claim 1;
and (2) the present invention relies exclusively on frictional attachment. We find this
argument unpersuasive for the following two reasons.
First, the "frictionally attaching" step of claim 1 is readable on Ikesugi. In that
regard, Ikesugi's connector placement member 1 is removable and temporary attached
to the electrical connector 2. When so attached (see Figure 6 of Ikesugi), the resilient
engagement legs 6 frictionally engage along a length of at least two sides of the
electrical connector 2 and the auxiliary engagement legs 9 frictionally engage along a
length of at least two sides of the electrical connector 2 all without the use of an
adhesive. In addition, the gripping portions 112 of the first engagement legs 6
frictionally engage recesses 4c in the sidewalls 4. The frictionally interengagement of
the resilient engagement legs 6 and the auxiliary engagement legs 9 with the connector
sidewalls 4 (see Figure 6 of Ikesugi) clearly is the mechanism by which Ikesugi's
connector placement member 1 is removable and temporary attached to the electrical
connector 2 and thus the "frictionally attaching" step of claim 1 is readable on Ikesugi.
Appeal No. 2002-2118
Application No. 09/010,614
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Second, while the present invention relies exclusively on frictional attachment,
the claims on appeal are not so limited. It is well established that features not claimed
cannot be relied on to establish patentability. See In re Self, 671 F.2d 1344, 1348, 213
USPQ 1, 7 (CCPA 1982). In any event, it is our view that Ikesugi's connector
placement member 1 is only frictionally attached to the electrical connector 2 as set
forth in the preceding paragraph.
For the reasons set forth above, the decision of the examiner to reject claim 1
and claim 5 dependent thereon under 35 U.S.C. § 102(e) is affirmed.
The obviousness rejection
We will not sustain the rejection of claim 6 under 35 U.S.C. § 103 as being
unpatentable over Ikesugi.
Dependent claim 6 adds to parent claim 1 the further limitation that "the clip is
removed by inserting a tool into at least one hole located on the top surface of the clip
and prying the clip free from the microelectronic package."
In the rejection of claim 6, the examiner ascertained (answer, p. 4) that Ikesugi
did not teach this limitation. The examiner then concluded that it would have been
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Application No. 09/010,614
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obvious to one of ordinary skill in the art, at the time of the invention, to have removed
Ikesugi's connector placement member 1 by inserting an associated tool into the
intervening space 12 and prying the connector placement member 1 from the electrical
connector 2 as such would only require a simple tool in order to remove the connector
placement member 1 from the electrical connector 2 effectively.
The appellant argues (brief, pp. 10-11) that claim 6 is patentable over Ikesugi
since the examiner has not cited a reference that teaches the claimed step. We agree.
Evidence of a suggestion, teaching, or motivation to modify a reference may flow
from the prior art references themselves, the knowledge of one of ordinary skill in the
art, or, in some cases, from the nature of the problem to be solved, see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,
1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996),
although "the suggestion more often comes from the teachings of the pertinent
references," In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). The range of sources available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and particular. See, e.g., C.R.
Bard Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir.
Appeal No. 2002-2118
Application No. 09/010,614
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2 The examiner's statement in the last paragraph on page 4 of the answer that claim 6 has been
rejected over Ikesugi in view of Official notice is incorrect. The rejection as set forth at the top of page 4 of
the answer relies solely on Ikesugi and does not take any Official notice.
1998), cert. denied, 119 S. Ct. 1804 (1999). A broad conclusory statement regarding
the obviousness of modifying a reference, standing alone, is not "evidence." Thus,
when an examiner relies on general knowledge to negate patentability, that knowledge
must be articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45,
61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). When obviousness is based on a single
prior art reference, there must be a showing of a suggestion or motivation to modify the
teachings of that reference to arrive at the claimed subject matter. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
Since there is no evidence in the applied prior art2 suggesting that it would have
been obvious at the time the invention was made to a person of ordinary skill in the art
to have modified Ikesugi to arrive at the subject matter of claim 6, the decision of the
examiner to reject claim 6 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 5 under
35 U.S.C. § 102(b) is reversed; the decision of the examiner to reject claims 1 and 5
Appeal No. 2002-2118
Application No. 09/010,614
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under 35 U.S.C. § 102(e) is affirmed; and the decision of the examiner to reject claim 6
under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-2118
Application No. 09/010,614
Page 16
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