Ex Parte Crane, Jr. et al

Board of Patent Appeals and Interferences

Jul 29, 2004

09705710 (B.P.A.I. Jul. 29, 2004)

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and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STANFORD W. CRANE, JR., DANIEL LARCOMB
and LAKSHMINARASIMHA KRISHNAPURA
____________
Appeal No. 2004-1252
Application No. 09/705,710
____________
ON BRIEF
____________
Before COHEN, STAAB and MCQUADE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Stanford W. Crane, Jr. et al. appeal from the final
rejection of claims 30 through 57, all of the claims pending in
the application.
THE INVENTION
The invention relates to “an apparatus . . . for inserting
conductive leads into side walls of a substrate that holds a
semiconductor die” (specification, page 2). Representative claim
30 reads as follows:
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30. An apparatus for inserting conductive leads into a
semiconductor die package housing, the housing having a plurality
of side walls defining an exterior surface of said housing, each
of the side walls having a plurality of lead passages formed
therethrough, the apparatus comprising:
a lead pusher for inserting conductive leads into lead
passages on a side of the housing, said lead pusher including a
groove for holding a conductive lead during insertion.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Ragard et al. (Ragard) 3,783,488 Jan. 8, 1974
Kirsch et al. (Kirsch) 4,187,051 Feb. 5, 1980
Tamano et al. (Tamano) 4,672,735 Jun. 16, 1987
Holcomb 4,862,578 Sep. 5, 1989
THE REJECTIONS
Claims 30 through 42, 44, 47, 48 and 51 through 55 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Ragard,
and in the alternative under 35 U.S.C. § 103(a) as being
unpatentable over Ragard.
Claims 43, 45 and 46 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ragard in view of Tamano.
Claims 45, 46 and 56 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ragard in view of Kirsch.
Claims 49 through 51 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ragard in view of Tamano and Holcomb.
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Claims 49, 50 and 57 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ragard in view of in view of Kirsch
and Holcomb.
Attention is directed to the main and reply briefs (Paper
Nos. 14 and 16) and to the answer (Paper No. 15) for the
respective positions of the appellants and the examiner regarding
the merits of these rejections.
DISCUSSION
Ragard, the examiner’s primary reference, discloses “[a]n
apparatus for severing electronic components from a film stip
upon which they are mounted; for bending the leads of the
component; and for inserting the components into a circuit board”
(Abstract). More specifically, the reference teaches that
[t]he apparatus of the present invention is
adapted in sequence to feed insertion film 2; sever
leads 5a, 5b, 5c and 5d of successively present
components 4 in order to separate a presented component
from film 2a and 2b; deform the free end portions of
the severed leads to provide generally L-shaped leads;
and insert the deformed leads into preformed apertures
6a, 6b, 6c and 6d provided in a circuit board,
designated at 6. After insertion of the deformed
leads, the free ends thereof, which project below
circuit board 6, may be clinched to retain them in
inserted position by any suitable clinching mechanism
7, which includes clinching devices 7a and 7b, as
indicated in phantom in FIG. 9d.
Circuit board 6 may be adjustably positioned below
the insertion apparatus by any conventional supporting
apparatus, not shown, which is adapted to be driven in
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X,Y direction by electric motors M1M2, shown in FIG. 10
[column 2, lines 19 through 37].
To perform the lead severing, forming and inserting
functions, the Ragard apparatus includes an insertion head 100
having a pair of lead severing, forming and driving subassemblies
103, 103'. As shown in Figure 7, each subassembly comprises a
lead driving member 145, 145' having at its lower end an
integrally formed driving tool 146, 146', a lead severing and
forming member 147, 147' having at its lower end an integrally
formed severing and forming tool 149, 149', and a spacer member
150, 150'. The driving tools 146, 146' contain C-shaped slots
181, 181' for receiving the body portion 4 of an electrical
component and the severing and forming tools 149, 149' contain
slots 186, 186', 187, 187' for receiving the leads 5 of the
component. Figures 9A-9D depict the manner in which the
foregoing parts of the insertion head 100 operate to sever and
form the leads of an electrical component and to insert them into
a circuit board 6.
As indicated above, independent claim 30 recites an
apparatus for inserting conductive leads into a semiconductor die
package housing having a plurality of side walls defining an
exterior surface of the housing wherein the apparatus comprises a
lead pusher for inserting conductive leads into lead passages on
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a side of the semiconductor die package housing. Independent
claim 43 recites an apparatus for inserting conductive leads into
a substrate for holding a semiconductor die wherein the apparatus
comprises means for simultaneously inserting L-shaped conductive
leads into lead passages in at least two vertically spaced rows
on one of the side walls of the substrate. Independent claim 44
recites an apparatus for inserting conductive leads into a
semiconductor die carrier housing wherein the apparatus comprises
a lead pusher for receiving a supply of conductive leads and
inserting them into lead passages in the semiconductor die
carrier housing.
Each of the rejections on appeal rests on the examiner’s
determination that Ragard teaches, or would have suggested, an
apparatus responsive to these lead pusher and lead inserting
means limitations. Appreciating that these limitations refer to
the housing or substrate into which the leads are to be inserted,
the examiner acknowledges that Ragard’s circuit board 6 does not
constitute a semiconductor die package housing as set forth in
claim 30, a substrate for holding a semiconductor die as set
forth in claim 43 or a semiconductor die carrier housing as set
forth in claim 44. The examiner correctly observes, however,
that the claim language pertaining to the housing or substrate is
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functional in nature and does not recite the housing or substrate
as an element of the claimed apparatus. The examiner deals with
this functional language by finding that Ragard’s insertion head
100 is inherently capable of use with the specified substrate or
housing and hence meets the lead pusher and lead inserting means
limitations in claims 30, 43 and 44. In the alternative, the
examiner concludes that it would have been obvious to use
Ragard’s insertion head 100 in conjunction with the specified
substrate or housing. In either case, the examiner seems to rely
on the principle that while there is nothing intrinsically wrong
with the use in a claim of functional language to define
something by what it does rather than by what it is, the mere
recitation of a newly discovered function, inherently possessed
by things in the prior art, does not cause a claim drawn to those
things to distinguish over the prior art (In re Swinehart, 439
F.2d 210, 212-213, 169 USPQ 226, 228-29 (CCPA 1971)).
Even if Ragard is assumed to be analogous art relative to
the claimed invention (the appellants urge that it is not), the
examiner’s determination that Ragard’s insertion head 100 is
inherently capable of inserting leads into the sort of housing or
substrate defined in claims 30, 43 and 44 finds no reasonable
support in the fair teachings of the reference. The examiner has
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failed to advance any evidence or cogent line of reasoning that
Ragard’s circuit board 6, for which the insertion head 100 is
designed for use, is structurally similar to such a housing or
substrate in any relevant aspect. Indeed, and as persuasively
alluded to by the appellants (see, for example, page 10 in the
main brief), the specified housing or substrate, at least to the
extent described in the appellant’s specification, corresponds
much more closely to Ragard’s electrical component 4, 5, than it
does to the circuit board 6. It is not at all apparent how
Ragard’s insertion head 100 might be inherently capable of
inserting leads the housing or substrate of a like component.
Thus, Ragard does not provide a sufficient factual basis for
the examiner’s determination that the insertion apparatus 100
disclosed by Ragard meets, or would have suggested, the lead
pusher or lead inserting means limitations recited in claims 30,
43 and 44. Furthermore, this evidentiary deficiency in Ragard
find no cure in the examiner’s application of Tamano, Kirsch
and/or Holcomb.
Accordingly, we shall not sustain:
a) the standing 35 U.S.C. § 102(b) rejection of claims 30
through 42, 44, 47, 48 and 51 through 55 as being anticipated by
Ragard;
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b) the standing 35 U.S.C. § 103(a) rejection of claims 30
through 42, 44, 47, 48 and 51 through 55 as being unpatentable
over Ragard;
c) the standing 35 U.S.C. § 103(a) rejection of claims 43,
45 and 46 as being unpatentable over Ragard in view of Tamano;
d) the standing 35 U.S.C. § 103(a) rejection of claims 45,
46 and 56 as being unpatentable over Ragard in view of Kirsch;
e) the standing 35 U.S.C. § 103(a) rejection of claims 49
through 51 as being unpatentable over Ragard in view of Tamano
and Holcomb; or
d) the standing 35 U.S.C. § 103(a) rejection of claims 49,
50 and 57 as being unpatentable over Ragard in view of in view of
Kirsch and Holcomb.
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SUMMARY
The decision of the examiner to reject claims 30 through 57
is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/gjh
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