Ex Parte Cromwell et al

Board of Patent Appeals and Interferences

May 21, 2008

10447542 (B.P.A.I. May. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN D. CROMWELL,
XIANG DAI, and HAMID R. NIKZAD
____________

Appeal 2008-0740
Application 10/447,542
Technology Center 2800
____________

Decided: May 21, 2008
____________

Before THOMAS A. WALTZ, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-5, 7, 8, 10-21, 38-40, and 42-48. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
The invention relates to components of hardware attach assemblies for
securing Application Specific Integrated Circuits (ASIC) to a circuit board.
Appellants’ invention is to coat at least one component of such assemblies
with a coating to protect that component from corrosion (Spec. 2, ¶ [0008]).
Claims 1 and 16 are illustrative:
1. A load plate for attaching an Application Specific Integrated
Circuit (ASIC) to a circuit board in an ASIC assembly
comprising:
a load plate sized and shaped to apply pressure to an
ASIC in an ASIC assembly; and
a protective coating on said load plate to protect said load
plate from corrosion.

16. A component of an attach hardware assembly for securing
an Application Specific Integrated Circuit (ASIC) to a circuit
board, said component which is configured to secure an ASIC
to a circuit board as part of an hardware assembly comprising a
protective coating on said component to protect said component
from corrosion.

The Examiner relies upon the following prior art references in
the rejections of the appealed claims:
Frankeny 5,770,891 Jun. 23, 1998
Choudhury 6,058,014 May 2, 2000
Lutkus 6,224,311 B1 May 1, 2001
Rackham US 2003/0096133 A1 May 22, 2003

Ohashi (as translated) JP 2-304209 Dec. 18, 1990
Hideaki1 (as translated) JP 406069391A Mar. 11, 1994

1 JP ‘391 is referred to as “Hideaki” consistent with the Examiner’s Answer
and Appeal Brief.
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The Examiner rejected claims 1, 3-5, 7, 8, 10-14, 16-21, 38-40, and
42-48 under 35 U.S.C. § 103(a) as being unpatentable over Frankeny in view
of Hideaki, Lutkus, Rackham, and Ohashi. To reject claims 2 and 15, the
Examiner added Choudhury.
Appellants separately argue independent claim 1 from the remaining
independent claims 7, 16, 38, and 46, which are argued as a group. Thus, we
will consider claims 1 and 3-5 as one group and claims 7, 8, 10-14, 16-21,
38-40, and 42-48 as a separate group within the first ground of rejection.
Appellants do not argue with any reasonable specificity any of the individual
dependent claims within each group (App. Br. 6-12; Reply Br. 2-6)2, except
for dependent claims 10, 17, and 42 (App. Br. 11)3 which we will
specifically address within our discussion. With respect to the rejection of
claims 2 and 15, Appellants rely on the same arguments advanced with
respect to the other rejection. Therefore, we select independent claim 1 and
independent claim 16 to decide the issues on appeal.

ISSUES ON APPEAL
The issues on appeal arising from the contentions of Appellants and
the Examiner are whether the Appellants have shown that the Examiner
reversibly erred in rejecting the claims because:
(a) Frankeny does not disclose a load plate; and

2 See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”).
3 Each of dependent claims 10, 17, 42, and 47 require a “load plate” as does
independent claim 1. Appellants inadvertently did not include claim 47
(App. Br. 11).
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(b) there is no apparent reason in the prior art to combine the
references as proposed by the Examiner.

FINDINGS OF FACT
1. Frankeny describes components of an attach hardware assembly
including an arch 24 for attaching an ASIC to a circuit board in an
ASIC assembly (Fig. 7). Frankeny describes that compressive force is
applied by a screw 26 which goes through the arch (e.g., col. 6, ll. 21-
27). The arch is described as a “compression arch” (Frankeny, claim
1).
2. Appellants’ Background section of the Specification describes that
it was known to secure a load plate, “typically made of steel,”
“typically with a screw” to clamp the ASIC to the circuit board (Spec.
1-2; ¶ [0004]). Fig. 1 is described by Appellants as “a typical ASIC
assembly” (Spec. 3, ¶ [0016]). The environmental conditions to
which the hardware is exposed “typically tends to cause corrosion”
(Spec. 2, Background section, ¶ [0005].
3. Appellants describe that their invention is to provide a coating,
such as a fluoropolymer coating (which may be XYLAN ®), to
protect the steel hardware attach elements against corrosion (see, e.g.,
p. 3, ¶ [0015]; p. 4-5, ¶ [0023]-[0024]).
4. Hideaki describes a problem of corrosion and discoloration which
occurs on the metal screw stud (e.g., a steel stud) used to mount a
heat-radiating fin on the base plate of a semiconductor package. To
solve this problem, a protective coating is used; specifically, a coating
of nickel plating (see, p. 4, ¶ [0011]-[0014]).
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5. Lutkus describes fastener inserts (e.g., of stainless steel) coated
with a fluoropolymer composition (such as XYLAN®) for protection
against corrosion (col. 3, ll. 14-24). The coating will be useful in any
application in which fasteners are used and corrosion is a potential
problem (col. 1, ll. 4-27).
6. Rackham describes that XYLAN® is used to retard corrosion on
bolts, piston rods, and other metal parts of internal combustion
engines (col. 1, ¶ [0008]).
7. Ohashi describes coating tightening bolts and nuts with TEFLON®
(a fluoropolymer) or nylon resin, to prevent corrosion (see, e.g., p. 1
claim; p. 3, first and second paragraphs).
8. Appellants base no argument upon objective evidence of
nonobviousness, such as unexpected results.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) secondary considerations, if
any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR,
127 S. Ct. at 1734.
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
KSR states:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSR, 127 S. Ct. at 1740-41.
Moreover, one of the ways in which a claim’s subject matter can be
proven obvious is by establishing that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
claims. KSR, 127 S. Ct. at 1742.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enter., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007).

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OPINION
We agree with the Examiner’s findings of facts and legal conclusions
of obviousness as set out in the Answer. We add the following primarily for
emphasis.
Claims 1 and 3-5
We chose independent claim 1 to represent this grouping of claims.
Frankeny describes a compression arch 24 and loading screw for
attaching an ASIC to a circuit board in an ASIC assembly (FF 1). Indeed,
one of ordinary skill in the art would readily appreciate that Appellants
admit that these elements are known in the prior art (FF 2). Each of Hideaki,
Lutkus, Rackham, and Ohashi describes coating various components (e.g.,
bolts, studs, etc.) with a protective coating to prevent corrosion (FF 4-7).
We are in complete agreement with the Examiner that a person having
ordinary skill in the art would have found it obvious to coat the compression
arch (i.e., the load plate) and/or other components, such as the load screw, of
Frankeny with a protective coating as claimed in order to prevent or retard
corrosion, and thus arrive at Appellants' claimed invention (Ans. 2-12).
Appellants contend that (1) the arch 24 of Frankeny is not a load plate
as claimed in claim 1, and (2) that there is no apparent reason in the prior art
to combine Frankeny with the teachings of Hideaki, Lutkus, Rackham, and
Ohashi as proposed by the Examiner (App. Br. 4; Reply Br. 2-5). In
particular, Appellants contend that arch 24 is not a load plate because the
compressive force is applied by the screw and not the arch (Reply Br. 2).
Appellants further contend that the prior art fails to teach or suggest the
claimed protective coating on a load plate, or on any component of an attach
hardware assembly of an ASIC assembly. According to Appellants, “While
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the prior art recognizes such coatings in many fields, there is no
suggestion…that a protective, anti-corrosion coating be or should [be] used
on the various components of an attach hardware assembly.” (App. Br. 11;
Reply Br. 5). We do not find these arguments persuasive of error in the
Examiner’s rejection for the following reasons.
First, we note that Frankeny describes that the arch 24 is attached to
the backup plate 21 at the bottom of the assembly, and the screw 26 which
applies a compressive force to the underlying elements is screwed in through
the arch (see Fig. 7). Note the similarity to Appellants’ “typical Fig. 1”
wherein a load screw 102 is connected via the load plate 101 to the bolster
plate 109; indeed, Appellants admit that such a load plate was known in the
prior art (FF 2). 4 Furthermore, note claim 1 of Frankeny refers to the arch
as “a compression arch” with “compression adjusting means in the
compression arch.” The compression arch is “sized and shaped” to apply at
least some pressure to an ASIC, which is all that is required by claim 1.
Thus, we determine that a load plate as claimed does read on the
compression arch of Frankeny.
Second, the four secondary references exemplify, as even Appellants
concede, that the use of protective coatings on hardware components was
widespread (FF 4-7; App. Br. 11). We determine that one of ordinary skill

4 Having acknowledged that certain claimed elements are in the prior art,
Appellants cannot now defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest these elements. In re Reuning,
No. 2007-1535, slip op. at 6 (Fed. Cir. April 25, 2008); see also Constant
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A
statement in a patent that something is in the prior art is binding on the
applicant and patentee for determinations of anticipation and obviousness.”)
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would have realized that one way to ensure the compression arch (load
plate) or other hardware components of Frankeny are protected from
corrosion would be to apply a protective coating known for that purpose
thereto.
The Supreme Court noted in KSR that although the teaching,
suggestion, motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S. Ct. at 1741. The knowledge that coating hardware components
in various fields, including the semiconductor package field, was a desirable
way to protect such components from corrosion would have been within the
ordinary skill in the art, as evidenced by Hideaki, Lutkus, Rackham, and
Ohashi. Furthermore, one of ordinary skill in the art is also a person of
ordinary creativity, not an automaton. KSR, 127 S. Ct. at 1742.
Therefore, it would have been prima facie obvious at the time the
invention was made to have used the protective coating of the prior art on
either the load plate or the load screw or any other of the hardware
components of Frankeny, or the admitted prior art (i.e., the “typical” ASIC
assembly of Appellants’ Fig. 1). This would predictably improve the
corrosion resistance of these metal hardware components, a result that one of
ordinary skill in the art would readily appreciate was desirable. See KSR,
127 S. Ct. at 1739-40 (The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
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The “improvement” herein appears to be no more than the predictable
use of a known coating for its known purpose, for the predictable result of
improved protection against corrosion for metal hardware parts.
We also determine that it would not have involved any more than
common sense to one of ordinary skill in the art to have used the known
coatings as exemplified in the secondary references on the metal hardware
components of Frankeny, including the compression arch (i.e., load plate), to
prevent the known problem of corrosion of metal parts. Furthermore,
Appellants have presented no evidence that the inclusion of a corrosion-
preventing coating in the prior art attach hardware assembly was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” See, e.g., Leapfrog Enter., Inc., 485 F.3d
at 1162 (citing KSR, 127 S.Ct. at 1741).
Thus, we sustain the Examiner’s § 103 rejection of claims 1, and 3-5
based on Frankeny with Hideaki, Lutkus, Rackham, and Ohashi.
Claims 7, 8, 10-14, 16-21, 38-40, and 42-48
We chose claim 16 to represent this grouping of claims.
It is well established that “[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. v.
Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). However, the law of
anticipation does not require that the reference ‘teach’ what the subject
patent teaches. Assuming that a reference is properly ‘prior art,’ it is only
necessary that the claims under attack, as construed, ‘read on’ something
disclosed in the reference, i.e., all limitations of the claim are found in the
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reference, or ‘fully met’ by it. See Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772 (Fed. Cir. 1983).
It is axiomatic that claims are given their broadest reasonable
interpretation in light of the specification as they would be interpreted by
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Claim 16 is directed to “a component of an attach hardware assembly”
which is “configured to secure an ASIC to a circuit board.” We interpret
this claim as being drawn to the component per se, capable of being used as
a component of an attach assembly to secure an ASIC to a circuit board5.
With this claim interpretation in mind, we note that at least the screw
stud 5 of Hideaki, which was used in a semiconductor package (see FF 4),
appears to be sized and shaped such that it reasonably appears capable of
being used as a component of the hardware to secure an ASIC to a circuit
board.
We, therefore, conclude that the component of claim 16 reads on the
prior art of Hideaki. Thus, the claimed invention lacks novelty. A lack of
novelty is the ultimate or epitome of obviousness. See In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982). For this reason alone, we affirm the
Examiner’s legal conclusion of obviousness.
Even assuming, arguendo, that the component recited in claim 16 is
part of a combination of elements, the analysis set forth above with respect
to claim 1 applies equally to these claims. Indeed, dependent claims 10, 17,

5 This interpretation of claim 16 is also supported by the presence of
independent claim 7 which recites the combination of a circuit board, an
ASIC, and an attach hardware assembly.
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42, and 47 each recite that the coated component of the respective
independent claim from which each claim depends (i.e., claims 7, 16, 38 and
46) is a “load plate”, as is required by claim 1. Thus, these claims are prima
facie obvious for the same reasons we set forth above with respect to claim
1.
Again, we have determined that it would not have involved any more
than ordinary skill, or common sense, to have used the known coatings as
exemplified in the secondary references on any or all of the metal hardware
components of Frankeny, or the admitted prior art of “typical” Fig. 1, to
prevent the known problem of corrosion of metal parts.
We have considered Appellants’ other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
Thus, for the foregoing reasons, and those stated in the Answer, we
sustain the Examiner’s § 103 rejection of claims 7-8, 10-14, 16-21, 38-40,
and 42-48 based on Frankeny with Hideaki, Lutkus, Rackham, and Ohashi.
Dependent Claims 2 and 15
Appellants do not separately argue the § 103 rejection of dependent
claims 2 and 15 over Frankeny with Hideaki, Lutkus, Rackham, and Ohashi,
further in view of Choudhury. Rather, Appellants contend that the rejection
is improper for the same reasons that the combination of Frankeny with
Hideaki, Lutkus, Rackham, and Ohashi was improper (App. Br. 12).
However, we are unpersuaded by Appellants’ arguments regarding that
combination for the reasons above.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 2
and 15 based on the combined teachings of Frankeny with Hideaki, Lutkus,
Rackham, and Ohashi, further in view of Choudhury.
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CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of the applied references, with Appellants’
countervailing arguments for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1-5, 7-8, 10-21, 38-40, and
42-48 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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