Ex Parte Dishongh et al

Board of Patent Appeals and Interferences

Mar 3, 2004

09698898 (B.P.A.I. Mar. 3, 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for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TERRANCE J. DISHONGH, PRATEEK J. DUJARI,
BIN LIAN and DAMION T. SEARLS
____________
Appeal No. 2004-0620
Application No. 09/698,898
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE, 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 to 22,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2004-0620
Application No. 09/698,898
Page 2
BACKGROUND
The appellants' invention relates to apparatus and methods for mounting
electronic compounds to a substrate. ln particular, the invention relates to a lead
designed to secure jacks or sockets, which receive plug-in cables, to a printed circuit
board (specification, p. 1). A copy of the claims under appeal is set forth in the
appendix to the appellants' brief.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is:
Farnworth et al. 5,940,277 Aug. 17, 1999
(Farnworth)
Lin et al. 6,056,558 May 2, 2000
(Lin '558)
Lin et al. 6,217,348 Apr. 17, 2001
(Lin '348)
The appellants' admission of prior art (specification, pages 1-3; Figures 9-11) relating to
a surface mounted RJ45 connector assembly (Admitted Prior Art)
Claims 1 to 3, 5 to 9 and 11 to 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Farnworth in view of Lin '348.
Claims 4 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Farnworth in view of Lin '348 and the Admitted Prior Art.
Appeal No. 2004-0620
Application No. 09/698,898
Page 3
Claims 14 to 22 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Farnworth in view of Lin '558.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(Paper No. 14, mailed June 4, 2003) for the examiner's complete reasoning in support
of the rejections, and to the brief (Paper No. 13, filed April 7, 2003) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art, and to the respective
positions articulated by the appellants and the examiner. Upon evaluation of all the
evidence before us, it is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness with respect to the claims
under appeal. Accordingly, we will not sustain the examiner's rejection of claims 1 to 22
under 35 U.S.C. § 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
Appeal No. 2004-0620
Application No. 09/698,898
Page 4
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). When it is necessary
to select elements of various teachings in order to form the claimed invention, we
ascertain whether there is any suggestion or motivation in the prior art to make the
selection made by the appellants. Obviousness cannot be established by combining
the teachings of the prior art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. It is impermissible, however,
simply to engage in a hindsight reconstruction of the claimed invention, using the
appellants' structure as a template and selecting elements from references to fill the
gaps. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). The
references themselves must provide some teaching whereby the appellants'
combination would have been obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991) (citations omitted).
Appeal No. 2004-0620
Application No. 09/698,898
Page 5
1 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
Claims 1 to 3, 5 to 9 and 11 to 13
In the rejection of claims 1 to 3, 5 to 9 and 11 to 13 under 35 U.S.C. § 103 as
being unpatentable over Farnworth in view of Lin '348 (answer, pp. 4-5), the examiner
(1) set forth that Farnworth discloses a lead (36, Fig. 5b) for attaching an electronic
device (10) to a substrate (40), comprising a first lead portion (38) adapted to abut a
side of the device, and a second lead portion (36) having a first surface adapted to
attach to the substrate and having a second surface opposing the first surface; (2) set
forth that Lin '348 discloses a lead comprising a second lead portion (53, Figure 3)
including an arcuate structure extending from the second lead portion; (3) ascertained1
that Farnworth does not disclose the second lead portion including an arcuate structure
extending from the second lead portion; and (4) concluded that it would have been
obvious to one skilled in the art to modify the second lead portion of Farnworth to
include an arcuate structure extending from the second lead portion to accommodate a
solder ball to improve the electrical connection between the lead and the electrical
contact on the substrate as taught by Lin '348 (column 2, lines 40-45).
The appellants argue (brief, pp. 7-10) that the applied prior art does not suggest
the claimed subject matter. We agree. In that regard, while Lin '348 does teach an
Appeal No. 2004-0620
Application No. 09/698,898
Page 6
electrical connector assembly having a contact 5 including an arcuate receiving section
53, it is our opinion that Lin '348 would not have taught or suggested modifying the
terminal contact end 36 of intermediate conductive element 35 of Farnworth to have an
arcuate receiving section. As set forth above, teachings of references can be combined
only if there is some motivation, suggestion or incentive to do so. Here, the applied
prior art contains none. That is, there is no motivation or suggestion in the applied prior
art for one skilled in the art at the time the invention was made to have modified
Farnworth's terminal contact end 36 to include an arcuate receiving section. The
disparate nature of the connectors of Farnworth and Lin '348 provide no suggestion for
a person of ordinary skill in the art at the time the invention was made to have modified
Farnworth to arrive at the claimed subject matter. Lin '348 provides the arcuate
receiving section to maintain a solder ball in position. However, there is no evidence
that Farnworth utilized a solder ball to connect the terminal contact end 36 to the
corresponding terminal on the substrate. As such, there is no motivation, teaching or
suggestion in the applied prior art to have modified Farnworth to arrive at the claimed
subject matter.
For the reasons set forth above, the decision of the examiner to reject claims 1
to 3, 5 to 9 and 11 to 13 under 35 U.S.C. § 103 is reversed.
Appeal No. 2004-0620
Application No. 09/698,898
Page 7
Claims 4 and 10
We have also reviewed the Admitted Prior Art additionally applied in the rejection
of dependent claims 4 and 10 but find nothing therein which makes up for the
deficiencies of Farnworth and Lin '348 discussed above. Accordingly, the decision of
the examiner to reject claims 4 and 10 under 35 U.S.C. § 103 is also reversed.
Claims 14 to 22
In the rejection of claims 14 to 22 under 35 U.S.C. § 103 as being unpatentable
over Farnworth in view of Lin '558 (answer, pp. 6-7), the examiner (1) set forth that
Farnworth discloses an electronic assembly comprising an inherent method including
providing a lead having a first portion and a second portion, the first portion being
adapted to abut a side of a device, and the second portion having a first surface and an
opposing second surface; (2) set forth that Lin '558 discloses a lead comprising an
arcuate structure extending from the second surface of the lead (Fig. 5); (3) ascertained
that Farnworth does not disclose forming an arcuate structure extending from the
second lead surface; and (4) concluded that it would have been obvious to one skilled
in the art to modify the second lead portion of Farnworth to include an arcuate structure
extending from the second lead portion to accommodate a solder ball to improve the
electrical connection between the lead and the electrical contact on the substrate as
taught by Lin '558 (column 2, lines 19-24 and lines 36-38).
Appeal No. 2004-0620
Application No. 09/698,898
Page 8
The appellants argue (brief, pp. 11-14) that the applied prior art does not suggest
the claimed subject matter. We agree. In that regard, while Lin '558 does teach an
electrical connector having a terminal 5' including an arcuate plate 53', it is our opinion
that Lin '558 would not have taught or suggested modifying the terminal contact end 36
of intermediate conductive element 35 of Farnworth to have an arcuate plate. There is
no motivation or suggestion in the applied prior art for one skilled in the art at the time
the invention was made to have modified Farnworth's terminal contact end 36 to include
an arcuate plate. The disparate nature of the connectors of Farnworth and Lin '558
provide no suggestion for a person of ordinary skill in the art at the time the invention
was made to have modified Farnworth to arrive at the claimed subject matter. Lin '558
provides the arcuate plate to maintain a solder ball in position. However, there is no
evidence that Farnworth utilized a solder ball to connect the terminal contact end 36 to
the corresponding terminal on the substrate. As such, there is no motivation, teaching
or suggestion in the applied prior art to have modified Farnworth to arrive at the claimed
subject matter.
For the reasons set forth above, the decision of the examiner to reject claims 14
to 22 under 35 U.S.C. § 103 is reversed.
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Application No. 09/698,898
Page 9
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 22 under
35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2004-0620
Application No. 09/698,898
Page 10
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