Ex parte Gupta

Board of Patent Appeals and Interferences

May 18, 2000

08474950 (B.P.A.I. May. 18, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) 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not binding precedent of the Board.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 GYANENDRA GUPTA
_____________
Appeal No. 1997-0846
Application No. 08/474,950
______________
ON BRIEF
_______________
Before, JOHN D. SMITH, PAK and WALTZ, Administrative Patent
Judges
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 1 through 8 and 35 through 42.
Representative claims 1, 36, and 37 are reproduced below:
1. A removable, non-brittle, water soluble
thermoplastic spacer for use to space an electrical
Appeal No. 1997-0846
Application No. 08/474,950
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component from a printed wiring board to which the
electrical component will be attached which
comprises:
(a) a shaped mixture of
(i) an injection moldable solid mixture of
partially hydrolyzed polyvinyl alcohol resin,
and
(ii) fully hydrolyzed polyvinyl alcohol
resin,
(b) said mixture being capable [sic: of]
retaining its shape at the printed wiring board
fabrication and soldering temperatures encountered.
36. The spacer of claim 1 further including a
printed wiring board having an aperture therein,
said spacer disposed about said aperture, and an
electrical component having a wire extending
therefrom, said electrical component resting on said
spacer and said wire extending through said spacer
and into said aperture.
37. A removable, non-brittle, water soluble
thermoplastic spacer for use to space an electrical
component from a printed wiring board to which the
electrical component will be attached which
comprises:
(a) an injection moldable member having a
central aperture extending therethrough
(b) of a water soluble thermoplastic polymer
(c) which retains its shape at the printed
wiring board fabrication and soldering temperatures
encountered.
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Application No. 08/474,950
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The reference of record relied on by the examiner is:
Baechtold 3,300,546 Jan. 24, 1967
Appealed claims 2 through 4 stand rejected under 35
U.S.C.
§ 112, second paragraph, as indefinite. All appealed claims
stand rejected under 35 U.S.C. § 103 as unpatentable over
Baechtold in view of Admitted Prior Art.
Neither rejection can be sustained.
The subject matter on appeal relates to a removable,
non-brittle, water soluble thermoplastic spacer for use to
space an electrical component from a printed wiring board to
which the electrical component will be attached. Appealed
claim 1 defines the spacer as comprising a shaped mixture of
an injection moldable solid mixture of partially hydrolyzed
polyvinyl alcohol resin, and a fully hydrolyzed polyvinyl
alcohol resin. This mixture is further defined as being
capable of retaining its shape at the printed wiring board
fabrication and soldering temperatures encountered.
Additionally, appealed claim 36 is directed to the combination
of the spacer, a printed wiring board, and an electrical
Appeal No. 1997-0846
Application No. 08/474,950
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component. Appealed claim 37 defines the spacer broadly in
terms of a water soluble thermoplastic polymer which retains
its shape at the printed wiring board fabrication and
soldering temperatures encountered, but additionally requires
that the spacer have a central aperture extending
therethrough. Appealed dependent claims 40 and 41 define the
spacer as a toroid.
Appealed claims 2 through 4 stand rejected under 35
U.S.C.
§ 112, second paragraph, as indefinite. Apparently, the
examiner considers that the claim language "selected" renders
the claims indefinite under this section of the statute. See
appellant's brief at page 4. However, we agree with appellant
that the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. Hence, we do not sustain the examiner's
rejection of appealed claims 2 through 4 under this section of
the statute.
We now turn to the examiner's obviousness rejection of
the appealed claims as unpatentable over Baechtold in view of
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Admitted Prior Art. Essentially, for the reasons set forth in
appellant's brief, we do not find the stated rejection to be
well taken. As emphasized by appellant, the appealed claims
are directed to a removable, non-brittle, water soluble
thermoplastic spacer for use to space an electrical component
from a printed circuit wiring board to which the electrical
component will be attached. Baechtold does not relate to the
technology of concern to appellant. What Baechtold's
described invention relates to is a water-soluble, heat-
sealable film material suitable for use
1) as a water soluble wrap or 2) for fabrication into water-
soluble envelopes. Baechtold's film material and water
soluble wrap is used for the packaging of household materials
intended to be dissolved or dispersed in water, for example,
soap powder or detergent powder. That appellant acknowledges
(specification page 2) that wash away lactose spacers have
been used to space an electrical component from a printed
wiring board in the prior art does not aid the examiner's
rejection, since there is no indication in Baechtold that the
prior art water-soluble film and wrap material would overcome
the problems relating to the use of the prior art lactose
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Application No. 08/474,950
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spacers which are described as "brittle, difficult to handle
and can prematurely break before or during flow solder
processing, creating massive rework and scrap of printed
wiring boards." See the specification at page 2, lines 23
through 25. Accordingly, the examiner's stated rejection of
the appealed claims for obviousness cannot be sustained.
The decision of the examiner is reversed.
OTHER ISSUES
Contrary to appellant's statement in his brief on appeal
that there are no known related appeals or interferences, we
direct the examiner's attention to Appeal No. 97-3102 which is
an appeal from the rejection of related subject matter in
Serial No.
08/476,526 filed June 7, 1995. A copy of our decision in the
related appeal which is being mailed on even date is attached
to this decision.
Prior to taking any further action in the present
application, the examiner should carefully consider the
patentability issues raised based on the Caravona patent in
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Application No. 08/474,950
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the related appeal, and the potential applicability of
Caravona to the claims in the present appeal.
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
vsh
Appeal No. 1997-0846
Application No. 08/474,950
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Rene E. Grossman
Texas Instruments Incorporated
P.O. Box 655474 MS 219
Dallas, TX 75265