Ex Parte Gutierrez et al

Board of Patent Appeals and Interferences

May 30, 2012

11399002 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/399,002 04/05/2006 Aurelio J. Gutierrez PENG.689A 9399
27299 7590 05/31/2012
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
CHUNG TRANS, XUONG MY
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AURELIO J. GUTIERREZ,
RUSSELL L. MACHADO,
CHRIS SCHAFFER, and VICTOR H. RENTERIA
____________________

Appeal 2010-008987
Application 11/399,002
Technology Center 2800
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008987
Application 11/399,002

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 7, 8, 15-19, 27- 29, and 31-40.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention concerns “an improved package and method of
packaging microminiature electronic components” (Spec. 1). The apparatus
comprises a plurality of substantially separable modular header assemblies
capable of interconnecting with one another. Each assembly comprises a
non-conductive base member having a cavity formed therein; a plurality of
signal conducting elements disposed at least partially within the non-
conductive base member; and at least one electronic component at least
partially disposed within the cavity (Spec. 8).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A modular electronic apparatus, comprising:

a plurality of substantially separable modular header assemblies
capable of interconnecting with one another, each of said
modular header assemblies comprising:

a non-conductive base member having a cavity formed
therein;

a plurality of signal conducting elements disposed at least
partially within said non-conductive base member; and

1 Claims 5, 6, 9-14, 20-26, and 30 have been cancelled. App. Br. 1.
Appeal 2010-008987
Application 11/399,002

3
at least one electronic component at least partially
disposed within said cavity; and

a cover at least partially enclosing said plurality of
modular header assemblies.

REFERENCE and REJECTIONS
The Examiner rejected claims 1-4, 7, 8, 15, 17, 19, 27-29, 31-36, and
40 under 35 U.S.C. 102(b) as being anticipated by Lint (U.S. Patent No.
5,015,981, issued May 14, 1991).
The Examiner rejected claim 16, 18, and 37-39 under 35 U.S.C.
§ 103(a) based upon the teachings of Lint.

ISSUES
Appellants contend that Lint does not teach substantially separable
modular header assemblies capable of interconnecting with one another
(App. Br. 3-4). Appellants argue that “interconnecting” refers to “a direct
mechanical interface or joining of the separable header assemblies” (App.
Br. 4).
Appellants further argue that the holders of Lint do not function as a
“modular electronic apparatus” as Appellants suggest the term should be
defined, as “a device which can be used to condition electrical signals in a
host device” (App. Br. 5).
With respect to claim 4, Appellants contend that the holder elements
of Lint are not stacked in substantially end-to-end disposition (App. Br. 6).
With respect to claim 8, Appellants contend that Lint does not teach
the toroidal coils being disposed in a substantially upright disposition (App.
Br. 6).
Appeal 2010-008987
Application 11/399,002

4
With respect to claim 19, Appellants argue that Lint does not disclose
signal conducting elements in signal communication with a printed circuit
board via a through-hole connection, because Lint only contemplates surface
mount connections (App. Br. 7).
With respect to claim 27, Appellants assert that Lint does not teach
assemblies adapted to separably mate with another substantially identical
element in front-to-back disposition (App. Br. 7).
With respect to claims 29 and 40, Appellants contend that Lint does
not teach header assemblies that mate with one another in juxtaposed fashion
so that the first cavity of a first one of the assemblies directly faces the
second cavity of a second one of the assemblies (App. Br. 6, 9).
With respect to claims 37-39, Appellants argue that the Examiner has
no support for his finding that “it is well known to a skilled artisan that an
electromagnetic shield is needed to shield electromagnetic field generated
between the induction coils (44),” and that the Examiner’s statement does
not accurately reflect the claimed invention (App. Br. 9-10).
Appellants’ arguments present us with the following issues:
1. Does Lint teach substantially separable modular header assemblies
capable of interconnecting with one another?
2. Does Lint teach holder elements stacked in substantially end-to-end
disposition?
3. Does Lint teach toroidal coils being disposed in a substantially
upright disposition?
4. Does Lint teach signal conducting elements in signal
communication with a printed circuit board via a through-hole connection?
Appeal 2010-008987
Application 11/399,002

5
5. Does Lint teach assemblies adapted to separably mate with another
substantially identical element in front-to-back disposition?
6. Does Lint teach header assemblies that mate with one another in
juxtaposed fashion so that the first cavity of a first one of the assemblies
directly faces the second cavity of a second one of the assemblies?
7. Does Lint teach or suggest an electromagnetic shield?

FINDINGS OF FACT
Appellants’ Specification
1. Appellants define “electrical component” and “electronic
component” as a component “adapted to provide some electrical or
electronic function” (Spec. 14).

Lint
2. Lint teaches an “electronic element holder of a non-conducting
material having at least one cavity therein and a plurality of lead slots
extending from the cavity to a base of the holder, an electronic element
mounted in the cavity and having a plurality of leads extending therefrom, a
plurality of the leads extending within the slots from the element to the base,
and a plurality of lead terminals mounted on the holder and each having one
end extending into one of the slots into conducting engagement with a lead”
(Abstract).

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
Appeal 2010-008987
Application 11/399,002

6
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).

ANALYSIS
CLAIMS 1-3, 7, 15-18, AND 33-36
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellants’ arguments, summarized supra,
that the Examiner erred.
The only evidence offered in support of Appellants’ alleged definition
of “interconnecting” as “a direct mechanical interface or joining” is a
reproduction of Figure 1i (App. Br. 4). Given such lack of support, we do
not adopt Appellants’ suggested definition. Appellants similarly offer no
support for their proffered definition of “modular electronic apparatus” as “a
device which can be used to condition electrical signals in a host device”
(App. Br. 5). In fact, Appellants’ specification defines “electronic
component” as “component[s] adapted to provide some electrical or
electronic function” (FF 1), a definition substantially broader than that
suggested in the Brief.
As a consequence, we agree with the Examiner’s finding that Lint
teaches the limitations recited in claim 1. We agree with the Examiner that
Lint teaches a plurality of lead slots extending from the cavity to the base of
the holder, an electronic element mounted in the cavity and having a
plurality of leads extending therefrom, and a plurality of lead terminals
mounted on the holder and each having one end extending into one of the
Appeal 2010-008987
Application 11/399,002

7
slots, thus meeting the limitation regarding assemblies “capable of
interconnecting” (Ans. 4; FF 2).
We find that the Examiner did not err in rejecting representative claim
1 as being anticipated by Lint. We will thus affirm the § 102 rejection of
claim 1 as well as claims 2, 3, 7, 15-18, and 33-36 not separately argued.
CLAIM 4
We agree with Appellants that the Examiner has not demonstrated that
the holder elements are stacked in a substantially end-to-end disposition
(App. Br. 6). Accordingly, we will not sustain the Examiner’s § 102
rejection of claim 4.
CLAIM 8
We agree with the Examiner’s finding that Lint teaches a toroidal coil
being disposed in a substantially upright orientation (Ans. 5). The claim
does not define “upright orientation” in a way that requires any particular
surface of the coil to be “upright.” Therefore, we construe the orientation of
the coils in Lint to be upright.
Because we find that the Examiner did not err in rejecting claim 8, we
will sustain the Examiner’s § 102 rejection.
CLAIM 19
We agree with Appellants that Lint does not teach that the plurality of
signal conducting elements are in signal communication with a printed
circuit board via a through-hole connection (App. Br. 7). Lint teaches a
surface mount device that does not use through-holes. Because we find error
in the Examiner’s rejection of claim 19, we will not sustain the § 102
rejection.
Appeal 2010-008987
Application 11/399,002

8
CLAIMS 27 AND 28
We agree with Appellants that Lint does not teach a base element
adapted to separably mate with another substantially identical element in
front-to-back disposition (App. Br. 7). We will not sustain the Examiner’s
§ 102 rejection of claim 27, or claim 28 dependent therefrom.
CLAIM 29, 31, AND 32
We agree with Appellants that Lint does not teach that the first cavity
of a first one of the plurality of assemblies directly faces the second cavity of
a second one of the plurality of assemblies (App. Br. 6). Thus, we will not
sustain the Examiner’s § 102 rejection of claim 29, or claims 31 and 32
dependent therefrom.
CLAIM 40
We agree with Appellants that Lint does not teach modular header
assemblies that mate with one another in a substantially juxtaposed fashion
so that the first recess of a first one directly faces the second recess of a
second one (App. Br. 9). Therefore, we will not sustain the Examiner’s
§ 102 rejection of claim 40.
CLAIMS 37-39
We agree with Appellants that the Examiner has not shown a teaching
of the claimed electromagnetic shield. The Examiner’s statement that it
would be “well known to a skilled artisan that an electromagnetic shield is
needed to shield electromagnetic field generated between the induction coils
44” presupposes the need for such a shield, rather than providing evidence
why the person of ordinary skill would be motivated to add a shield to Lint
(Ans. 4). As such, we find the Examiner’s conclusion to be based on
improper hindsight reasoning.
Appeal 2010-008987
Application 11/399,002

9
Because we conclude that the Examiner erred in rejecting claims 37-
39 as rendered obvious over Lint, we will not sustain the Examiner’s § 103
rejection.

CONCLUSIONS
1. Lint teaches substantially separable modular header assemblies
capable of interconnecting with one another.
2. Lint does not teach holder elements stacked in substantially end-to-
end disposition.
3. Lint teaches toroidal coils being disposed in a substantially upright
disposition.
4. Lint does not teach signal conducting elements in signal
communication with a printed circuit board via a through-hole connection.
5. Lint does not teach assemblies adapted to separably mate with
another substantially identical element in front-to-back disposition.
6. Lint does not teach header assemblies that mate with one another in
juxtaposed fashion so that the first cavity of a first one of the assemblies
directly faces the second cavity of a second one of the assemblies.
7. Lint does not teach or suggest an electromagnetic shield.

DECISION
The Examiner’s decision rejecting claims 1-3, 7, 8, 15-18, and 33-36
is affirmed.
The Examiner’s decision rejecting claims 4, 19, 27-29, 31, 32, and 37-
40 is reversed.

Appeal 2010-008987
Application 11/399,002

10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R.§ 1.136(a)(1)(iv)(2010).

AFFIRMED-IN PART

Vsh/llw