Ex parte Hayami

Board of Patent Appeals and Interferences

Feb 26, 2002

08760510 (B.P.A.I. Feb. 26, 2002)

Application for patent filed December 5, 1996,1
entitled "Laminate Printed Circuit Board with Leads for
Plating," which is claims the foreign filing priority benefit
under 35 U.S.C. § 119 of Japanese Application 317689, filed
December 6, 1995.
- 1 -
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and is not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte KEIKO HAYAMI

Appeal No. 2000-0424
Application 08/760,5101

ON BRIEF

Before KRASS, BARRETT, and SAADAT, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 2000-0424
Application 08/760,510
- 2 -
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 4 and 8, the only claims
pending.
We reverse.
BACKGROUND
The invention relates to a laminate printed circuit board
having a lead for plating. The problem with leads for plating
in the prior art shown in Figs. 2A and 2B was that when the
leads 3 were cut off after plating, the residual potions 4
were deformed and were apt to short-circuit nearby terminals.
The problem is solved by using a single lead on the printed
circuit board connected to the terminals to be plated and then
disconnecting the terminals from each other by a hole through
the lead. Claim 4 is directed to the embodiment of
Figs. 3A-3C and claim 8 is directed to the embodiment of Figs.
4A and 4B.
Appeal No. 2000-0424
Application 08/760,510
The Appendix incorrectly reproduces "BTHs" in claim 42
as "BTH's."
- 3 -
Claim 4, which is directed to the embodiment of
Figs. 3A-3C, is reproduced below.2
4. A laminate printed circuit board, comprising:
a plurality of plated conductors provided on said
laminate printed circuit board, each of said conductors
extending in a first direction and toward an edge of said
printed circuit board;
a plurality of wirings respectively connected to
said plurality of conductors;
a plurality of blind through holes (BTHs)
respectively connected to said plurality of wirings; and
a lead for plating said plurality of conductors,
said lead forming an intermediate layer of said laminate
printed circuit board located below said plated
conductors, connected to said plurality of BTHs, and
extending in a direction different from said first
direction;
wherein said lead is severed between nearby ones of
said plurality of BTHs so that said nearby BTHs are not
interconnected through said lead; and
wherein said plurality of conductors are disposed on
a common surface of said printed circuit board, wherein
the edge of said printed circuit board comprises a first
edge, wherein said lead extends toward a second edge of
said printed circuit board, and wherein said board has a
plurality of holes formed therein, each hole being formed
between respective adjacent ones of said plurality of
BTHs and extending through said lead so that said
adjacent ones of said plurality of BTHs are not
interconnected through said lead.
Appeal No. 2000-0424
Application 08/760,510
- 4 -
The Examiner relies on the following reference:
Yasuda et al. (Yasuda) 5,347,712 September 20, 1994
Claims 4 and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yasuda.
We refer to the final rejection (Paper No. 12) (pages
referred to as "FR__"), the examiner's answer (Paper No. 23)
(unnumbered pages have been numbered and are referred to as
"EA__"), and the communication (Paper No. 26) (noting entry of
the reply brief and clarifying the examiner's answer) for a
statement of the Examiner's rejection, and to the brief (Paper
No. 22) (pages referred to as "Br__") and the reply brief
(Paper No. 25) for a statement of Appellant's arguments
thereagainst.
Appeal No. 2000-0424
Application 08/760,510
- 5 -
OPINION
Grouping of claims
The Examiner's conclusion that claims 4 and 8 stand or
fall together (EA2) is erroneous. Appellant's statement that
"[w]ith respect to the first (and only) issue on appeal,
claims 4 and 8 are considered as a single group" (Br7), is a
little confusing because we normally consider a group to be a
group of claims that stand or fall together. Nevertheless,
Appellant states that claims 4 and 8 do not stand or fall
together (Br7) and provides arguments for their separate
patentability in the argument section. Accordingly, claims 4
and 8 are addressed separately.
Claim interpretation
Claims 4 and 8 are interpreted to be product-by-process
claims because they contain at least one process step, the
step of forming a hole to sever the lead between BTHs or
conductors. The Examiner previously rejected claims 4 and 8
as indefinite under 35 U.S.C. § 112, second paragraph, as
indefinite because claim 4 first recites the leads connected
to the plurality of BTHs and then recites the nearby BTHs are
Appeal No. 2000-0424
Application 08/760,510
- 6 -
not connected, and because claim 8 first recites the lead is
connected to a plurality of conductors and then recites that
nearby connectors are not connected through the lead (FR2).
It is not clear why the rejection was withdrawn.
Nevertheless, the claim language is explained by the product-
by-process interpretation. In claim 4, corresponding to
Figs. 3A-3C, initially a plurality of BTHs are connected by a
lead which is used for plating (Fig. 3A), then holes are
formed to sever the lead between BTHs (Figs. 3B & 3C).
Claim 4
We summarize the Examiner's rejection, as best
understood, with respect to Fig. 6 of Yasuda as marked up by
the Examiner in Appendix B (there is no Appendix A) attached
to the examiner's answer. The portion of conductor layer 46
to the left of blind hole 48 is a "conductor[] provided on
said laminate printed circuit board . . . extending in a first
direction and toward an edge of said printed circuit board."
The conductor is "plated" as shown by plating layer 49
(col. 11, lines 23-26). The portion of conductor layer 46 to
the right of blind hole 48 is "wiring[] respectively connected
Appeal No. 2000-0424
Application 08/760,510
- 7 -
to said . . . conductor[]." The blind hole 48 a "blind
through hole[] (BTH[]) respectively connected to said . . .
wiring[]" by the plating layer 49. The conductor layer 34 is
a "lead," "said lead forming an intermediate layer of said
laminate printed circuit board located below said plated
conductors, connected to said . . . BTH[], and extending in a
direction different from said first direction, . . . wherein
said lead extends toward a second edge of the printed circuit
board," because it can be seen that the conductor layer 34
must extend in a direction in and out of the plane of the
paper in order to connect to anything.
The Examiner states (FR4-5; EA3):
Yasuda discloses the claimed invention except
multiple ones of the conductor, BTH, wirings and the
holes, because he does not show the entire board. It
would have been obvious to one of ordinary skill in the
art, a[t] the time the invention was made, to repeat the
pattern shown in figure 6 of Yasuda to make a complete
board, thereby yielding a plurality of conductors, holes,
BTHs and wirings, because repeating a known pattern on a
circuit board for increased capacity is [sic, was] well
known in the electrical arts.
We think what the Examiner intended is that the
arrangement of Fig. 6 shows one plated conductor/wiring/BTH
pattern, which is equivalent to a cross-section along the axis
of one of the terminals 21 and BTHs 10 in Appellant's Fig. 3A.
Appeal No. 2000-0424
Application 08/760,510
- 8 -
Presumably, the Examiner considers that the conductor layer 46
has a limited width in a direction out of the plane of the
paper, and that it would have been obvious to repeat this
pattern in planes parallel to and spaced from the plane of the
paper, with the BTHs aligned along a lead (conductor layer 34)
extending out of the plane of the paper. This is the only
logical way to get the arrangement of Appellant's Fig. 3. We
do not think the Examiner proposes to repeat the pattern to
the left or right as shown in Appellant's Appendix D, because
this does not result in a plurality of conductors for the
reasons argued by Appellant at Br12. Unfortunately, the
Examiner's failure to question Appellant's interpretation
leaves confusion as to what the Examiner meant.
We assume, for the sake of argument, that it would have
been obvious to repeat the pattern in Fig. 6 in planes
parallel to and spaced from the plane of the paper so as to
create a plurality of plated conductor/wiring/BTHs. (This
modification appears to be based solely on hindsight in view
of Appellant's disclosure, rather than any identified
suggestion in Yasuda or the knowledge of one of ordinary skill
in the art, but we assume the Examiner is correct for the
Appeal No. 2000-0424
Application 08/760,510
- 9 -
purposes of this discussion.) The Examiner's modifications
would result in the structure at the top half of Appellant's
Fig. 3A, i.e., the top set of terminals 21, upper BTHs 10, and
(lead) wiring 13 interconnecting the BTHs 10.
The issue is whether the following limitations of claim 4
are taught or suggested by Yasuda: "wherein said lead is
severed between nearby ones of said plurality of BTHs so that
said nearby BTHs are not interconnected through said lead;
. . . and wherein said board has a plurality of holes formed
therein, each hole being formed between respective adjacent
ones of said plurality of BTHs and extending through said lead
so that said adjacent ones of said plurality of BTHs are not
interconnected through said lead." These limitations refer to
the holes 14 in Fig. 3B and 3C. Appellant argues that these
limitations are not disclosed or suggested by Yasuda
(Br15-16).
The Examiner states (EA7):
Appellant also argues that the hole does not pass
through the lead. Examiner notes that this is not a
claim limitation. Therefore, the argument is moot. The
claim states that the lead is connected to the hole (it
is as seen from figure 6 of Yasuda in appendix B [to the
examiner's answer]) and is severed between adjacent holes
so that the holes are not connected through the lead (see
claim language, for example at lines 12-13 of claim 4).
Appeal No. 2000-0424
Application 08/760,510
- 10 -
Obviously, this is the case: the lead is severed between
the holes thereby not connecting them, because it only
extend[s] a short distance to either side of each hole as
clearly illustrated in appendix B [to the examiner's
answer].
Also, the blind through hole (50) is not what is
labeled as the BTH in the rejection, see appendix B [to
the examiner's answer]. Second, as seen even from
appellant's appendix D, the lead does not connect the two
BTH's [sic] shown in this figure. Sections of the lead
are connected to their respective BTH only in the
immediate vicinity of that BTH and completely
disconnected from the other BTH.
We do not understand the Examiner's reasoning. According
to the Examiner's rejection, the conductor layer 34 in Fig. 6,
corresponding to the claimed "lead for plating . . . connected
to said plurality of BTHs," extends out of the plane of the
paper and connects to a plurality of BTHs. The conductor
layer 34 must be physically (and electrically) continuous from
one BTH to the next in order to meet the limitation of being
"connected to said plurality of BTHs" and to be capable of
performing the intended use "for plating." The Examiner
cannot dismiss the limitation "for plating" as a statement of
intended use which is capable of being performed by conductor
layer 34 in Fig. 6 and, at the same time, take the
inconsistent interpretation that the conductor layer 34 is
severed between BTHs which would make the layer incapable of
Appeal No. 2000-0424
Application 08/760,510
- 11 -
being used "for plating." Yasuda says nothing that would have
suggested the Examiner's proposed modification of providing a
plurality of plated conductors/wirings/BTHs, where the BTHs
are interconnected by a lead extending a different direction
than the conductors, and certainly does not disclose or
suggest further modifying the Examiner's modification to sever
the lead (conductor layer 34 in the rejection) between BTHs.
The Examiner's statement that the lead is shown as severed
between holes in Yasuda because it only extends a short
distance to either side of the hole is not consistent with the
Examiner's rejection where the BTHs are arrayed along a lead
(conductor layer 34) out of the plane of the paper. Figure 6
only shows the width of the lead (conductor layer 34); it does
not show the lead severed between BTHs which were connected at
one time for the purpose of plating.
Contrary to the Examiner's statement that the hole
passing through the lead is not a claim limitation, claim 4
expressly recites "each hole . . . extending through said lead
so that said adjacent ones of said plurality of BTHs are not
interconnected through said lead." The Examiner erred in
dismissing arguments to this limitation as moot.
Appeal No. 2000-0424
Application 08/760,510
- 12 -
The Examiner has failed to establish the obviousness of
the limitations "wherein said lead is severed between nearby
ones of said plurality of BTHs so that said nearby BTHs are
not interconnected through said lead; . . . and wherein said
board has a plurality of holes formed therein, each hole being
formed between respective adjacent ones of said plurality of
BTHs and extending through said lead so that said adjacent
ones of said plurality of BTHs are not interconnected through
said lead." Accordingly, we conclude that the Examiner has
failed to establish a prima facie case of obviousness as to
claim 4. The rejection of claim 4 is, therefore, reversed.
Claim 8
The issue involved in claim 8 is similar to that
discussed in claim 4. Claim 8 is directed to the embodiment
of Figs. 4A and 4B where the lead 22 is connected to a
plurality of conductors 21 sideways on the surface of the
laminate, i.e., without the intermediate BTHs of the Fig. 3
embodiment. Then the lead is severed between conductors by
holes 23 (Fig. 4B).
Appeal No. 2000-0424
Application 08/760,510
- 13 -
The Examiner again fails to show a lead that is used for
plating (or capable of being used for plating) a plurality of
conductors that is then severed by holes which disconnect the
plurality of conductors. We conclude that the Examiner has
failed to establish a prima facie case of obviousness as to
claim 8. The rejection of claim 8 is, therefore, reversed.
Appeal No. 2000-0424
Application 08/760,510
- 14 -
CONCLUSION
The rejection of claims 4 and 8 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2000-0424
Application 08/760,510
- 15 -
RABIN & CHAMPAGNE, P.C.
1101 14th Street, N.W.
Suite 500
Washington, DC 20005