Ex Parte Jafari et al

Board of Patent Appeals and Interferences

May 27, 2009

10197385 (B.P.A.I. May. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BEHDAD JAFARI
and GEORGE SORENSON
____________

Appeal 2009-002826
Application 10/197,385
Technology Center 2800
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Decided:1 May 27, 2009
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002826
Application 10/197,385

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-8, and 13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
I. STATEMENT OF THE CASE
The invention relates to a processor-memory integrated circuit device
which includes a processor mounted on either the same side or the opposite
side of a substrate from a number of memory components and which further
is mounted to a printed circuit board (PCB) via a common interface so as to
encourage heat dissipation. (Spec. 5, ll. 9-25). Claim 1 is illustrative of the
subject matter on appeal:
1. A Multi-configuration Processor-Memory device for coupling to a
PCB (printed circuit board) interface of a printed circuit board comprising:

a substrate having a first configuration and a second configuration,
wherein the substrate is configured for mounting a processor and a first
number of memory components in the first configuration, and mounting the
processor and an additional number of memory components in the second
configuration; and

an interface built into the substrate for surface mounting the substrate
to a PCB interface of a printed circuit board.
The Examiner relies on the following prior art references to show
unpatentability:
Chu et al. (“Chu”) US 5,941,447 Aug. 24, 1999
Lau US 6,209,075 B1 Mar. 27, 2001
Li et al. (“Li”) US 6,545,895 B1 Apr. 8, 2003
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Appeal 2009-002826
Application 10/197,385

The Examiner maintains the following rejections:
1. Claims 1-4, and 8 rejected under 35 U.S.C. § 102(b) as anticipated
by Chu;
2. Claims 5-7 rejected under 35 U.S.C. § 103(a) as obvious over Chu
in view of Lau; and
3. Claim 13 rejected under 35 U.S.C. § 103(a) as obvious over Chu in
view of Li.2
With respect to the first rejection, Appellants present arguments with
respect to claims 1-4, and 8 as a group. Accordingly, we select independent
claim 1 to represent this group. See 37 C.F.R. § 41.37(c)(1)(vii) (“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”).
With respect to the separate rejections of dependent claims 5-7 and
dependent claim 13, Appellants present no arguments over what is argued
with respect to claim 1, except to state that the addition of Lau and Li do not
cure the defect that Appellants argued with respect to claim 1. (See Br. 6-7).
Accordingly, we decide this appeal solely on the basis of the argued claim 1
limitations.

2 Appellants restate the second and third rejections as a single rejection, i.e.,
claims 5-7, and 13 rejected under 35 U.S.C. § 103(a) as obvious over Chu in
view of Lau and Li. (Br. 5). However, we state the rejections as presented
by the Examiner. (Final Rejection of Apr. 19, 2007 at 3-4; Ans. 5-6).
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Appeal 2009-002826
Application 10/197,385

II. ISSUE ON APPEAL
Appellants contend that Chu teaches a processor-memory substrate,
which has an interface (or a “single-edge-contact”) for side mounting the
substrate, and that such an interface for side mounting is distinguishable
from “an interface built into the substrate for surface mounting the substrate
to a PCB interface of a printed circuit board” as required by claim 1. (Br. 6;
Reply Br. 3).
The Examiner contends that the teaching of Chu shows a substrate
with an interface (metal contacts 8) built into and on both sides of a side
edge of the substrate such that “at least part (at the edges) of Chu’s interface
is capable of being surface mounted (surface contact) to the connector of the
PCB.” (Ans. 8).
The sole issue on appeal arising from the contentions of Appellants
and the Examiner is: have Appellants shown that the Examiner reversibly
erred in finding that Chu teaches “an interface built into the substrate for
surface mounting the substrate to a PCB interface of a printed circuit board,”
as recited in claim 1, with sufficient specificity that Chu anticipates claim 1?
We answer this question in the negative.
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. Appellants’ Specification uses the term “surface mounted” only
to refer to surface mounting the processor and the memory components to
the substrate. (Spec. 5, ll. 18-19; 11, ll. 1-4 and 18-19). Appellants’
Specification does not define the term “surface mounted” or use the term to
describe mounting the substrate to a printed circuit board.
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Application 10/197,385

2. Figures 5A, 5B, and 6 of Appellants’ Specification show
different embodiments in which a substrate is mounted to a circuit board.
(Spec. 7, l. 24-8, l. 8).
3. Chu teaches a processor module that includes metal contacts 8
positioned along a bottom edge of a substrate 10, on both the front and back
surfaces, which mate with pads on a module socket to electrically connect
the module to a PC’s motherboard. (Chu, col. 2, ll. 14-17).
4. Chu teaches that substrate 10 is sandwiched between a heat sink
and a plastic case and sold as a “single-edge-contact (SEC) cartridge.”
(Chu, col. 2, ll. 28-31).
IV. PRINCIPLES OF LAW
Much of our decision rests on what is meant by the language recited
in claim 1. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-1568
(Fed. Cir. 1987) (“Analysis begins with a key legal question -- what is the
invention claimed? . . . Claim interpretation . . . will normally control the
remainder of the decisional process.”) (footnote omitted).
The claims, not the specification, measure the protected patent right to
exclude others. Novo Nordisk of North America, Inc. v. Genentech Inc.,
77 F.3d 1364, 1369 (Fed. Cir. 1996); Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005) (“To begin with, the context in which a term is used in
the asserted claim can be highly instructive.”). Our reviewing court has
repeatedly emphasized that it is not appropriate to read desired embodiments
from a specification into the claim. Phillips, 415 F.3d at 1323 (“[A]lthough
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments.”).
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Application 10/197,385

Further, the claim language must be given its broadest reasonable
meaning. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[A]s an
initial matter, the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.”). “Construing claims broadly during prosecution is not unfair
to the applicant . . . , because the applicant has the opportunity to amend the
claims to obtain more precise claim coverage.” In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “A single reference must
describe the claimed invention with sufficient precision and detail to
establish that the subject matter existed in the prior art.” Verve LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).
V. ANALYSIS
Appellants give the phrase “for surface mounting the substrate to a
PCB interface of a printed circuit board” an improperly narrow
interpretation, confining the meaning to the particular embodiments
described in the Specification, i.e., mounted on the particular surface and to
the extent shown, for example, in Figures 5A, 5B and 6. (Br. 3 and 5; Reply
Br. 2). Appellants’ Specification presents no definition for the phrase “for
surface mounting.” (FF 1). In fact, Appellants’ Specification does not even
use the phrase to describe mounting the substrate to the printed circuit board
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Application 10/197,385

in the manner illustrated in Figures 5A, 5B and 6. (FF 1-2). Accordingly,
we decline to confine the meaning of the phrase to those particular
embodiments disclosed in Appellants’ Specification. We find that the
broadest reasonable interpretation of the term would not preclude an
interface that is capable of being mounted on any surface, including an edge
surface, of the substrate and/or the printed circuit board. Appellants have
not provided any further evidence to demonstrate that one of ordinary skill
in the art would have considered any narrower meaning.
The Examiner was correct in determining that Chu teaches interfaces
(metal contacts 8) disposed such that the substrate 10 is capable of being
surface mounted to a printed circuit board, since Chu teaches that the edge
surface of the substrate can be mounted to a surface of the printed circuit
board. (FF 3-4). Further, because the interfaces (metal contacts 8) are
present on the front and back surfaces of the substrate, the front or back
surface of the substrate is also capable of being mounted to a surface of the
printed circuit board. (FF 3).
Accordingly, Appellants have not shown that the Examiner reversibly
erred in finding that Chu teaches “an interface built in to the substrate for
surface mounting the substrate to a PCB interface of a printed circuit board,”
as recited in claim 1, with sufficient specificity that Chu anticipates claim 1.
VI. CONCLUSION
For the reasons discussed above, we sustain the following rejections of
the Examiner:
1. Claims 1-4, and 8 rejected under 35 U.S.C. § 102(b) as anticipated
by Chu;
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Appeal 2009-002826
Application 10/197,385

2. Claims 5-7 rejected under 35 U.S.C. § 103(a) as obvious over Chu
in view of Lau; and
3. Claim 13 rejected under 35 U.S.C. § 103(a) as obvious over Chu in
view of Li.
VII. DECISION
We affirm the Examiner’s decision.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).
AFFIRMED

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