Ex Parte Kearns et al

Patent Trial and Appeal Board

Sep 18, 2013

11844935 (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD A. KEARNS, GEORGE C. ZACHARISEN,
and DAVID K. MCELFRESH
____________

Appeal 2011-003799
Application 11/844,935
Technology Center 2800
____________

Before HUBERT C. LORIN, ROMULO H. DELMENDO, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 4-10, 20, and 21. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The Appellants identify the real party in interest as “Oracle America, Inc.,
formerly known as Sun Microsystems, Inc.” Appeal Brief filed July 6, 2010
(“Br.”) at 4.
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Application 11/844,935

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BACKGROUND
The invention relates to an integrated circuit housing that includes a
shim for improved load distribution. Specification (“Spec.”) ¶¶ 6-10.
Specifically, the Appellants explain that when the fasteners of clamping
hardware in an integrated circuit housing are tightened, the clamping
hardware imparts a load on the contacts between the chip and the printed
circuit board (PCB). Id. at ¶ 4. According to the Appellants, some
conventional devices have addressed the problem of load distribution by
using, e.g., a spherical or cylindrical curvature within the clamping hardware
or “a flat, extremely stiff bolster plate . . . to spread the load away from the
four corners.” Id. at ¶ 5.
The Appellants’ approach to addressing the load distribution problem
is best understood from a review of their Figure 2, which is reproduced
below:
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Figure 2 above depicts an embodiment of the invention, wherein shim 20 is
interposed between insulator 16 and bolster plate 18, which is part of the
clamping hardware. ¶¶ 19-21.
Representative claim 1 is reproduced below:
1. An integrated circuit housing, comprising:
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a first clamping hardware;
a second clamping hardware operatively connected to the
first clamping hardware; and
an integrated circuit stack comprising a top portion and a
bottom portion;
wherein the first clamping hardware contacts the top
portion and the second clamping hardware contacts the bottom
portion, and
wherein a shim is affixed to an insulator, wherein the
shim and the insulator are interposed between the bottom
portion and the second clamping hardware.

Br. 18 (Claims App’x; emphasis added.)
The Examiner rejected claims 1, 2, 4-10, 20, and 21 under 35 U.S.C. §
103(a) as unpatentable over Cromwell2 and Alcoe.3

DISCUSSION
The Appellants state that “claims 1, 2, 4-10, 20, and 21 stand or fall
together.” Br. 6. Therefore, our ruling on the rejection of claim 1, which we
select as representative, is dispositive. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Cromwell describes every limitation of
claim 1 except for the shim limitation (“a shim is affixed to an insulator . . .
wherein the shim and the insulator are interposed between the bottom
portion and the second clamping hardware”). Ans. 4. The Examiner,

2 Cromwell et al., 6,930,884 B2, issued August 16, 2005.
3 Alcoe, 6,654,250 B1, issued November 25, 2003.
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Application 11/844,935

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however, relied on Alcoe’s teachings to conclude that a person of ordinary
skill in the art would have been prompted to modify Cromwell’s integrated
circuit package to include a shim between the bottom portion of the
integrated circuit stack and a second part of the clamping hardware “so that
the shim is affixed/attached to the insulator and the bottom portion and
directly contacts the insulator in order to reduce the additional unwanted
stress . . . .” Id. at 4-5.
The Appellants contend that “there is no teaching, suggestion, or
motivation to add the conformal member of Alcoe to the integrated circuit
package in Cromwell.” Br. 7 (emphasis omitted). Specifically, the
Appellants argue that “the ball grid array (BGA) structure in Alcoe operates
very differently from the land grid array (LGA) assembly in Cromwell” and
therefore “the Examiner’s attempt to combine Alcoe and Cromwell to reject
the present invention is improper.” Id. at 9. According to the Appellants,
“Cromwell makes no mention of a concern with thermal performance or
stress underneath the PCB.” Id. at 10. In addition, the Appellants argue that
“[m]odifying Cromwell to add a shim adds no value to the LGA assembly of
Cromwell.” Id. The Appellants further contend that Alcoe teaches away
from affixing the conformal member to an insulator. Id. at 13 (citing
Alcoe’s col. 4, ll. 60-64).
We do not find any of the Appellants’ arguments persuasive to show
reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[E]ven assuming that the examiner had failed to
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Application 11/844,935

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make a prima facie case, the Board would not have erred in framing the
issue as one of ‘reversible error.’”).
Cromwell’s Figure 1 is reproduced below:

Cromwell’s Figure 1 above depicts a LGA assembly in which a compressive
load is applied on one or more components of the assembly when a center
load screw 90 is turned. Col. 2, ll. 9-19. As shown in Cromwell’s Figure 1,
the assembly includes, inter alia, a compression plate 86, a modular
processor apparatus 50, a circuit board 30, an insulator 42 below the circuit
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Application 11/844,935

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44 in place. Therefore, by providing this conformal member,
additional unwanted stress is either eliminated or greatly
reduced, thereby contributing to the longer life and less
propensity for failure of the ball grid array component and
circuit board component when loaded under pressure needed for
good thermal performance and associated reliability.

Col. 4, l. 65 to col. 5, l. 13.
Given these disclosures, we agree with the Examiner that a person of
ordinary skill in the art would have been prompted to incorporate a
conformal member (i.e., a shim) as shown in Alcoe in Cromwell’s LGA
assembly in order to address the known problem of uneven load distribution
in LGA assemblies. Although Alcoe’s conformal member is used to address
the problem of undesirable additional stress in a BGA assembly, a person of
ordinary skill in the art would have expected such a conformal member to
also be useful in an LGA assembly where the same or similar compressive
stresses as in a BGA assembly are present. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”); id. at 420
(“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.”).
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Application 11/844,935

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The Appellants’ teaching away argument has no discernible merit.
Alcoe’s teaching that the “thermal conductivity of the conformal member 44
is not of prime importance” because “the principal thermal path is through
the heatsink, and not the backer member” would not have discouraged a
person of ordinary skill in the art from using the conformal member to
address the problem of eliminating or greatly reducing unwanted stress. Col.
4, ll. 61-64. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1382 (Fed.
Cir. 2007) (“Icon correctly states the principle that a reference teaches away
from a combination when using it in that combination would produce an
inoperative result . . . . But we do not ignore the modifications that one
skilled in the art would make to a device borrowed from the prior art.”)
(internal citation omitted).
For these reasons, we uphold the Examiner’s rejection.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 2, 4-
10, 20, and 21 as unpatentable over Cromwell and Alcoe is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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