Ex Parte Mccann

Board of Patent Appeals and Interferences

Mar 8, 2002

08582678 (B.P.A.I. Mar. 8, 2002)

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is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CARL D. McCANN
____________
Appeal No. 1999-2226
Application No. 08/582,678
____________
Before GARRIS, DELMENDO, and PAWLIKOWSKI, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final rejection of
claims 1-10, 20 and 21, which are all of the claims pending in this application. Claims 11-19
have been canceled.
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Application No. 08/582,678
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1Claims 1 and 21 as set forth in the Appendix to the brief are incorrect. They have been
reproduced in this decision correctly. Specifically, in Paper No. 14, claim 1 was amended to
include the phrase “to form said pack tray” at the end, yet this phrase was not underlined. This
informal amendment should be formalized in any further prosecution of this application. (This
amendment was formally proposed in an after final amendment in the parent case, but was not
entered.) Appellant also quotes this language as being recited in the claim; see the end of the
first paragraph on page 12 of the brief. Claim 21, line 3 “with” should be --and--; this is clearly a
copying error from claim 21 presented in Paper No. 14.
BACKGROUND
The subject matter on appeal relates to a method of fabricating a pack tray for integrated
circuit chip packages. The pack tray is intended to be used for shipping integrated circuit chip
packages. The method steps include providing a master frame, providing a plurality of modules
that are separate from the master frame, and securing the plurality of modules in the master frame
to form the pack tray.
Claims 1, 7 and 21 are representative of the claims on appeal and are reproduced below1:
1. A method of fabricating a pack tray for integrated circuit chip packages comprising the
steps of:
providing a master frame;
providing a plurality of modules that are separate from said master frame; and
securing said plurality of modules in said master frame to form said pack tray.
7. The method of Claim 1 wherein said step for securing includes flowing plastic around
said plurality of modules in said master frame.
21. A method of fabricating a pack tray for integrated circuit chip packages comprising
the steps of :
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forming a master frame and a plurality of modules that are separate from said master
frame;
placing said plurality of modules in said master frame; and
securing said plurality of modules to said master frame to form said pack tray.
The prior art relied upon by the Examiner as evidence of obviousness is:
Murphy5,103,976Apr. 14, 1992
The admitted prior art as stated on pages 1-2 of the instant specification (AAPA).
Claims 1-10, 20 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Murphy in view of AAPA.
As Appellant states on page 6 of his brief, there are three claim groupings. Claims 1-6, 8-
10 and 20 all stand or fall together; claims 7 and 21 are each to be treated separately. Therefore,
our discussion will focus on claim 1 as the broadest claim of the first group, and on claims 7 and
21; 37 CFR § 1.192(c)(7)(1997).
We refer to the brief and to the answer for a complete exposition of the opposing
viewpoints expressed by the Appellant and by the Examiner concerning the above noted
rejections.
OPINION
We affirm the rejections of claims 1-6, 8-10, 20 and 21 for the reasons stated below.
However, we will not sustain the rejection of claim 7.
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We agree with the Examiner, as set out on pages 3-5 of the answer, that Murphy
substantially teaches the basic claimed process of forming a tray for the shipping of electronic
components. Upon a careful review of the reference, Murphy provides a “master frame” (i.e.,
tray 10), provides a plurality of “modules” separate from the master tray (i.e., the templates 80,
81), and “secures” the plurality of modules (templates 80, 81) in the master frame (tray 10) to
form the pack tray.
Appellant argues the claimed subject matter differs from Murphy because the templates
(e.g., 80, 81) are not secured in the master frame, that is, the tray 10 of Murphy. The Appellant's
position is that his modules are secured to and become a part of the tray. Therefore, a pivotal
consideration on this appeal is the meaning of “securing” the modules in the master frame. For
the reasons detailed below, we agree with the Examiner that neither claim 1 nor claim 21 defines
over the tray and templates of Murphy.
It is well settled that application claims, in proceedings before the USPTO, are to be
given their broadest reasonable interpretation consistent with the specification. In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Thus, we look to Appellant’s
specification for guidance in interpreting the claim language.
We find that at page 2, lines 13 and 14, of the specification, Appellant broadly discloses
“securing the plurality of modules in the master frame” and then at lines 19-22 discloses “[i]n
one fabrication process....To secure the modules in the master frame, plastic is then flowed
around the plurality of modules....” (emphasis provided). Appellant also discloses in the flow
diagram of Fig. 2, in box 26, “secure modules to master frame”.
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2Webster’s II New Riverside University Dictionary, 1984, page 433, defines “engage -...7.
To interlock or cause to interlock...”(emphasis provided) (copy of dictionary definitions
attached).
Since Appellant clearly discloses that flowing plastic is but one way to secure the
modules (indeed, this is a further limitation recited in dependent claim 7), and provides no
further definition of what he means by “securing,” we look to the dictionary definition.
Webster’s II New Riverside University Dictionary, 1984, defines “secure” at page 1055 “to make
tight or firm : FASTEN” (copy of dictionary definition attached to this decision).
Are the templates of Murphy secured, that is, fastened (or made tight or firm), to the tray
10? We conclude that they are. Murphy teaches (see col. 7, line 68 to col 8, line 20) that (1) the
template has a vertical keyway 83; (2) the vertical keyway 83 engages2 a key 92 on the tray 10;
(3) a slot 91 in the template engages the central beam 31 of the tray 10; and (4) fingers 84 and 85
on the template engage the front beam 25 and back beam 26, respectively, of the tray 10
(emphasis provided). Clearly, the template is secured, or fastened, or made tight or firm, to the
tray 10 against movement in many directions. Indeed, the template can be moved only in one
direction, which is vertically upward. The independent claims on appeal do not expressly or
implicitly prohibit this one direction movement.
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3Webster’s II New Riverside University Dictionary, 1984, page 663, defines “key -...4. A
device, as a wedge or pin, inserted to lock together structural or mechanical parts...” and
“keyway - 1. A slot in a wheel hub or shaft for a key...”(emphasis provided) (copy of dictionary
definitions attached).
Furthermore, the dictionary definitions of “key” and “keyway” relate to a combination of
structural elements intended to secure one piece to another.3 Thus, it is reasonable to regard the
key 92 and keyway 83 as means for securing, or engaging, the template to the tray 10 of Murphy.
In light of the foregoing, it is reasonable and consistent with the specification to interpret
the securing step of claim 1 to include the various ways that templates 80, 81, engage the tray 10
of Murphy. We here emphasize that Appellant could have further defined the scope of
"securing" by making it clear in the specification what is regarded as securing. However,
Appellant did not do this.
Appellant urges us to consider that “fabricating a pack tray” clearly indicates that the
plurality of modules become part of the pack tray, and that the temporary placement of the
templates of Murphy onto the tray 10 do not make them a part of the tray. (see reply brief, pages
2-3). We disagree.
This Board panel concludes that, plainly, the templates do indeed become a part of the
pack tray, even if only temporarily. That is, the pack tray resulting from the method of
independent claims 1 and 21 is structurally indistinguishable from the template and tray
combination of Murphy. While we recognize that patentee does not intend for his templates to
be permanently engaged with or secured to his tray, the independent claims do not require the
“securing” step to result in permanence. Indeed, the subject specification does not appear to
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address the issue of whether the here claimed “securing” is intended to be permanent or
temporary. In any event, it is appropriate to here emphasize that it has been decided that it is an
error for this Board to add “inferential limitations” to applicant’s claims. See In re Priest, 582
F.2d 33, 37-38, 199 USPQ 11, 15 (CCPA 1978).
Thus, the independent claims on appeal do not recite that the modules are permanently
secured to the frame, and it would be improper to read any such limitation into these claims.
Likewise, Appellant’s arguments that modules and templates have functions “completely
different” from one another (see pages 3-4 of reply brief) are not in any way reflected by the
claim language. The claim does not recite any function for the modules. Accordingly, it would
be improper to read the function of “each ‘module’ stores a single chip”(reply brief, page 4) into
the claim.
Furthermore, it has been established that it is appropriate to reject a chemical process
claim that recites no steps not disclosed in a prior patent, even if a new product may be obtained,
since it must be due to some step not included in the claim. See In re Sussman, 141 F.2d 267,
270, 60 USPQ 538, 541 (CCPA 1944).
The here claimed process likewise recites no steps not disclosed in a prior patent, that is,
Murphy. Although Appellant argues he fabricates a pack tray different from Murphy’s, we can
not find any claim language supporting this argument. If Appellant does ultimately fabricate a
different pack tray from Murphy’s, it must be due to some step not included in claim 1.
With respect to claim 21, its language is substantially the same as claim 1. However,
claim 21 calls for the additional step of “placing said plurality of modules in said master frame.”
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We conclude that a reasonable interpretation of this language encompasses placing the templates
80, 81 onto the tray 10 of Murphy. The step of engaging patentee’s key 92 with keyway 83, the
slot 91 with the beam 31, and so on, satisfies the step of “securing said plurality of modules in
said master frame to form said pack tray.”
In our analysis of the Examiner’s § 103 rejection of claims 1 and 21, we have not relied
upon AAPA. In fact, this analysis leads us to conclude that claims 1 and 21 lack novelty with
respect to Murphy. Nevertheless, it has been firmly established that a lack of novelty is the
ultimate of obviousness, and evidence establishing a lack of novelty in a claimed invention
necessarily evidences obviousness. See In re Fracalossi, 681 F. 2d 792, 794, 215 USPQ 569, 571
(CCPA 1982).
Thus, for the reasons detailed above, it is appropriate to sustain the Examiner’s § 103
rejection of claims 1 and 21 as being unpatentable over Murphy in view of AAPA.
However, we agree with the Appellant that there is no motivation to secure the templates
of Murphy to the tray 10 by flowing plastic around said plurality of modules (i.e., templates) in
said master frame (i.e., tray 10), as recited in claim 7. Although AAPA teaches that one flows
plastic around the metal master mold, there is no disclosure of why this step is performed.
Apparently, it is not for the purpose of securing parts of the packing tray together since the
packing tray of the admitted prior art is a single metal piece machined to provide apertures,
ridges, and recessed areas. In any event, Murphy does not teach that the templates remain
attached to the tray after facilitating the packing of the chips into the tray 10. Thus, no reason
exists for combining the teachings of Murphy and AAPA. Under these circumstances, we cannot
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accept the Examiner’s apparent position that it would have been prima facie obvious to secure
the templates to the tray in Murphy by flowing plastic around same.
In light of the foregoing, we cannot sustain the Examiner’s § 103 rejection of claim 7.
CONCLUSION
The decision of the Examiner to reject claims 1-6, 8-10, 20 and 21 under 35 U.S.C. § 103
over Murphy in view of AAPA is affirmed. The decision of the Examiner to reject claim 7 under
35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
BRG/tdl
Appeal No. 1999-2226
Application No. 08/582,678
Page 1
Jeanette S. Harms
Xilinix Inc.
2100 Logic Drive
San Jose, CA 95124