Ex Parte Miller

Patent Trial and Appeal Board

May 20, 2016

13259081 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/259,081 09/22/2011 Joseph P. Miller
56436 7590 05/24/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82852981 9331
EXAMINER
CHEN, XIAOLIANG
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
05/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH P. MILLER
Appeal2014-009155
Application 13/259,081
Technology Center 2800
Before ERIC S. FRAHM, JOHN P. PINKERTON,
JAMES W. DEJMEK, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-5 and 16-25. Claims 6-15 have been withdrawn as being directed
to a non-elected invention (Final Act. 2). We have jurisdiction under 35
U.S.C. § 6(b). We reverse the Examiner's written description and
enablement rejections of claim 24, and affirm the Examiner's obviousness
rejection of claims 1-5 and 16-25. Therefore, because we sustain at least
one rejection as to every claim, we affirm.
Appeal2009-013324
Application 11/123,435
Appellant's Disclosed Invention
It is desirable to backdrill circuit boards having multiple layers and
signal traces using a drill bit to remove unneeded stubs (Spec. i-fi-f l-3, 16,
and 17; Figs. 3 and 4). A backdrill verification feature is used in order to
test for missed or improperly drilled holes in the circuit board (Spec. i123).
Appellant's disclosed and claimed invention is a circuit board (14 in Fig. 5)
including a signal trace 50 on an inner layer, a via hole 52, conductive
material 54 in the via hole 52, and a backdrill verification feature 56 on an
outer layer 48 (Title; Abs.; Spec. i-fi-123-25, 28, and 29; claim 1 ).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphasis added:
1. A circuit board comprising:
a first signal trace present on a first inner layer of the
circuit board;
a via hole drilled through the circuit board and intersecting
the first signal trace;
conductive material in the via hole and in electrical contact
with the first signal trace; and
a first back drill verification feature on a first outer layer
of the circuit board, wherein the first inner layer and the first
outer layer are different layers, and wherein the first back drill
verification feature intersects a single via hole.
The Examiner's Rejections
(1) The Examiner rejected claim 24 under 35 U.S.C. § 112, first
paragraph, as failing to provide adequate written description of the claimed
invention so as to reasonably convey to one skilled in the relevant art that
the inventors had possession of the claimed invention at the time the
application was filed (Final Act. 3--4; Ans. 5-7). Specifically, the Examiner
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Application 11/123,435
determined that the Specification lacks support for the recitation of "wherein
the back drill verification feature is in electrical contact with the first signal
trace," as recited in claim 24 (Final Act. 4; Ans. 5-7).
(2) The Examiner rejected claim 24 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement based on
the Examiner's determination that paragraphs 28, 38, and 48 of Appellant's
Specification supports a backdrill verification feature not being in electrical
contact with a signal trace, as opposed to being in electrical contract as
recited in claim 24 (Final Act. 3; Ans. 3-5). Thus, the Examiner determined
that the Specification fails to enable one of ordinary skill in the art to make
and/or use the back drill verification feature being in electrical contact with
the first signal trace, as recited in claim 24 (Final Act. 3).
(3) The Examiner rejected claims 1-5 and 16-25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of van der Laan (US
2004/0118605 Al; published Jun. 24, 2004) and Farkas (US 2008/0087461
Al; published Apr. 17, 2008). Final Act. 4--10.
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Application 11/123,435
ISSUES
First Issue: Written Description
Based on Appellant's arguments (App. Br. 8; Reply Br. 5---6), the
following written description issue is presented:
(1) Did the Examiner err in rejecting claim 24 as lacking written
description support for the recitation of "wherein the back drill verification
feature is in electrical contact with the first signal trace" on the basis that the
Specification as originally filed and supported by the priority application did
not reasonably convey to one skilled in the relevant art that the inventor had
possession of the claimed invention at the time the application was
effectively filed?
Second Issue: Enablement
Based on Appellant's arguments (App. Br. 7-8; Reply Br. 4--5), the
following enablement issue is presented:
(2) Did the Examiner err in rejecting claim 24 because the
Specification fails to enable one of ordinary skill in the art at the time of
Appellant's invention to make and/or use the circuit board including the
backdrill verification feature being in electrical contact with the first signal
trace, as recited in claim 24?
Third Issue: Obviousness
Based on Appellant's arguments (App. Br. 9-11; Reply Br. 2--4), the
following obviousness issue is presented: 1
1 Based on Appellant's arguments (App. Br. 9-11; Reply Br. 2--4) with
regard to the obviousness rejection of claims 1-5 and 16-25, we select claim
1 as representative of the group of claims rejected over van der Laan and
Farkas. Notably, Appellant only presents arguments as to claims 1 and 5,
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Application 11/123,435
(3) Did the Examiner err in rejecting claims 1-5 and 16-25 under 35
U.S.C. § 103(a) because the combination of van der Laan and Farkas, and
specifically Farkas, fails to disclose the backdrill verification feature on an
outer layer of a circuit board as recited in representative claim 1?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-13) in light
of Appellant's contentions in the Appeal Brief (App. Br. 7-12) and the
Reply Brief (Reply Br. 2-7) that the Examiner has erred, as well as the
Examiner's response to Appellant's arguments in the Appeal Brief (see Ans.
2-8).
We agree with Appellant's conclusions that the Examiner erred in
rejecting claim 24 under 35 U.S.C. § 112, first paragraph, as failing to
provide either: (i) an adequate written description of, and/or (ii) an enabling
disclosure of how to make and/or use the invention recited in claim 24.
However, we disagree with Appellant's conclusions with regard to the
obviousness rejection of claims 1-5 and 16-25 over van der Laan and
Farkas. As to the obviousness rejection of representative claim 1, we adopt
as our own: (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 4--6), and (2) the reasons
and relies on the arguments for claim 1 with regard to the patentability of
claim 5. In other words, no separate arguments are provided with regard to
claims 2--4 and 16-25.
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Application 11/123,435
set forth by the Examiner in the Examiner's Answer in response to
Appellant's Appeal Brief (Ans. 7-8).
§ 112, First Paragraph, Rejections
The examiner ... "bears the initial burden ... of presenting
a prima facie case of unpatentability." In re Oetiker, 977, F .2d
1443, 1445 ... (Fed. Cir. 1992). Insofar as the written
description requirement is concerned, that burden is discharged
by "presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims." [In re] Wertheim, 541 F.2d
[257], 263 (CCPA 1976)]. Thus, the burden placed on the
examiner varies, depending upon what the applicant claims. If
the applicant claims embodiments of the invention that are
completely outside the scope of the specification, then the
examiner or Board need only establish this fact to make out a
prima facie case. Id. at 263-264 ....
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (parallel citations omitted).
In the instant case, the Examiner has not met this burden by merely
concluding that the Specification does not provide support for the recitation
of independent claim 1 of "the order being character-based."
Under 35 U.S.C. § 112, first paragraph, to satisfy the written
description requirement, "the disclosure of the application relied upon
[must] reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (citations omitted); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563---64 (Fed. Cir. 1991) (" [T]he applicant must ... convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention."). In other words, the
Examiner has the initial burden of presenting evidence or reasons why
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Application 11/123,435
persons skilled in the art would not recognize in an applicant's disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F .2d
257, 265 (CCPA 1976).
Thus, the written description requirement requires us to determine
"whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language." In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983) (citations omitted) (emphasis added).
Because Figure 5 of the Specification shows a backdrill verification
feature 56 that is in electrical contact with a signal trace 50 via conductive
material 54, the originally filed Specification reasonably conveys to one of
ordinary skill in the art that Appellant had possession of the disputed
limitation recited in claim 24.
Accordingly, we do not sustain the Examiner's written description
rejection of claim 24. And, for similar reasons, in addition to reasons that
follow, we also do not sustain the Examiner's enablement rejection of claim
24.
"[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (citations omitted). See also In re Vaeck, 947 F.2d 488, 496 (Fed.
Cir. 1991) (the specification must teach those of ordinary skill "how to make
and how to use the invention as broadly as it is claimed"). Based on the
record before us, Appellant's Specification would reasonably convey to one
of ordinary skill in the art at the time of Appellant's invention the ability to
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Application 11/123,435
understand, make, and/or use the backdrill verification feature recited in
claim 24 as being in electrical contract with the signal trace.
Obviousness Rejection
We disagree with Appellant's conclusion regarding the obviousness
rejection of claims 1-5 and 16-25. With regard to representative claim 1,
we adopt as our own ( 1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 4--6), and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellant's Appeal Brief (Ans. 7-8). We highlight and amplify certain
teachings and suggestions of Farkas as follows.
Farkas (Figs. 3a and 4a) shows a backdrill verification feature on an
outer layer of a multiple layer circuit board (see also Abs.) as described in
paragraphs 22-25. Specifically, from the bottom of Figure 4a, one of
ordinary skill in the art would understand that the drill bit 18 proceeds up
through, first a backdrill verification feature, then an outer layer of the
circuit board, and finally through a signal trace 15. In this light, Appellant's
arguments (App. Br. 9-10; Reply Br. 2--4) that Farkas, and, thus, the
combination of van der Laan and Farkas, fails to disclose the backdrill
verification feature on an outer layer of a circuit board as recited in claim 1,
are unpersuasive.
Appellant's arguments (App. Br. 10; Reply Br. 4) that there is no
motivation to combine Farkas with van der Laan are not persuasive in light
of the Examiner's cogent and well-articulated reasoning found at pages 7-8
of the Answer and page 5 of the Final Rejection.
In view of all of the foregoing, we sustain the obviousness rejection of
representative claim 1, as well as claims 2-5 and 16-25 grouped therewith,
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Application 11/123,435
over the combination of van der Laan and Farkas.
CONCLUSIONS
(1) The Examiner erred in rejecting claim 24 as being unpatentable
under 35 U.S.C. § 112 for lack of written description support in the
Specification and for lack of an enabling disclosure of how to make and/or
use the invention.
(2) The Examiner did not err in rejecting claims 1-5 and 16-25 under
35 U.S.C. § 103(a) as being unpatentable over the combination of van der
Laan and Farkas because Farkas discloses a circuit board with a backdrill
verification feature having an outer layer, as recited in representative
claim 1.
DECISION
(1) The Examiner's rejections of claim 24 under 35 U.S.C. § 112, first
paragraph, as failing to (a) provide adequate written description of the
claimed invention, and (b) enable one of ordinary skill in the art at the time
of Appellant's invention to make and/or use the invention recited in claim
24, are reversed.
(2) The Examiner's obviousness rejection of claims 1-5 and 16-25 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)(l )(iv).
AFFIRMED
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