Ex Parte Olesiewicz et al

Patent Trial and Appeal Board

Oct 23, 2012

12043259 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY W. OLESIEWICZ, DAVID W. HARTWELL, and
BRETT C. ONG
____________

Appeal 2010-004356
Application 12/043,259
Technology Center 2800
____________

Before CAROLYN D. THOMAS, THU A. DANG, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/043,259

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-17, 21, and 22 (App. Br. 4). Claims 18-20 were cancelled (id.).
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Exemplary Claim 1 follows:
1. A mezzanine board alignment and mounting
device comprising:

a multi-stage pin connected to a main board near a
mezzanine board connector disposed on the main board;

the multistage pin comprising:

a base adapted to connect to the main board;

a point distal to the base adapted to pass through an
opening on a mezzanine board; and

a support with a flat upper surface disposed between the
base and the point,

wherein a diameter of the point widens towards the
support,

wherein a diameter of the support is wider than a
diameter of the opening and acts as a positive stop to the
passing of the multistage pin through the opening, and

wherein when the joint is fully inserted through the
opening in the mezzanine board, the mezzanine board is aligned
properly to connect with the mezzanine board connector on the
main board and the mezzanine board rests on the flat upper
surface of the support.
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Claims 1, 2, 4-6, 8-16, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Crowley (U.S. 5,963,432) and Noschese
(U.S. 5,575,686) (Ans. 3-9).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley in view of Noschese and Fathauer (U.S. Pat. Pub.
2008/0089044 A1) (Ans. 9-10).
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley in view of Noschese and Stucke (U.S. 5,335,146)
(Ans. 10-11).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowley in view of Noschese and Meserth (U.S. Pat. Pub.
2007/0014085) (Ans. 11).

ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner err in finding that Crowley teaches or suggests a
support with a flat upper surface disposed between the base and the point of
a multi-stage pin, in which the support acts as a positive stop to the passing
of the multistage pin through an opening of a mezzanine board, as required
by independent claim 1?

ANALYSIS
The Examiner found that item 220 in the apparatus of FIG. 5 of
Crowley renders obvious the support recited in claim 1 (Ans. 4). Although
the Examiner acknowledged that item 220 does not have a flat upper surface,
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the Examiner nonetheless “pointed out the upper surface of 210 having a flat
surface, so the mounting surface of 220 could modified [sic] to a flat
surface” (id. at 12). Appellants argue that “there exists no reasonable
support for the Examiner’s proposed modification, as the Examiner is
indiscriminately selecting separate and distinct features from the opposite
ends of the standoff pin 200 in Crowley and modifying so as to depart from
their described function” (App. Br. 14). We agree with Appellants.
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004).
"A factfinder should be aware . . . of the distortion caused by hindsight bias
and must be cautious of arguments reliant upon ex post reasoning." KSR
Int'l v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007) (citing Graham v. John
Deere Co., 383 U.S. 1, 36 (1966)). In other words, "[i]t is impermissible to
use the claimed invention as an instruction manual or 'template' to piece
together the teachings of the prior art so that the claimed invention is
rendered obvious." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(quoting In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Consequently,
"there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (citing In re Lee, 277 F.3d 1338, 1343-46 (Fed. Cir.
2002); In re Rouffet, 149 F.3d 1350, 1355-59 (Fed. Cir. 1998)).
Here, we find that the Examiner has merely used the claimed
invention as an instruction manual to make the modifications, as the
Examiner has not provided a rational explanation as to why one of ordinary
skill in the art would have made the upper surface of item 210 flat so that it
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could act as a positive stop (see Ans. 4-5 and 11-13). Accordingly, we find
error in the Examiner’s obviousness rejection of claim 1 as well as the
claims dependent therefrom (i.e., claims 2-17, 21 and 22) because the
Examiner did not find that any other reference teaches the claim limitation
that is missing from Crowley (see Ans. 4-13).

DECISION
We reverse the Examiner’s decision rejecting claims 1-17, 21, and 22
as obvious.

REVERSED

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