Ex Parte Olson

Patent Trial and Appeal Board

Sep 13, 2016

12893007 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/893,007 09/29/2010
75742 7590 09/13/2016
MUETING, RAASCH & GEBHARDT, P.A.
P.O. Box 581336
Minneapolis, MN 55458-1336
FIRST NAMED INVENTOR
Scott Eugene Olson
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.
430.16216010 3302
EXAMINER
LAFLAME JR, MICHAEL A
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
09/13/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT EUGENE OLSON
Appeal2014-003402
Application 12/893,007
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott Eugene Olson (Appellant) 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision2 to reject claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies the real party in interest as Seagate Technology LLC.
App. Br. 2.
2 Appeal is taken from the Final Office Action dated February 27, 2013
("Final Act.").
Appeal2014-003402
Application 12/893,007
CLAIMED SUBJECT MATTER
Claims 1, 9, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A device comprising:
a substrate having a first surface and a second
opposing surface; and
at least one electrical connection assembly, wherein
each electrical connection assembly comprises:
a resistive heater disposed on the first surface
of the substrate, wherein the resistive heater is
electrically connected to a circuit via a heater
electrical connection;
an electrical connection precursor, wherein
the electrical connection precursor comprises a
fusible conductive material that is electrically
connected to a lead; and
a first insulating layer,
where the resistive heater is disposed beneath
the electrical connection precursor, wherein the first
insulating layer functions to electrically insulate the
resistive heater and the heater electrical connection
from the electrical connection precursors and the
lead, and wherein activation of the resistive heater
functions to at least partially flow the fusible
conductive material,
wherein each electrical connection assembly
can be activated individually by passing a current
through the resistive heater.
THE REJECTIONS
I. Claims 1-3, 9, 11, and 15-17 stand rejected under 35 U.S.C. §102(b)
as anticipated by Pan (US 6,423,939 Bl; iss. July 23, 2002).
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Application 12/893,007
II. Claims 4, 5, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pan and Reiber (US 200710131661 Al; pub. June 14,
2007).
III. Claims 6, 7, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pan and Shirai (US 2008/0172871 Al; pub. July 24,
2008).
IV. Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pan and Devey (US 2008/0156789 Al; pub. July 3, 2008).
V. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pan and Wan (2005/0122100 Al; pub. June 9, 2005).
VI. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pan and Iben (2006/0018070 Al; pub. Jan. 26, 2006).
VII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pan and Lemmerhirt (2003/0178403 Al; pub. Sept. 25, 2003).
OPINION
Rejection I
Independent claims 1, 9, and 15 and dependent claims 2, 11, 16, and 17
Regarding independent claim 1, the Examiner finds that Pan teaches
the claimed subject matter, referencing Pan's Figure 2. Final Act. 2-3
(citing Pan 2: 13-29, 3: 17-31, Fig. 2). 3 Additionally, with reference to
Figure 3, the Examiner finds that Pan's insulator layer 130 corresponds to
the claimed first insulating layer, Pan's solder 136 and under bump metal
(UBM) layer 134 correspond to the claimed electrical connection precursor
3 The Examiner makes the same findings for independent claims 9 and 15.
Id. at 3--4, 5-6.
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Application 12/893,007
and lead, and Pan's resistive portions 124b of heating circuit layer 125
correspond to the claimed resistive heaters. Ans. 2. The Examiner also
determines that Pan's insulator layer 130 is between and electrically
insulates resistive heater 124b from electrical precursor 136 and lead 134.
Id.
First, regarding independent claims 1, 9, and 15, Appellant argues that
the Examiner has failed to establish a prima facie case of anticipation,
because the Examiner failed to articulate "which element of Pan is allegedly
equivalent to the first insulating layer of claim 1" or to identify, with any
specificity, the structures in Pan that correspond to the claimed "electrical
connection assembly." App. Br. 12. However, the Examiner's Answer
clarifies that the Examiner finds Pan's insulator layer 130 as corresponding
to the claimed first insulating layer, as stated supra, and although this
finding is with respect to the insulating layer depicted in Figure 3, Pan states
that "for convenience, portions of the module 102b of FIG. 3 that are similar
to portions of the module 102 of FIG. 2 are assigned the same reference
numerals." Pan 4:20-23. 4 Notably, Pan's Figure 2 depicts insulating layer
130. Similarly, in the Examiner's Answer, the Examiner provides
corresponding structures in Pan for the electrical connection assembly, as
stated supra. Thus, we determine that the Examiner has sufficiently
identified insulating layer 13 0 as corresponding to the claimed first
insulating layer, solder 136 as corresponding to the fusible conductive
material of the claimed electrical connection precursor, UBM layer 134 as
corresponding to the lead of the claimed electrical connection precursor, and
4 Appellants chose to address the Examiner's clarifications by filing a Reply
Brief.
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Appeal2014-003402
Application 12/893,007
resistor portion I24a or I24b of resistor layer 124 (Figure 2) or heating
circuit layer 125 (Figure 3), as corresponding to the claimed resistive heater.
Further, Pan's resistor portions 124a, 124b are disposed beneath solder 136
(or the electrical connection precursor), and Pan's insulating layer 130
functions to electrically insulate Pan's resistor portions 124a, 124b and
current path 150 from solder 136 and UMB layer 134 (or the lead). See Pan,
Figs. 2, 3.
Second, Appellants contend that the Examiner reversibly erred by
relying on two different embodiments in Pan, as depicted in Figures 2 and 3,
in support of an anticipation rejection. Reply Br. 3. However, we
understand the Examiner's rejection to be based separately on either the
embodiment depicted in Pan's Figure 2 or the embodiment depicted in Pan's
Figure 3, but not on a combination of elements from the two embodiments.
Finally, Appellant argues that, in Pan, the embodiments "do[] not
disclose or suggest [that] 'each electrical connection assembly can be
activated individually by passing a current through the resistive heater,"' as
required by the independent claims. Reply Br. 2. In support, Appellant
submits that
current line 150 of figure 2 electrically connects, i.e., runs from
one resistive heater to another. Therefore the resistive heaters
are not electrically isolated because each of them is in electrical
and physical connection with the conductive layer 126. . . .
[T]here is no process or device ... that could function to stop the
flow of electricity from one resistive heater 124a to another 124b,
therefore the resistive heaters in figure 2 of Pan cannot be
activated individually by passing a current through the resistive
heater. The same can be said of the resistive heaters 124a, 124b,
etc. in figure 3 of Pan.
Id. at 4.
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Appeal2014-003402
Application 12/893,007
Appellant's argument is not commensurate in scope with the claimed
subject matter. The claims, as written, do not require each of the electrical
connection assemblies to be electrically isolated from each other. Instead,
the claims require individual activation of each electrical connection
assembly (of the at least one electrical connection assembly) by passing a
current through the resistive heater associated with that electrical connection
assembly. In Figure 2, Pan discloses that "current path 150 includes
portions of the resistor layer generally pointed to by reference numeral
124a" (Pan 3:33-35) and that "[a]reas in the current 150 flow[ing] through
the portions 124a of the resistor layer 124 are generally indicated by
reference numeral 128" (id. at 3:43--45). Areas 128 are depicted as discrete,
individual, separate "heating areas." Id. at 3:48--49. Thus, Pan discloses
that each electrical connection assembly, which includes each of Pan's
resistor portions 124a and the solder 136 and lead 134, and insulating layer
130 portion associated with such resistor portion 124a, are individually (or
singly or separately) activated by passing a current through its particular
resistor portion 124a, albeit by a common current 150. In other words,
activating the electrical connection assembly associated with one resistor
portion 124a by passing a current through that resistor portion 124a does not
activate a neighboring electrical connection assembly, but rather, current
must also be passed through the neighboring resistor portion 124a to activate
the neighboring electrical connection assembly. Similarly, as depicted in
Pan's Figure 3, resistor portions 124b of heating circuit layer 125 represent
individual resistive heaters with associated solder 136 and lead 134, and
insulating layer 130 (together, an individual electrical connection assembly),
which are individually activated by passing a current through each resistor
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Application 12/893,007
portion I24b, albeit by a common circuit or on a single heating circuit layer
125. See Pan 4: 17-27. Moreover, although the electrical connection
assemblies in Pan are individual structures, and therefore, may be
individually activated, the claim language is met by any single one of Pan's
electrical connection assemblies alone, as depicted in either Figures 2 or 3,
in that the claims do not require more than one electrical connection
assembly, but rather,"at least one." See claim 1 stated supra.
Accordingly, we sustain the Examiner's rejection of independent
claims 1, 9, and 15. Appellant chose not to present separate arguments for
the patentability of claims 2, 3, 11, 16, and 17 depending therefrom;
therefore, we also sustain the Examiner's rejection of claims 2, 3, 11, 16,
and 17.
Dependent claim 3
The Examiner concludes that the "bumps" extending downwardly
from insulating layer 130 into heating area 128 and between resistive heaters
124a of Pan correspond to the claimed second insulating layer that
electrically isolates the resistive heater of one electrical connection assembly
from the resistive heater of another electrical connection assembly. Ans. 3
(citing Pan Fig. 2); see also Final Act. 3 (citing Pan 3:60-67). However,
Appellant correctly argues that "insulator layer 130 does not function to
electrically isolate the alleged resistive heater of one electrical connection
assembly from the alleged resistive heater of another electrical connection
assembly, as is recited in claim 3," but rather, "Figure 2 of Pan specifically
shows the current path 150 that flows from one alleged resistive heater to
another." App. Br. 13. Figure 3 of Pan also does not cure this deficiency in
the Examiner's finding.
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Application 12/893,007
Accordingly, we do not sustain the Examiner's rejection of claim 3.
Rejections II-VII
Appellant argues that claims 4--8, 10, 12-14, and 18-20 are patentable
due to their pendency from independent claims 1, 9, or 15, and for the
arguments presented supra. App. Br. 14--18. For the reasons stated supra,
we sustain the Examiner's rejection of claims 4--8, 10, 12-14, and 18-20.
DECISION
The Examiner's decision to reject claims 1, 2, 9, 11, and 15-17 under
35 U.S.C. §102(b) is AFFIRMED.
The Examiner's decision to reject claim 3 under 35 U.S.C. § 102(b) is
REVERSED.
The Examiner's decision to reject claims 4--8, 10, 12-14, and 18-20
under 35 U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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