Ex Parte PIEL et al

Board of Patent Appeals and Interferences

Oct 23, 2002

08998559 (B.P.A.I. Oct. 23, 2002)

-1-
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today was not written for publication and is not
binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOSEPH EDWARD PIEL, JR., ROBERT STEPHEN LEWANDOWSKI
and BRADY ANDREW JONES
________________
Appeal No. 2001-0018
Application 08/998,559
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 6-12, which constitute
all the claims remaining in the application. An amendment after
final rejection was filed on October 7, 1999 and was entered by
the examiner.
Appeal No. 2001-0018
Application 08/998,559
-2-
The disclosed invention pertains to a combined acoustic
backing and interconnect module for connecting an array of
ultrasonic transducer elements to a multiplicity of cable
conductors which utilizes the volume of the backing layer to
extend a high density of interconnections perpendicular to the
transducer array.
Representative claim 6 is reproduced as follows:
6. A combined acoustic backing and interconnect module
comprising:

a first flexible planar circuit board having a first
multiplicity of conductive traces, and support means attached to
opposing sides of a section of said first flexible circuit board
and having a planar surface extending generally perpendicular to
said section of said first flexible planar circuit board, an end
of each of said first multiplicity of conductive traces being
exposed at said planar surface of said support means, said
support means being made of acoustic damping material.
The examiner relies on the following reference:
Kawabe et al. (Kawabe) 4,825,115 Apr. 25, 1989
Claims 6-12 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Kawabe taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
Appeal No. 2001-0018
Application 08/998,559
-3-
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 6-12. Accordingly, we reverse.
Appellants have indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 3]. Consistent with this indication
appellants have made no separate arguments with respect to any of
the claims on appeal. Accordingly, all the claims before us will
stand or fall together. Note In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991, 217 USPQ 1, 3 (Fed. Cir. 1983). Therefore, we will consider
Appeal No. 2001-0018
Application 08/998,559
-4-
the rejection against independent claim 6 as representative of
all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Appeal No. 2001-0018
Application 08/998,559
-5-
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 1.192(a)].
With respect to representative, independent claim 6, the
examiner discusses what is disclosed by Kawabe, and the examiner
acknowledges that Kawabe teaches L-shaped circuit boards rather
than planar circuit boards as claimed. The examiner notes,
however, that Kawabe discloses the importance of reducing
reflections caused by the circuit boards. The examiner
determines that it would have been obvious to the artisan to use
Appeal No. 2001-0018
Application 08/998,559
-6-
planar circuit boards in Kawabe instead of the disclosed L-shaped
circuit boards for the purpose of reducing reflections [answer,
page 3].
Appellants argue that the circuit boards of Kawabe are
required to be bent into an L-shape in order to reduce reflection
at the bonding points 5 which are positioned at an edge portion
of the back electrode 2A. Appellants also argue that Kawabe does
not teach the claim recitation that an end of each of the first
multiplicity of conductive traces being exposed at the planar
surface of the support means. Appellants note that the bonding
in Kawabe is spaced inward from the end of the wiring line
[brief, pages 4-5].
The examiner responds that it would have been obvious to
the artisan to minimize the “L” part of the circuit board in
Kawabe to reduce reflections. The examiner finds that the
minimization of the contact area in Kawabe creates a planar
wiring board. The examiner also notes that an L-shaped wiring
board includes a planar portion, which meets the claimed
invention. The examiner also responds that the placement of the
contact area in Kawabe is simply the result of using an L-shaped
wiring board [answer, pages 3-4].
Appeal No. 2001-0018
Application 08/998,559
-7-
Appellants respond that the printed wiring board 6 of
Kawabe is truly L-shaped and includes an edge portion [reply
brief].
Based on the record before us, we do not sustain the
examiner’s rejection of claims 6-12. The examiner acknowledges
that the circuit board in Kawabe is L-shaped as argued by
appellants. Since Kawabe desires to minimize reflection, the
examiner proposes to minimize the L-portion of the circuit board
to the point where the circuit board becomes planar as claimed.
The examiner does not address the question of why Kawabe teaches
the minimization of reflection, yet Kawabe still requires that a
portion of the circuit board be folded into an L-shape. Kawabe
uses this L-shape portion of the circuit board to bond the
circuit board to the piezoelectric array. The examiner does not
indicate how Kawabe would bond a planar circuit board. Since
Kawabe was aware of the reflection problem but still chose to use
an L-shaped circuit board, the only suggestion for using a planar
circuit board as claimed comes from appellants’ own disclosure.
We also note that an L-shaped circuit board does not meet
the claim recitation of a planar circuit board as argued by the
examiner. While a portion of an L-shaped circuit board may be
planar as asserted by the examiner, the claim requires a “planar
Appeal No. 2001-0018
Application 08/998,559
-8-
circuit board,” not a planar circuit board portion. Therefore,
the examiner has failed to provide a proper factual record to
support his position of obviousness. Accordingly, the decision
of the examiner rejecting claims 6-12 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS/ki
Appeal No. 2001-0018
Application 08/998,559
-9-
General Electric Company
CRD Patent Docket RM 4A59
P.O. Box 8
Bldg K1 Salamone
Schenectady, NY 12301