Ex Parte Prokofiev

Board of Patent Appeals and Interferences

Oct 20, 2008

10787681 (B.P.A.I. Oct. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VICTOR PROKOFIEV
____________

Appeal 2008-3248
Application 10/787,681
Technology Center 2800
____________

Decided: October 20, 2008
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and MARC S. HOFF,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-4, 11, 12, 20-24, and 29. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

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Application 10/787,681

STATEMENT OF THE CASE
Appellant invented a method, socket, and socket integrated circuit
package. The method, socket, and package include a socket pin with spring
arms extending away from one another and fitting into a via located in an
integrated circuit package. The opposed end of the pin may also have a pair
of spring arms to connect the integrated circuits to the printed circuit
boards.1 Independent claim 1 is reproduced below:
1. A method comprising:

inserting a socket pin including at least two resilient spring
arms extending away from one another into a via in an integrated
circuit package.

The Examiner relies upon the following as evidence in support of the
rejection:
Mogi US 4,872,850 Oct. 10, 1989

(1) Claims 1-4, 20-24, and 29 stand rejected under 35 U.S.C.
§ 102(b)2 as being anticipated by Mogi.
(2) Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mogi.

1 See generally Spec. 2:13-3:16 and 4:23-27.
2 The Examiner acknowledges on page 4 of the Answer the typographical
error in the Office Action that based the rejection on paragraph (e) of section
102. The grounds of the rejection is actually based on 35 U.S.C. § 102(b).
Additionally, we presume the Examiner intended to refer to the Final Office
Action mailed November 6, 2006 and not the Advisory Action mailed April
4, 2007, which contains no rejection or reference to paragraph (e) of section
102.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs3 and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments, which Appellant could have made but did not make
in the Briefs, have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

Claims 1-4, 20-24, and 29
We first turn the rejection of independent claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Mogi. The Examiner finds that Mogi
discloses all the recited elements (Ans. 4). Appellant argues that the
anticipation rejection improperly relies on common knowledge (App. Br. 10;
Reply Br. 1-2) and that Mogi does not disclose the spring arms extending
into a via in an integrated circuit package (App. Br. 10; Reply Br. 2).

ISSUE
The following issue has been raised in the present appeal:
Whether Appellant has shown that the Examiner erred in finding that
Mogi discloses two resilient spring arms extending into a via in an integrated
circuit package.

3 We refer to the Appeal Brief filed June 21, 2007, and the Reply Brief filed
October 9, 2007, throughout this opinion.
4 We refer to the Examiner’s Answer mailed August 31, 2007, throughout
this opinion.
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Mogi discloses an integrated circuit (IC) tester socket with a pin 6
having two resilient spring arms 6-1 and 6-2 (Mogi; col. 4, ll. 22, 35,
54-56 and col. 7, ll. 2-5; Figs. 5A-8).
2. Mogi discloses the IC tester socket includes an IC package P, a socket
body 1, a spacing frame 2, and an urging cover 3 (Mogi, col. 3, ll. 51-
55 and col. 4, ll. 24-29; Figs. 3-4).
3. Mogi discloses the socket body 1, the spacing frame 2, and the urging
cover 3 are made from PPS resin (Mogi, col. 4, ll. 48-52).
4. Mogi discloses the arms 6-1 and 6-2 of the pin extend into a groove or
recess of spacing frame 2 and urging cover 3 (Mogi, col. 5, ll. 26-68;
Figs. 5A-C).
5. The Specification does not define the term, “via.”
6. A via is defined as a “[v]ertical opening filled with conducting
material used to connect circuits on various layers of a device to one
another and to the semiconductor substrate.”5

5 Peter Van Zant, MICROCHIP FABRICATION 629 (5th ed. 2004). See
Evidence Appendix, supra, of this decision.
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7. The Wiley Encyclopedia of Electrical and Electronics Engineering
also shows and describes through hole vias, blind vias, and microvias
in different layers of electronic packaging.6
8. A polyphenylene sulfide (PPS) resin is an insulating material. See,
e.g., U.S. Patent No. 6,552,273 B2 (col. 2, ll. 35-38), U.S. Patent No.
5,527,189 (col. 2, ll. 57-65), and U.S. 6,468,101 B2 (col. 5, ll. 45-48).
9. Mogi includes arms 6-1 and 6-2 on one end of pin 6 so that the IC
package is properly mounted to come in contact with lead terminal R
of the package during testing (Mogi, col. 5, ll. 26 - col. 6, ll. 2).
10. The Specification explains that the biased spring arms on opposed
ends are meant “to engage the package 34 above and the board 42
below” (Spec. 4:23-24).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

6 Jad S. Rasul, Printed Wiring Board Technology, in WILEY ENCYCLOPEDIA
OF ELECTRICAL AND ELECTRONICS ENGINEERING, Dec. 27, 1999, at 4-7,
available at
http://mrw.interscience.wiley.com/emrw/9780471346081/eeee/article/W211
0/current/pdf (last visited Sept. 16, 2008). See Evidence Appendix, supra, of
this decision.

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During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1313.
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727
(2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black
Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740.

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ANALYSIS
Appellant first argues that the anticipation rejection improperly relies
on common knowledge to meet the limitation of the spring arms at each of
opposed end (App. Br. 10; Reply Br. 1-2). We do not agree. First, claim 1
recites “at least two resilient spring arms extending away from one another”
and, therefore, the argument that the arms are at “opposed ends” is not
commensurate in scope. This limitation, however, is in claim 11. Second,
page 2 of the Final Office Action and pages 4 and 5 of the Answer clearly
state claim 1 is rejected under 35 U.S.C. § 102. While we acknowledge that
the Response to the Arguments section of the Final Office Action addresses
common knowledge, this discussion does not form part of the anticipation
rejection of claim 1.
Appellant also contends that Mogi does not disclose or teach
“inserting a pin including two resilient arms extending away from one
another into a via in an integrated circuit package”7 (App. Br. 10) or “there
is no inserting of pins into vias in the package (Reply Br. 2). We agree for
the below reasons.
The Examiner finds that the IC package P, the spacing frame 2, and
the urging cover 3 of Mogi meet the limitation of the claimed IC package
and that the inner sidewalls of the frame 2 and cover 3 form the vias (Ans.
4). The Specification has not defined a via (FF 5). However, terms are
given their broadest reasonable construction in light of the specification and
as the term would be interpreted by one of ordinary skill in the art. We thus

7 This argument was presented under the discussion of claims 11 and 12
(App. Br. 10). Since the quoted limitation is found in claim 1, we will
presume that Appellant intended to include this argument for claim 1.
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need to determine the ordinary and customary meaning the term “via” would
have to a person of ordinary skill in the art at the time of the invention.
In the context of an IC package, a via has been defined as a “[v]ertical
opening filled with conducting material used to connect circuits on various
layers of a device to one another and to the semiconductor substrate” (FF 6).
Vias are also shown and described as through hole vias, blind vias, and
microvias in different layers of electronic packaging (FF 7). We, thus, find
that the ordinary and customary meaning of the term, “via,” to a person of
ordinary skill in the art is a conductive, vertical opening used to connect
circuits on different layers of electronic packaging to one another.
Mogi discloses the spring arms 6-1 and 6-2 extend into grooves or
recesses of the spacing frame 2 and the urging cover 3 (FF 1, 2, and 4).
These recesses and grooves are not vertical openings. Additionally, the
frame and cover are made from PPS resin (FF3), which is an insulating
material (FF 8). The grooves and recesses of the frame 2 and cover 3 of
Mogi are, therefore, not conductive, vertical openings or a vias on different
layers of electronic packaging. Moreover, because the grooves and recesses
are not vias, Mogi fails to disclose the spring arms 6-1 and 6-2 of Mogi
extend into a via of electronic packaging as recited in claim 1.
As independent claim 20 recites “a plurality of vias on said integrated
circuit package,” we also find that Mogi does not disclose the “plurality of
vias on said integrated package” limitation of claim 20.
For the above reasons, Appellant has shown the Examiner erred in
rejecting claim 1-4, 20-24, and 29 under 35 U.S.C. § 102(b) based on Mogi.

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Claims 11 and 12
We next turn the rejection of claims 11 and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Mogi. Claim 11 recites a socket having
a pin with a pair of spring biased spring arms on each of two opposed ends.
The Examiner finds that Mogi combined with common knowledge teach all
the recited elements (Ans. 4-5). Appellant argues that: (1) spring arms on
opposed ends of a pin are not well known and (2) citation to Wang is not
relevant (App. Br. 10-11).
The Examiner finds that including spring arms at opposed ends is well
known and widely used in the electrical connector art to connect a device on
opposed ends (Ans. 4-5). We do not agree. The Court in KSR, 127 S. Ct. at
1740-41, does state that “background knowledge possessed by a person
having ordinary skill in the art” should be used in determining “whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” Additionally, “the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741.
However, the notice of facts beyond the record which may be taken by the
Examiner must be “capable of such instant and unquestionable
demonstration as to defy dispute.” In re Ahlert, 424 F.2d 1088, 1091 (CCPA
1970) (citing In re Knapp Monarch Co., 296 F.2d 230 (CCPA 1961)).
The Examiner has not provided any evidence or sufficient analysis for
concluding that that one skilled in the art would have recognized the feature
of spring arms on opposed ends of a socket pin is well known in the art.
Although the Examiner cites Wang (U.S. Patent No. 6,186,797 B1) on page
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3 of the Final Office Action to show that spring arms on opposed ends of a
pin are well known, the Examiner’s Answer clearly articulates that Wang
forms no part of the obviousness rejection (Ans. 5). As this reference was
not relied upon in the rejection8, Wang is not before us. Thus, the Examiner
has not provided us with any evidence that is capable of such instant and
unquestionable demonstration that having spring arms on opposed ends of a
pin is well known.
Moreover, we fail to find a sufficient explanation for placing a pair of
spring arms on each of two opposed ends of the socket pin in Mogi so as “to
connect to a device on opposed ends” (Ans. 5). Mogi includes arms 6-1 and
6-2 on one end of the pin so that the IC chip package is properly mounted to
come in contact with lead terminal R of the package during testing (FF 9).
In contrast, the leg portion 6-3 in Mogi fits in a groove 12 of the socket body
and extends outwardly as shown in Figure 4. There is no discussion or
teaching that the opposed end or the leg portion 6-3 needs to be manipulated
like arms 6-1 and 6-2. Additionally, there is no discussion or suggestion in
Mogi that the leg portion 6-3 of pin 6 connects to another device. We,
therefore, fail to see how one skilled in the art would have recognized a pair
of biased spring arms on the opposed end or around leg portion 6-3 would
improve or solve the problem of connecting the leg portion 6-3 to another
device or yield a predictable variation of the proposed connection. KSR, 127
S. Ct. at 1739-40.

8 See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a
reference is relied on to support a rejection, whether or not in a ‘minor
capacity,’ there would appear to be no excuse for not positively including
the reference in the statement of the rejection.”).
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Lastly, we are not persuaded that the duplication of arm 6-3 on the
end of the connector pin 6 of Mogi would have involved only routine skill
(Ans. 5). The court in St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833,
838 (7th Cir. 1977) held that unless the combination of known elements in
the prior art creates a synergistic result, the invention cannot be patented. In
contrast to the present case, Mogi does not demonstrate that having biased
spring arms on the opposed ends of a pin is known in the prior art. Thus,
Mogi does not even teach a combination of known elements. Moreover, the
Specification explains that the biased spring arms on opposed ends are
meant “to engage the package 34 above and the board 42 below” (FF 10).
As stated previously, Mogi does not teach or suggest that the leg portion 6-3
of pin 6 that extends below the socket body 1 is connected to any device
such that there would have been a reason to duplicate the leg portion 6-3 or
make the leg portion into a pair of spring biased arms as recited in claim 11.
For the above reasons, Appellant has shown the Examiner erred in
rejecting claims 11 and 12 based on the teachings of Mogi.

CONCLUSION
(1) For the foregoing reasons, Appellant has shown the Examiner
erred in finding that Mogi discloses a via in or on an integrated circuit.
(2) For the foregoing reasons, Appellant has shown the Examiner
erred in finding Mogi combined with common knowledge teaches the
feature of including a pair of biased spring arms on each of two opposed
ends as recited in claim 11.

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DECISION
We have not sustained the Examiner's rejection of claims 1-4, 11, 12,
20-24, and 29. Accordingly, the Examiner’s rejections of claims 1-4, 11, 12,
20-24, and 29 are reversed.

REVERSED

eld

TROP PRUNER & HU, PC
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
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EVIDENCE APPENDIX

PETER VAN ZANT, MICROCHIP FABRICATION 629 (5th ed. 2004).

Jad S. Rasul, Printed Wiring Board Technology, WILEY ENCYCLOPEDIA OF
ELECTRICAL ENGINEERING, December 27, 1999 at 4-7.

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