Ex parte SATO et al.

Board of Patent Appeals and Interferences

May 7, 2001

08938704 (B.P.A.I. May. 7, 2001)

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publication and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NORIYOSHI SATO and SHINICHI TERAO
_____________
Appeal No. 2000-2139
Application No. 08/938,704
______________
HEARD: April 26, 2001
_______________
Before CALVERT, COHEN and STAAB, Administrative Patent Judges
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
9, 11 and 12, all the claims remaining in the application.
The claims on appeal are drawn to an electromagnetic
isolation apparatus for an electronic device; the particular
device discussed in detail in the specification is a portable
(cordless) telephone. Claims 9, 11 and 12 are reproduced in
the appendix of appellants’ brief.
Appeal No. 2000-2139
Application No. 08/938,704
Although this reference (referred to as “Obayashi Katsuki”) is utilized1
in rejecting claims 11 and 12, it is not listed on page 3 of the examiner’s
answer. A translation of the reference, prepared by the USPTO, is enclosed.
2
The references applied in the final rejection are:
Beutler 4,890,199 Dec.
26,
1989
Mendolia et al. (Mendolia) 5,717,577 Feb. 10,
1998
(filed Oct. 30,
1996)
Ito et al. (Ito) JP 08-222881 Aug. 30, 19961
(Japanese Application)
The admitted prior art shown in Fig. 5 of
appellants’ application and described at page 1,
line 12 to page 3, line 5. (APA)
The claims on appeal stand finally rejected under 35
U.S.C. 103(a) as unpatentable over the following combinations
of references:
(1) Claim 9, Beutler in view of Mendolia and the APA.
(2) Claims 11 and 12, Beutler in view of Mendolia, the
APA, and Ito.
First considering Beutler’s disclosure in relation to
claim 9, Beutler discloses an electronic device (portable
telephone) having a casing 201 containing a circuit board 205,
Appeal No. 2000-2139
Application No. 08/938,704
3
a first shield case 211 covering a portion of one surface of
the circuit board, and a second shield case 203 covering a
portion of the other surface of the circuit board. The second
shield case
203 is integral with the casing. The first and second shield
cases 211, 203 each engage spring channels 207, 209 which are
soldered to the circuit board and have opposing spring fingers
301, 303 between which the walls of the shields 211, 203 are
inserted to make a ground connection with the board (col. 3,
lines 1 to 10). This allows the shields to be easily
removable from the board (col. 2, lines 60 to 63; col. 3, line
68 to
col. 4, line 3).
Mendolia discloses an electronic device (e.g., a cellular
telephone) having a printed circuit board 100, part of the
board being shielded by shield can 210. In Fig. 2F, a stand-
off 350 of spongy material is provided between the casing 170
and the top of the shield can, whereby “[t]he stand-off 350
provides sufficient pressure between the rear housing 170, the
shield can 210, and the printed circuit board 100 to hold the
Appeal No. 2000-2139
Application No. 08/938,704
It appears that “Mendolia et al.” was included by error here.2
4
shield can 210 against the printed circuit board 100" (col. 4,
lines 32 to 35).
In the APA, the appellants disclose that in the prior art
it is known to provide grounding terminals 6 in the form of
elastically deformable conductive strips 7 between the radio
circuit substrate 4 and the shield case 1 of, e.g., a portable
telephone, to connect the shield case 1 to the grounding
conductor 5 on the substrate 4 (page 1, line 25 to page 2,
line 3).
The examiner takes the position that it would have been
obvious to one of ordinary skill in the art
[a] to include an elastic member between the inner
wall of the casing and a surface of the first or
second shield case of the Beutler apparatus because
the elastic member will improve the rigidity of the
apparatus and also provide a tighter electromagnetic
seal. This would have been obvious since Mendolia
(column 4, lines 30+)teaches that the elastic member
produces elastic pressure urging both first and
second shield cases to engage tightly with the
surface of the printed board to provide grounding to
the apparatus.
and
[b] to replace the springs in the Beutler and
Mendolia et al[ ] apparatus with those of the prior2
Appeal No. 2000-2139
Application No. 08/938,704
The elastic member of Mendolia could not be used with Beutler’s second3
shield 203, since that shield is integral with the casing.
5
art, fig.5 of the application because the springs
of the prior art [APA], fig.5 take less space on the
printed circuit board and also provide an elastic
pressure to the first and second shield cases. This
would have been obvious since the elastic pressure
of the spring member not only ensures good ground
contact of the first and second shield cases, but
also acts as shock absorbers [sic] in cases where
the apparatus is subjected to vibration. [answer,
page 5]
After fully considering the record in light of the
arguments presented in appellants’ brief and reply brief, and
in the
examiner’s answer, we consider that the rejection is not well
taken. While we agree with the examiner’s conclusion [a],
that it would have been obvious in view of Mendolia to
interpose an elastic member between the first shield 211 and3
the casing 201 of Beutler in order to urge the shield more
tightly into engagement with the circuit board 205, we do not
agree with conclusion [b], that it would have been obvious to
replace Beutler’s spring channels 207, 209 with the spring
members 7 of the APA. The problem with the latter conclusion
is that the spring fingers which make up Beutler’s spring
Appeal No. 2000-2139
Application No. 08/938,704
6
channels 207, 209 exert at most a minimal pressure on the
shield 211 perpendicular to the circuit board 205. Rather, as
shown in Fig. 4, they are spaced apart at their narrowest
spacing a distance less than the thickness of the shield, so
that they will exert pressure on the shield wall 401 when it
is inserted between them, i.e., a pressure parallel to the
circuit board, thereby releasably holding the shield in
position. Since the spring members 7 of the APA do not
perform any such function, and exert a pressure
perpendicular to the circuit board, we do not consider that
the APA’s disclosure of such spring members 7 would have
taught or motivated one of ordinary skill in the art to
substitute such spring members for the spring channels of
Beutler. While Beutler’s spring fingers and the spring
members 7 of the APA are both “springs”, their function and
operation is so different that the substitution of one for the
other would not have been suggested by the prior art.
The Ito reference does not supply the above discussed
deficiency in the combination of Beutler, Mendolia and the
APA.
Accordingly, the rejections of claims 9, 11 and 12 will
Appeal No. 2000-2139
Application No. 08/938,704
7
not be sustained.
Conclusion
The examiner’s decision to reject claims 9, 11 and 12 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
iac/vsh
Appeal No. 2000-2139
Application No. 08/938,704
8
ISRAEL GOPSTEIN
CLARK & BRODY
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