Ex Parte Shan et al

Patent Trial and Appeal Board

Sep 18, 2012

11325794 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/325,794 01/05/2006 Lei Shan YOR920050432US1
(163-105)
7801
49267 7590 09/18/2012
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
JONES, STEPHEN E
ART UNIT PAPER NUMBER
2817
MAIL DATE DELIVERY MODE
09/18/2012 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 LEI SHAN and JEANNINE TREWHELLA
____________

Appeal 2010-006458
Application 11/325,794
Technology Center 2800
____________

Before STEPHEN C. SIU, MICHAEL R. ZECHER, and
GLENN J. PERRY, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1, 3-6, 9-12, 15, 18-20. Responsive to a restriction requirement,
claims 2, 7, 8, 13, 14, 16, and 17 were withdrawn. We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE

Appeal 2010-006458
Application 11/325,794

2
The disclosed invention relates generally to printed circuit boards
(Spec. 1). Claim 1 is representative and reads as follows:
1. An apparatus, comprising:
a multi-layer printed circuit board having a first through-hole
via for a signal connection and a second through hole via for
power/ground connections, the printed circuit including a transmission
line connected to the first through-hole via, a portion of the first
through-hole via forming a via stub portion not on a signal
propagation path; and
a resonance extinction resistor connected between the via stub
portion and the second through-hole via wherein the resistance of the
resistor is configured to eliminate a resonance notch and achieve a flat
frequency response for insertion loss in operation.

Claims 1, 3-6, 9-12, 15, and 18-20 stand rejected under 35 U.S.C.
103(a) as unpatentable over Applicant’s admitted prior art (“AAPA”) (Spec.
Fig. 1) and Gisin (U.S. Pat. Pub. No. 2007/0091581; Apr. 26, 2007).
Issue
Did the Examiner err in rejecting claims 1, 3-6, 9-12, 15, and 18-20?
Findings of Fact
1. AAPA discloses a printed circuit board (PCB) having an electronic
device coupled thereto and containing “plated-through-holes” (PTH)
connected to a transmission line 6. AAPA also discloses “via stubs”
in the printed circuit board as portions of vias that are not on the path
Appeal 2010-006458
Application 11/325,794

3
of signal propagation and PTH vias 5 connected to ground/power
planes within the PCB (see, e.g., ¶ [0005]-[0006]; Fig. 1).
2. Gisin discloses a printed circuit board (PCB) containing vias for
signal transmission and vias connected to layers “that contain ground
planes” (see, e.g., ¶ [0023]). Gisin also discloses “discrete resistors”
connected as “terminating elements” (see, e.g., ¶ [0025] and Fig. 3).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Analysis
The Examiner rejects claims 1, 3-6, 9-12, 15, and 18-20 as
unpatentable over the combination of AAPA and Gisin (Ans. 3). We agree
with the Examiner for at least the reasons set forth by the Examiner (Ans. 3-
8). For example, AAPA discloses a printed circuit board as recited in claim
1 (FF 1), while Gisin discloses a similar printed circuit board containing a
resistor element connected between a via stub portion not on a signal
Appeal 2010-006458
Application 11/325,794

4
propagation path and a second through-hole via for power/ground
connections (FF 2) as recited in claim 1.
Appellants argue that it would not have been obvious to one of
ordinary skill in the art to have combined AAPA and Gisin because “Gisin is
only directed towards limiting general signal distortion and increasing
bandwidth of printed circuit board vias,” but “is silent with respect to
providing resistors . . . to eliminate a resonance notch and achieve a flat
frequency response for insertion loss in operation” (App. Br. 9) or, with
regard to claim 10, “eliminating LC resonance” (App. Br 13). In other
words, Appellants argue that while claim 1 and claim 10 recite an apparatus
with a resistor connected in a specific configuration as disclosed by Gisin,
the invention recited in claim 1 and claim 10 exhibits certain latent
properties not explicitly stated in Gisin.
We are not persuaded by Appellants’ argument because even
assuming Appellants’ contention to be correct that Gisin fails to explicitly
disclose that the resistor connected in the same configuration as recited in
claim 1 or claim 10 is not disclosed by Gisin to “eliminate a resonance
notch” or “LC resonance,” the mere recognition of latent properties does not
render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d
1019 (CCPA 1979). “The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
Appeal 2010-006458
Application 11/325,794

5
otherwise be obvious” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. &
Inter. 1985).
In the present case, Appellants merely argue that the resistor in the
printed circuit board apparatus of Gisin is not explicitly disclosed as
eliminating a resonance notch (or LC resonance), but does not demonstrate
that Gisin fails to disclose a resistor in the claimed configuration that would
have such latent properties. As such, we cannot agree with Appellants that
Gisin’s otherwise identical apparatus would not have rendered claim 1 or
claim 10 obvious to one of ordinary skill in the art.
Appellants also argue that “Gisin only discloses applying a
terminating element to the ends of via stub[,]” but does not disclose or
suggest “applying a resistor” (App. Br. 10). In other words, Appellants
argue that Gisin discloses applying a “terminating element,” but does not
indicate that the “terminating element” is a “resistor.” We are not persuaded
by Appellants’ argument because, for example, Gisin explicitly discloses
that the “terminating element” is a “resistor” (see, e.g., ¶ [0025] – “discrete
resistors”).
Appellants also argue that Gisin fails to disclose or suggest a resistor
“connecting a signal via stub to a power/ground via” (App. Br. 12), but does
not adequately explain a difference between the disputed claim feature and
Gisin’s disclosure of a resistor connecting to vias (e.g., 215c-d – Figs. 2 and
3) that connect to “layers . . . that contain ground planes 205a-d” (¶ [0023]).
Appeal 2010-006458
Application 11/325,794

6
Appellants provide no additional arguments in support of independent
claim 11 or of claims 3-6, 9, 10, 12, 15, and 18-20, which depend therefrom.
Conclusion of Law
The Examiner did not err in rejecting claims 1, 3-6, 9-12, 15, and 18-
20 under 35 U.S.C. § 103(a).

SUMMARY
We affirm the Examiner’s rejection of claim 1, 3-6, 9-12, 15, and 18-
20.
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)(1)(iv).

AFFIRMED

cu