Ex Parte Singleton et al

Patent Trial and Appeal Board

Mar 11, 2013

11455936 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/455,936 06/20/2006 Robert Singleton 053604-0106 9287
22428 7590 03/11/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
FRECH, KARL D
ART UNIT PAPER NUMBER
2887
MAIL DATE DELIVERY MODE
03/11/2013 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 ROBERT SINGLETON and LAWRENCE J. KEIM
_____________

Appeal 2011-001579
Application 11/455,936
Technology Center 2800
______________

Before ROBERT E. NAPPI, HUNG H. BUI, and LYNNE E. PETTIGREW,
Administrative Patent Judges.

Per Curiam

DECISION ON APPEAL
Appeal 2011-001579
Application 11/455,936

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 21 through 37.

We affirm.
INVENTION
The invention is directed to an electronic device, which includes a
circuit board with circuit elements where the board and elements are
contained in a core layer. See pages 5, 6 and figure 4 of Appellants’
Specification. Claim 21 is representative of the invention and reproduced
below:
21. An embedded electronic device comprising:
a printed circuit board, having a top surface and a bottom
surface;
a plurality of circuit components attached to the top
surface of the printed circuit board;
a bottom overlay directly and uniformly attached to the
bottom surface of the printed circuit board over their entire
common surfaces;
a top overlay positioned above the top surface of the
printed circuit board; and
a core layer comprised of thermosetting polymeric
material positioned between the top surface of the printed
circuit board and the top overlay.

REFERENCES
Clifton US 5,480,842 Jan. 2, 1996
Tiffany, III US 5,955,021 Sep. 21, 1999
Babb US 6,262,692 B1 Jul. 17, 2001
Ohta US 2003/0062420 A1 Apr. 3, 2003
Flynn EP 0488574 A2 Jun. 3, 1992
Tempelton WO 02/076717 A2 Oct. 3, 2002
Appeal 2011-001579
Application 11/455,936

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REJECTIONS AT ISSUE
The Examiner has rejected claims 21, 22, 24, 25, 27, 33, and 35
through 37 under 35 U.S.C. § 103(a) as unpatentable over Clifton and
Tiffany. Answer 4-6.
1

The Examiner has rejected claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Clifton, Tiffany, and Flynn. Answer 6.
The Examiner has rejected claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Clifton, Tiffany, and Babb. Answer 6-7.
The Examiner has rejected claims 28 and 34 under 35 U.S.C. § 103(a)
as unpatentable over Clifton, Tiffany, and Ohta. Answer 7.
The Examiner has rejected claim 29 through 32 under 35 U.S.C.
§ 103(a) as unpatentable over Clifton, Tiffany, and Tempelton. Answer 7-8.

ISSUE
Appellants argue on pages 8 through 14 of the Appeal Brief that the
Examiner’s rejections under 35 U.S.C. § 103(a) based upon Clifton and
Tiffany are in error.
2
These arguments present us with the issues:
a) Did the Examiner err by not considering the references to teach
away from being combined?
b) Did the Examiner err in combining the references as Tiffany
includes the same deficiencies as the Reed reference cited in a
previous office action?

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
June 9, 2010.
2
Throughout this opinion we refer to Appellants’ Appeal Brief February 26,
2010, and Reply Brief dated August 9, 2010.
Appeal 2011-001579
Application 11/455,936

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ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusions with respect to each
of the issues raised.
In response to the first issue, the Examiner has responded providing a
well-reasoned rationale addressing each of the points raised by the
Appellants. Answer 8-13. We concur with Examiner’s response to each of
the rationales proffered by Appellants as to why Clifton and Tiffany teaches
away from the combination. As identified by the Examiner, many of the
proffered reasons are not commensurate in scope with the claim, nor do we
find that they would discourage the skilled artisan from combining the
teachings.
In addition, we note that both Appellants’ figure 4 and Clifton’s figure
4 show the printed circuit board and circuit components in the middle of the
card. Thus, Appellants’ arguments concerning Clifton discouraging a card
structure with circuit components near the edge as allegedly claimed, is not
commensurate with either the claim or Appellants Specification. Brief 10-
11; Reply Brief 2-3.
Further, Appellants’ arguments directed to the declaration submitted
on March 30, 2009 as also being applicable to methods such as used by
Tiffany are not persuasive. Brief 13; Reply Brief 6-7. The declaration is of
little value as the statements in the declaration are not commensurate with
claim 21 and are directed to the teachings of a different reference, Reed.
Appellants’ attempt to show the declaration is relevant on page 6 of the
Reply Brief; however, we are not persuaded that the statements and tests are
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Application 11/455,936

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directly applicable to Tiffany. Further, we are not persuaded by Appellants’
arguments, on page 12 of the Reply Brief which assert, based on the
declaration, that the skilled artisan would be discouraged from using the
Reed reference as it can create air pockets. This line of reasoning does not
address or seem to consider the teaching of Tiffany discussing solving the
problem of air bubbles (see e.g. Tiffany, col. 12, ll. 55-67).
Finally, we note the Examiner found that Clifton teaches all of the
limitations of representative claim 21, except for a core layer of thermal-
setting material and relies upon Tiffany to teach such a layer. Answer 4.
Figure 4 of Clifton also discusses layer 410, which is between the circuit
board and the top overlay, and as such, meets the core layer of representative
claim 21. However, Clifton discloses this layer as a structural polyester layer
(and does not identify how this structural polyester layer is made, i.e.,
whether or not it is a thermosetting polymeric material as claimed).
However, Tiffany identifies that there are polyester materials that are
thermosetting polymeric materials (see e.g. col 6, ll. 36-39).
For all of the above reasons, Appellants’ arguments directed to the
first issue have not persuaded us of error in the Examiner’s rejection of
representative claim 21.
With respect to the second issue, the Examiner has responded that
“Reed is not part of the Final Rejection and specific arguments to Reed are
moot.” Answer 8. We concur further in as much as Appellants’ arguments
directed to the second issue in asserting that the March 30 2009 declaration,
applies to the rejection based upon Tiffany are not persuasive. As discussed
above we find the statements in the declaration to be of little value to the
current rejection. Accordingly, Appellants’ arguments directed to the
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Application 11/455,936

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second issue have not persuaded us of error in the rejection of representative
claim 21.
Appellants have not presented arguments directed to the other claims
rejected under 35 U.S.C. § 103(a). As such, we sustain the Examiner’s
various rejections under 35 U.S.C. § 103(a) of claims 21 through 37.

DECISION
The decision of the Examiner to reject claims 21 through 37 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)(1)(iv).

AFFIRMED

ELD