Ex Parte Struchholz et al

Patent Trial and Appeal Board

Sep 26, 2016

13120294 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/120,294 05/26/2011
24972 7590 09/28/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Michael Struchholz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1019116737 8999
EXAMINER
ENGLISH, JAMES A
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MICHAEL STRUCHHOLZ, TRISTAN JOBERT,
KLAUS OFFTERDINGER, THOMAS KLAUS,
and DIRK DITTMANN
Appeal2014-004787
Application 13/120,294
Technology Center 3600
Before JOHN C. KERINS, JAMES P. CAL VE, and
AMANDA F. WIEKER, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Struchholz et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner's final rejection of claims 13-24. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-004787
Application 13/120,294
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to a housing for an electrical circuit
for a sensor. Independent claim 13, reproduced below, is illustrative:
13. A housing for an electrical circuit for a sensor, the housing
including pins projecting therefrom for electrical contacting of
the circuit, and additional pins for a mechanical fastening of the
housing to a printed circuit board without electrically contacting
the circuit;
wherein the pins for the electrical contacting and the additional
pins are not provided on a same side of the housing.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 13 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Jang (US 2006/0016619 Al, published Jan.
26, 2006) in view ofYagoura (US 5,412,157, issued May 2,
1995);
(ii) claims 14, 16, 18, 20, 21, and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Jang in view ofYagoura and Yokota
(US 5,789,280, issued Aug. 4, 1998);
(iii) claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Jang in view ofYagoura and Ohta (US 6,060,780, issued May
9, 2000);
(iv) claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
Jang in view ofYagoura, Yokota, and Mills (US 5,281,851,
issued Jan. 25, 1994); and
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Application 13/120,294
(v) claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Jang in view of Y agoura, Yokota, and
Takenaka (US 6,342,729 Bl, issued Jan. 29, 2002).
ANALYSIS
Claims 13 and 15--Unpatentable over Jang/Yagoura
The Examiner finds, for claim 13, that Jang discloses providing pins
24 for electrical contacting of the circuit, and additional pins 123a,b used for
a mechanical fastening of the device to a printed circuit board not being
provided on the same side of the device as are electrical contacting pins 24.
Final Act. 2. Appellants do not contest this specific finding, but point out
that Jang has, in addition to electrical contacting leads or pins 24, other
electrical contacting leads or pins 21 that are located on the same side of the
semiconductor device as are Jang's additional mechanical fastening pins.
Appeal Br. 3. Appellants argue, therefore, that Jang does not satisfy the
claim limitation requiring the pins for the electrical contacting and the
additional pins to not be provided on a same side of the housing. Id.
In response, the Examiner takes the position that, under a broadest
reasonable interpretation, claim 13 does not recite that all pins for electrical
contacting be on a side or sides different from a side or sides on which all
additional pins for mechanical fastening are provided. Ans. 8. Appellants
appear to counter that the Examiner employs a claim interpretation that is
inconsistent with their Specification, and thus is not a broadest reasonable
interpretation. Reply Br. 3. Appellants additionally point out that pins 24
relied on by the Examiner as corresponding to the claimed electrical
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Application 13/120,294
contacting pins are both electrically and mechanically connected to the
printed circuit board in Jang. Id.
We are not entirely certain what point Appellants are trying to make
with the latter assertion, but, in any event, claim 13 does not exclude the
electrical contacting pins recited therein from being mechanically connected
as well. Indeed, the Specification notes that electrical contacting pins 2 "are
used for the mechanical fastening of housing 1." Spec. 5, 11. 20-21.
As to the former argument directed to the reasonable breadth of the
interpretation of claim 13, the Specification describes an "exemplary
embodiment" in which the position of the additional (mechanical) pin is not
specified at all, let alone not specified to be on a side of a printed circuit
board on which no electrical contacting pins are provided. Spec. 2, 11. 8-15.
In "another specific embodiment," the additional mechanical fastening pins
are disclosed as being "situated on one side of the housing," again not
setting forth that no electrical contacting pins are to be situated on the same
side of the housing. Id. at 11. 28-30. In describing the specific embodiment
illustrated in Figure 1, the Specification notes that the additional mechanical
fastening pins 3 are situated on the shorter transverse sides of housing 1,
whereas electrical contacting pins 2 are situated on the longitudinal sides.
Id. at 6, 11. 1-5.
The Specification attributes a reduction in sensitivity of the housing to
interference accelerations to the positioning of the additional mechanical
fastening pins 3. Id. at 11. 12-14. However, nothing in the Specification
indicates that this advantage or improvement is obtained only if the
additional mechanical fastening pins 3 are placed on sides of the housing on
which no electrical contacting pins are situated. As such, we are not
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Application 13/120,294
persuaded that the Examiner's interpretation of claim 13 is either contrary to
the Specification or unreasonably broad. Instead, Appellants' arguments are
seen as urging us to read limitations from the Specification into the claims,
which we decline to do. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993).
Accordingly, we are not apprised of error in the Examiner's rejection
of claim 13, which is sustained. Appellants do not separately argue the
patentability of claim 15, and thus claim 15 falls with claim 13.
Claims 14, 16, 18, 20, 21, and 24--Unpatentable over Jang/Yagoura/Yokota
Appellants rely solely on the dependence of claims 14, 16, 18, and 24
from claim 13 for their patentability. Appeal Br. 4. The rejection of those
claims is sustained for the reasons discussed above with respect to claim 13.
Appellants argue for claims 20 and 21 that none of the cited
references discloses connecting groups of pins with a connecting piece, with
a first group including two pins and a second group including three pins.
Appeal Br. 4. The Examiner's position is that Yokota discloses first and
second groups of pins having at least two and at least three pins per group
that are connected to one another mechanically, that it would have been
obvious to modify Jang to so connect the electrical contacting pins and the
additional pins, and that it would involve only routine skill in the art in
discovering optimum and workable ranges, to arrive at having a first group
with two pins and a second group with three pins. Final Act. 3--4; Ans. 11-
12.
According to Appellants, a determination of optimum or workable
ranges for a particular variable might be characterized as routine only if that
variable or parameter is recognized as being a result-effective variable.
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Reply Br. 4, citing MPEP § 2144.05 andln re Antonie, 559 F.2d 618 (CCPA
1977). Appellants argue that, because none of Jang, Yagoura, and Yokota
describes grouping pins in anything other than all of the pins extending
along an entire side, those references do not recognize that grouping and
connecting a particular number of pins is a result-effective variable. Id.
The cited section of the MPEP also cautions that the viability of citing
Antonie for the proposition advanced by Appellants is questionable at best,
given that the reasoning was based upon the premise that "obvious to try" is
not a valid rationale for an obviousness finding. MPEP §2144.05(II)(B).
That section goes on to discuss that the Supreme Court KSR 1 decision later
recognized "obvious to try" could be a valid basis for finding obviousness,
and therefore, the presence of a known or recognized result-effective
variable is not the only motivation for a person of ordinary skill in the art to
experiment to determine other workable conditions. Id.
Here, Yokota discusses the general conditions of connecting adjacent
ones of the leads with each other to prevent deformation of the leads due to
external forces. Yokota, col. 4, 11. 55---60. Yokota does not express that it is
absolutely necessary for all leads on each side of the package to be
connected in order for this advantage to be obtained. As such, a person of
ordinary skill in the art would readily be able to determine optimum and
1 KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
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workable configurations for connecting leads within a group, such as those
recited in claims 20 and 21, using only such ordinary skill.
Accordingly, we are not apprised of error in the Examiner's rejection
of claims 20 and 21, which is sustained.
Claim 17--Unpatentable over Jang/Yagoura/Ohta
Appellants do not provide any substantive arguments for claim 17,
and rely on its dependence from claim 13 for its patentability. Appeal Br. 4.
Appellants maintain that Ohta does not cure alleged deficiencies in the
Jang/Yagoura combination. Id. For the reasons discussed above with
respect to claim 13, we do not find the combination of Jang and Y agoura to
be deficient, and the rejection of claim 17 is sustained.
Claim 19--Unpatentable over Jang/Yagoura/Yokota/Mills
Appellants do not provide any substantive arguments for claim 19,
and rely on its dependence from claim 13 for its patentability. Appeal Br. 5.
Appellants maintain that Mills does not cure alleged deficiencies in the
Jang/Yagoura/Yokota combination. Id. For the reasons discussed above
with respect to claim 13, we do not find the combination of Jang, Yagoura,
and Yokoto to be deficient, and the rejection of claim 19 is sustained.
Claims 22 and 23--Unpatentable over Jang/Yagoura/Yokota/Takenaka
Appellants do not provide any substantive arguments for claims 22
and 23, and rely on their dependence from claim 13 for their patentability.
Appeal Br. 5. Appellants maintain that Takenaka does not cure alleged
deficiencies in the Jang/Yagoura/Yokota combination. Id. For the reasons
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discussed above with respect to claim 13, we do not find the combination of
Jang, Yagoura, and Yokoto to be deficient, and the rejection of claims 22
and 23 is sustained.
DECISION
The rejection of claims 13 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Jang and Yagoura is affirmed.
The rejection of claims 14, 16, 18, 20, 21, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Jang in view ofYagoura and Yokota is
affirmed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Jang in view of Yagoura and Ohta is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as being
unpatentable over Jang in view of Yagoura, Yokota, and Mills is affirmed
The rejection of claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Jang in view of Yagoura, Yokota, and Takenaka 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).
AFFIRMED
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