Ex Parte Wong

Board of Patent Appeals and Interferences

Oct 17, 2006

10453119 (B.P.A.I. Oct. 17, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARVIN GLENN WONG
____________

Appeal 2006-1662
Application 10/453,119
Technology Center 2800
____________

Decided: October 17, 2006
____________

Before GARRIS, TIMM, and JEFFREY T. SMITH, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-22, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
We AFFIRM.
Appeal 2006-1662
Application 10/453,119

INTRODUCTION
The claims are directed to a device for reinforcing a fragile substrate
having an edge-mount connector and a method of “enforcing a fragile
substrate” (Specification ¶ [0003]). Claims 1, 2 and 12 are illustrative:
1. A device comprising:
a fragile substrate;
a reinforcement plate bonded to the substrate to reinforce the
substrate; and
an edge-mount connector mated with the substrate and the
reinforcement plate.

2. The device of claim 1, wherein the reinforcement plate defines
notches for receiving the edge-mount connector.

12. A method for enforcing a fragile substrate, the method
comprising:
bonding a reinforcement plate to the fragile substrate to reinforce the
substrate, the reinforcement plate including notches to receive an
edge-mount connector; and
mating the edge-mount connector to the notches on the reinforcement
plate, and to the fragile substrate.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Machado US 5,041,016 Aug. 20, 1991
Hanato US 5,414,220 May 9, 1995
Sakemi US 5,713,126 Feb. 3, 1998
Farnsworth US 6,144,560 Nov. 7, 2000

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The rejections as presented by the Examiner are as follows:
1. Claims 1, 3, 5-7, 9, and 21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Machado.
2. Claims 1, 3-4, and 8-11 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hanato.
3. Claims 2, 17, 20, and 22 are rejected under 35 U.S.C § 103(a) as
unpatentable over Hanato in view of Farnsworth.
4. Claims 12-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Machado in view of Sakemi.

Rather than reiterate the respective positions advocated by the Appellant
and by the Examiner concerning these rejections, we refer to the Brief and
Reply Brief and to the Answer respectively for a complete exposition
thereof.
OPINION
Claims 1, 2, and 12 are the only claims argued separately by
Appellant. Accordingly, claims 1, 2, and 12 are addressed in our decision
below.

§ 102(b) REJECTION OVER MACHADO
Claim 1 is directed to a device including “a fragile substrate,” “a
reinforcement plate bonded to the substrate to reinforce the substrate” and
“an edge-mount connector mated with the substrate and the reinforcement
plate.”
The Examiner rejected claim 1 under § 102(b) over Machado. The
Examiner stated that Machado’s ceramic substrate card 40 and printed
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wiring board 30 correspond to Appellant’s “fragile substrate” and
“reinforcement plate,” respectively (Answer 3). The Examiner further
indicated the printed wiring board 30 (i.e., the reinforcement plate) is
bonded to the ceramic substrate card 40 (i.e., the fragile substrate) with
adhesive 50. Finally, the Examiner indicated Machado’s flexible link
connector 10 (i.e., the edge-mount connector) is “mated with [ceramic]
substrate [card] 40 and the reinforcement plate [i.e., printed wiring board]
30” (Answer 3).
Appellant argues “Machado lacks any teaching that printed wiring
board 30 serves as a ‘reinforcement plate’ for the ceramic substrate card 40”
(Br. 11). In regard to this argument, Appellant contends that Machado’s
disclosure of a flexible adhesive (i.e., polysulfide adhesive 50) coupled with
Machado’s intent to use the circuitry in a missile system, where excessive
vibration and different rates of thermal expansion are present, demonstrate
that printed wiring board 30 does not reinforce ceramic substrate card 40
(Br. 11). Rather, Appellant interprets Machado as teaching an arrangement
of the ceramic substrate card 40 and the printed wiring board 30 that permits
shifting, expansion, and contraction, but not reinforcement (Br. 11).
The Examiner responds that one skilled in the art viewing Machado’s
Figure 2 would “recognize that the printed wiring board 30 [i.e.,
reinforcement plate] would inherently reinforce the ceramic substrate card
40 [i.e., fragile substrate]” (Answer 10).
We agree with the Examiner.
Machado clearly discloses that the printed wiring board 30 (i.e.,
reinforcement plate) is bonded to the ceramic substrate card 40 (i.e., fragile
substrate) (Machado, col. 5, ll. 11-14). Because the two pieces are bonded
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together, it is reasonable to consider that some degree of reinforcement
inherently is present in Machado’s structure. Ex Parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). Because no specific degree of
reinforcement is recited in claim 1, any degree of reinforcement between the
printed wiring board 30 (i.e., reinforcement plate) and the ceramic substrate
card 40 (i.e., fragile substrate) would satisfy the claim. Accordingly, we find
that Machado anticipates Appellant’s claim 1.
Additionally, we are unpersuaded by Appellant’s argument that
Machado’s bonding is flexible to allow for expansion, contraction and
shifting of the ceramic substrate card 40 and the printed wiring board 30
relative to one another (Br. 11). In fact, Machado discloses that the plates
are bonded to one another to reduce the relative displacement of one plate
with respect to the other (Machado, col. 6, ll. 30-31). Machado further states
that by bonding the corners of the ceramic substrate card 40 to the printed
wiring board 30 the “relative displacement at the corners is decreased and
therefore stress [on the wire leads 20] is decreased” (Machado, col. 6, ll. 31-
35).
Minimizing “relative displacement” between the ceramic substrate
card (i.e., fragile substrate) 40 and the printed wiring board 30 (i.e.,
reinforcement plate) necessarily implies that the ceramic substrate card (i.e.,
fragile substrate) 40 is attached to the printed wiring board 30 (i.e.,
reinforcement plate) with a bond strength sufficient to perform the
aforementioned function. We find the strength of the bond between printed
wiring board 30 (i.e., reinforcement plate) and ceramic substrate card 40
(i.e., fragile substrate) that is required to perform Machado’s aforenoted
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function (i.e., minimizing relative displacement), necessarily implies a
reinforcement relationship between them.
We affirm the § 102(b) rejection over Machado of argued claim 1 and
non-argued claims 3, 5-7, 9, and 21.

§ 102(b) REJECTION OVER HANATO
The Examiner also rejected claim 1 under § 102(b) over Hanato
(Answer 4). The Examiner stated that Hanato discloses a reinforcement
plate 4 (i.e., fragile substrate in claim 1) bonded to a metal plate 5 (i.e.,
reinforcement plate in claim 1) with connector 20 (i.e., edge-mount
connector) mated with the reinforcement plate 4 and metal plate 5 via
contact terminals 21 and 22 (Answer 5).
Appellant argues the Examiner’s interpretation of Hanato is
“unsupportable” (Br. 13). Appellant contends that Hanato’s “reinforcement
plate 4” corresponds to Appellant’s claimed “reinforcement plate” rather
than Hanato’s metal plate 5 as the Examiner indicated in his rejection (Br.
13-14). Appellant further indicates that Hanato’s reinforcement plate 4
reinforces the flexible wiring cable 10” such that plate 4 is disclosed as
performing the reinforcement (Br. 13-14). Additionally, Appellant argues
that Hanato never mentions that reinforcing plate 4 is “fragile” so it is not
reasonable for the Examiner to interpret plate 4 as corresponding to the
“fragile substrate” in the claims (Br. 14).
The Examiner responds that Hanato discloses at column 2, lines 66-68
that reinforcing plate 4 is made of ceramic, the same material Appellant uses
to make their fragile substrate (Answer 11). The Examiner also states that
one of ordinary skill in the art when viewing Hanato’s Figure 1 would
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“recognize that the metal plate 5 [i.e., reinforcement plate] would definitely
reinforce the [reinforcement] plate 4 [i.e., fragile substrate]” (Answer 11).
Appellant counters that though Hanato discloses that the reinforcing
plate 4 is ceramic, Appellant’s claim 1 does not require the fragile substrate
be ceramic (Reply Br. 3). Appellant also argues that ceramics may contain
various additives that make them more or less fragile (Reply Br. 3).
Appellant concludes that despite Hanato’s “plate 4 being ceramic”; Hanato
does not disclose that plate 4 is fragile.
Appellant’s arguments are not persuasive.
Hanato discloses that reinforcement plate 4 (i.e., fragile substrate) and
metal plate 5 (i.e., reinforcement plate) are bonded to one another (Hanato,
col. 3, ll. 12-14). Because the two pieces are bonded together, it is
reasonable to consider that some degree of reinforcement inherently is
present in Hanato’s structure. Ex Parte Levy, 17 USPQ2d at 1464. Because
no specific degree of reinforcement is recited in claim 1, any degree of
reinforcement between the metal plate 5 (i.e., reinforcement plate) and the
reinforcement plate 4 (i.e., fragile substrate) would satisfy the claim.
Moreover, we are unpersuaded by Appellant’s argument that Hanato’s
reinforcement plate 4 (i.e., fragile substrate in claim 1) is not fragile.
Hanato’s reinforcement plate 4 and Appellant’s claimed “fragile substrate”
are made of the same material, namely, ceramic.1 Where the claimed and
prior art products appear to be identical in structure or composition, it is
appropriate to consider that the latter necessarily has the same characteristics
as the former. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433

1 Appellant discloses that the “fragile substrate” is made of ceramic
(Specification ¶ [0011]).
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(C.C.P.A. 1977). Because Hanato’s reinforcement plate 4 and Appellant’s
“fragile substrate” are made of the same material, it is reasonable to consider
that they must have the same material properties or characteristics (e.g.,
fragility).
Additionally, we note that “fragile” is a relative (and thus a very
broad) term. A material is “fragile” relative to another material to which it is
being compared. Appellant’s argument, that “various additives [may be
added to ceramics to] make them more or less fragile” (emphasis added)
(Reply Br. 3), further indicates the relative nature of the term “fragile.” We
note that a premise to Appellant’s argument is that ceramic is “fragile” by
nature (i.e.,that the fragility is always present though adjustable by
manipulating the additives in the ceramic). Therefore, Appellant’s argument
further bolsters the Examiner’s finding that Hanato’s ceramic reinforcement
plate 4 reasonably is considered “fragile.”
Accordingly, we find that Hanato anticipates Appellant’s claim 1.
We affirm the § 102(b) rejection over Hanato of argued claim 1 and
non-argued claims 3, 4, and 8-11.

§ 103(a) REJECTION OVER HANATO IN VIEW OF FARNSWORTH
Claim 2 depends from claim 1 and further recites that the
“reinforcement plate defines notches for receiving the edge-mount
connector.”
The Examiner rejected claim 2 under § 103(a) over Hanato in view of
Farnsworth. The Examiner stated that Hanato does not disclose the
“reinforcement plate [i.e., metal plate] 5 defines notches for receiving the
edge-mount connector [i.e., connector 20]” (Answer 6). To cure this
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deficiency, the Examiner found that Farnsworth teaches “notches 18 formed
on the substrate 10 facilitate . . . alignment of the bond pads 14 with their
corresponding conductive elements 35 of mating connector 30” (Answer 6).
Based on Farnsworth’s disclosure, the Examiner concluded that it would
have been obvious at the time the invention was made to “modify Hanato [ ]
by constructing the plate 5 [i.e., reinforcement plate] as taught by
Farnsworth [ ] in order to facilitate alignment [of] the connections between
two connectors” (Answer 6).
Appellant argues that neither Hanato nor Farnsworth discloses a
fragile substrate bonded to a reinforcement plate (Br. 15). Appellant
reiterates his argument that Hanato does not disclose that reinforcement
plate 4 (i.e., fragile substrate) is fragile or that metal plate 5 (i.e.,
reinforcement plate) is “substantial enough to provide any sort of additional
reinforcement for the ‘reinforcement plate 4’ [i.e., fragile substrate]”
(Br. 15).
The Examiner responds that Farnsworth is not cited for teaching
bonding a fragile substrate to a reinforcement plate (Answer 11). Rather,
Farnsworth is cited for his teaching of using notches for connector alignment
(Answer 11).
We agree with the Examiner’s ultimate conclusion that Appellant’s
claim 2 is unpatentable over Hanato in view Farnsworth.
Contrary to Appellant’s argument above, Hanato discloses the same
structure recited in Appellant’s claim 1.2 Hanato does not disclose using
notches. However, Farnsworth discloses using “notches” to facilitate

2 See our discussion of the § 102(b) rejection over Hanato earlier in this
decision.
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aligning bond pads with their corresponding terminals (Farnsworth, col. 4, ll.
39-42, Abstract). From such a teaching in Farnsworth, it would have been
obvious to provide notches in Hanato’s metal plate (i.e., reinforcement plate)
5 to facilitate alignment of the flexible wiring cable 10 with the contact
terminal 21. Accordingly, Farnsworth’s disclosure provides motivation for
the combination.
We also find there is a reasonable expectation of success in combining
Farnsworth’s notches with Hanato’s metal plate 5 (i.e., reinforcement plate).
Farnsworth discloses using notches for the purpose of aligning the bond pads
(14a, 14b, 14c) with the terminals (Farnsworth, col. 4, ll. 37-42). Combining
Farnsworth’s teaching of alignment notches with Hanato’s metal plate (i.e.,
reinforcement plate) 5 would reasonably be expected to successfully align
the wiring conductor (2) on the printed wiring cable (10) with contact
terminal (21). As a result of such a combination, one would only need to
provide the proper positioning of the notches on the metal plate 5 (i.e.,
reinforcement plate) so that Hanato’s wiring conductor 2 would be properly
aligned with the terminal 21.
Accordingly, we affirm the § 103(a) rejection over Hanato in view of
Farnsworth of argued claim 2 and non-argued claims 17, 20, and 22.

§ 103(a) REJECTION OVER MACHADO IN VIEW OF SAKEMI
Claim 12 recites a “method of enforcing a fragile substrate” including
the following steps: (1) bonding a reinforcement plate to a fragile substrate,
the reinforcement plate having notches to receive the edge-mount connector
and (2) mating the edge-mount connector to the notches on the
reinforcement plate and to the fragile substrate.
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The Examiner rejected claim 12 over Machado in view of Sakemi.
The Examiner stated that Machado discloses a method of “enforcing” a
ceramic substrate card (i.e., fragile substrate) 40 by bonding a printed wiring
board (i.e., reinforcement plate) 30 to the ceramic substrate card (i.e., fragile
substrate) 40 (Answer 8). The Examiner further stated that Machado
discloses “mating the edge-mount connector [i.e., wire lead] 20 to the
reinforcement plate [i.e., printed wiring board] 30, and to the fragile
substrate [i.e., ceramic substrate card] 40” (Answer 8). The Examiner stated
that Machado does not disclose that the printed wiring board (i.e.,
reinforcement plate) 30 has notches for receiving the edge-mount connector.
The Examiner relied on Sakemi’s teaching to provide notches in order
to facilitate alignment of bond pads with their corresponding conductive
elements (Answer 8). Based on Sakemi’s disclosure, the Examiner
concluded that it would have been obvious at the time the invention was
made to modify Machado by “constructing the [reinforcement] plate [i.e.,
printed wiring board] 30 as taught by Sakemi in order to facilitate alignment
[of] the connections between [the] two conductive members” (Answer 8).
Appellant reiterates his previous arguments regarding Machado’s
failure to teach “reinforcing the ceramic substrate card 40 with the printed
wiring board 30” (Br. 16). Appellant contends that Machado allows some
degree of movement and vibration between the ceramic substrate card 40
and printed wiring board 30, such that the printed wiring board 30 cannot be
understood to reinforce the ceramic substrate card 40 (Br. 16). Appellant
also argues that Sakemi’s notches 7 are better suited to aligning a rigid
connector rather than Machado’s flexible connector (Br. 17).
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The Examiner responds that Sakemi is only applied for his teaching of
using notches to facilitate the connection/alignment between two conductors
(Answer 11-12). The Examiner expounds that the notch 7 facilitates the
connection between lead 3 of the connector main body 2 and the terminal 6
of the printed circuit board 5 without causing dislocation of the lead 3 from
the terminal 6 in the lateral direction before and during the soldering step
(Sakemi Figure 1).
We agree with the Examiner.
Machado teaches that each end (i.e., shank 25 and 28) of the wire lead
20 is placed on its corresponding bond pad (i.e., 32 or 42) and attached
thereto by soldering (Machado, col. 6, ll. 15-17, col. 7, ll. 14-18). Likewise,
Sakemi teaches that the lead 3 is placed into and cooperates with the slit
(i.e., notch) 7 to provide a firmly coupled arrangement that prevents lateral
dislocation of the lead 3 prior to and during soldering (Sakemi, col. 4, ll. 54-
64). Sakemi’s teaching would have motivated one of ordinary skill in the art
to combine slits (i.e., notches) 7 with the pads 32, 42 on Machado’s printed
wiring board 30 (i.e., reinforcement plate) and ceramic substrate card 40
(i.e., fragile substrate) to facilitate aligning the wire leads 20 of the
connector 10 to prevent lateral dislocation of the leads during soldering.
Moreover, as we aforenoted, both Sakemi and Machado disclose
aligning and placing leads on bond pads prior to soldering. The similarity of
Sakemi’s and Machado’s soldering technique indicates that placing
Sakemi’s slits (i.e., notches) 7 in the pads 32, 42 of Machado would
reasonably be expected to successfully hold the leads 20 in place during
soldering.
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We affirm the § 103(a) rejection over Machado in view of Sakemi of
argued claim 12 and of non-argued claims 13-19.

CONCLUSION
We have affirmed the § 102(b) rejection of claims 1, 3, 5-7, 9, and 21
over Machado.
We have affirmed the § 102(b) rejection of claims 1, 3, 4, and 8-11
over Hanato.
We have affirmed the § 103(a) rejection of claims 2, 17, 20, and 22
over Hanato in view of Farnsworth.
We have affirmed the § 103(a) rejection of claims 12-19 over
Machado in view of Sakemi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(I)(iv).

AFFIRMED

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