Lee, Chi-Tsung et al.

Patent Trials and Appeals Board

Aug 5, 2020

15151159 - (D) (P.T.A.B. Aug. 5, 2020)

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.
15/151,159 05/10/2016 Chi-Tsung Lee TI-76386 6703
23494 7590 08/05/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
ZAKARIA, AKM
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
08/05/2020 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHI-TSUNG LEE, MING-CHUAN YOU, CHIEN-LIN WU,
DAVID ANTHONY GRAHAM, ANDREW PATRICK COUCH
____________

Appeal 2019-001028
Application 15/151,159
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, DEBRA L. DENNETT, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–29. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Texas
Instruments Incorporated. Appeal Br. 1.
Appeal 2019-001028
Application 15/151,159

2
The invention relates to a handler for holding an electronic device
during high voltage testing. Spec. ¶ 13. Claim 1 illustrates the subject
matter on appeal and is reproduced below:
1. A handler for holding an electronic device during high
voltage testing, the handler comprising:
conductive lead guides, each lead guide having a single
conductive surface for shorting all leads on one side of an
electronic device under test; and
a plurality of connectors connecting the lead guides to
conductors.
Independent claim 26 is also directed to a handler similar to claim 1
but including additional features. Independent claims 14 and 17 are directed
to a method of using and a method of making a handler, respectively.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:
I. Claims 1–4, 6–10, 13, 17, 19, and 20–26 rejected under 35
U.S.C. § 102(a)(1) as anticipated by Cedrone (US 4,956,604, issued
September 11, 1990).

II. Claims 5, 14–16, 18, and 27–29 rejected under 35 U.S.C. § 103
as unpatentable over Cedrone and Yoshida (US 2011/0309850 A1,
published December 22, 2011).

III. Claims 11 and 12 rejected under 35 U.S.C. § 103 as
unpatentable over Cedrone and Buchanan (US 5,502,397, issued March 26,
1996).

Appeal 2019-001028
Application 15/151,159

3
OPINION
CLAIM INTERPRETATION
There is a dispute between the Examiner and Appellant as to the
meaning of the claim 1 language “each lead guide having a single
conductive surface for shorting all leads on one side of an electronic device
under test.” Appellant contends that the disputed language recites that a
single conductive surface contacts all leads of an electronic device for
shorting. Appeal Br. 8. The Examiner interprets the language to encompass
multiple conductive surfaces protruding from a single conductive plate.
Ans. 5; see Cedrone Figures 3 and 4 (showing plate 18a having individual
protrusions 40 combined with individual contacts 16a). Therefore, as a
preliminary matter, our review of the Examiner’s analysis requires that the
claims must first be construed to define the scope and meaning of the subject
matter before us on appeal. See Gechter v. Davidson, 116 F.3d 1454, 1457
(Fed. Cir. 1997).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that the scope of the
claims in patent applications is not determined solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim
Appeal 2019-001028
Application 15/151,159

4
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term’” (citation omitted)). In general,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the [Appellant’s] [S]pecification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Thus, the terms in the appealed claims must be given their broadest
reasonable interpretation including the ordinary meaning unless another
meaning is intended by Appellant as established in the written description of
their Specification. See, e.g., In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir.
1989). Indeed, “[i]t is the applicants’ burden to precisely define the
invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, 127 F.3d at 1055–56.
The noted limitation was added via amendment on November 28,
2017. While the term “single conductive surface” does not appear in the
Specification, as originally filed, the Specification does describe that “lead
guides 202 [] press against the tops of the leads 104. Each lead guide 202
contacts one surface of all the leads 104 on one side of the isolator 102,
thereby shorting all the leads 104 on one side of the isolator 102 together.”
Spec. ¶ 12. This description implies that the lead guide has a single
conductive surface that is in physical contact (that is, presses against) with
the leads of the electronic device at the point where they meet. We have
considered the Examiner’s alternative interpretation (Ans. 5); however, the
Examiner’s interpretation is not based on an appropriate interpretation of the
Appeal 2019-001028
Application 15/151,159

5
disputed language because it does not give proper weight to the recitation of
“a single conductive surface for shorting all leads on one side of an
electronic device under test” as described in the Specification.
Therefore, based on the description in the Specification, we determine
that the broadest reasonable interpretation of the disputed claim 1 language
“each lead guide having a single conductive surface for shorting all leads on
one side of an electronic device under test” is that each lead guide has a
single conductive surface that physically contacts all the leads of an
electronic device to be tested at the point where the single conductive
surface and the leads meet.
We also point out that independent claims 14, 17, and 26 recite this or
similar language. We, therefore, also interpret those claims in the same
manner.2
REJECTION I (Anticipation under 35 U.S.C. § 102(a)(1))
After review of the respective positions that Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Office
Action and the Answer, we REVERSE the Examiner’s prior art rejection of
claims 1–4, 6–10, 13, 17, 19, and 20–26 under 35 U.S.C. § 102(a)(1)for the
reasons Appellant presents. We add the following.3

2 We note that claim 26 does not expressly recite a single conductive
surface. However, we find that claim 26’s recitation of “each lead guide for
pressing down against and shorting all leads on one side of an electronic
device under test” implies that a single conductive surface is pressed down
against and shorting all leads.
3 We limit our discussion to independent claim 1 with the understanding that
the discussion applies equally to the subject matter of all independent
claims.
Appeal 2019-001028
Application 15/151,159

6
Independent claim 1 recites a handler for holding an electronic device
during high voltage testing comprising conductive lead guides, where each
lead guide has a single conductive surface for shorting all leads on one side
of an electronic device under test.
The Examiner finds that Cedrone teaches a handler that anticipates the
claimed invention based on the interpretation of Cedrone’s combination of
plate 18a having holders 40 holding tips 44 and plurality of rows 16 having
contacts 16a constitutes a “lead guide having a single conductive surface for
shorting all leads on one side of an electronic device under test,” as claim 1
recites. Final Act. 5; Ans. 5; Cedrone Figures 2A, 2–5. The premise of the
Examiner’s rejection is that Cedrone’s plate 18a is a single conductive
surface that contact all the leads of an electronic device for shorting through
a plurality of spaced apart connection members 44, which are an extension
of plate 18a through a connection established with spaced apart holders 40
and capacitors/resistors 42. Final Act. 5; Ans. 5–6; Cedrone Figure 2A; col.
8, ll. 7–25. That is, the Examiner asserts that individual surfaces of
Cedrone’s plurality of connection members 44 are a single surface that
contacts all the leads of the electronic device.4

4 Cedrone discloses the use of two rows of discrete individual surfaces 44
(from plate 18a) and 22 (from contacts 16), each of the surfaces 44 and 22
contacting the same single lead of an electronic device. See Cedrone Figures
2A, 5–6, col. 6, ll. 40–5,8; col. 8, ll. 7–25. The Examiner recognizes this by
pointing out that “conductive lead guides (each connection tip members 44
as extension of single plate 18a, contact tip 22 as extension of single plate of
16a connecting to each leads 24.” Final Act. 5 (emphases added). To the
extent that the Examiner is relying on the two rows of a plurality of
individual surfaces to address the rejection, the Examiner does not explain
why Cedrone’s two rows of discrete individual surfaces 44 and 22 constitute
Appeal 2019-001028
Application 15/151,159

7
Appellant argues Cedrone teaches a row of a plurality of individual
contacts 16, each terminating in ends 22, and a row of mutually spaced
apart, C-shaped chip holders (40) formed on the upper end of plane (18)
with an individual connecting member 44 associated with each holder 40.
Appeal Br. 8–9; Cedrone Figures 2A, 3–5; col. 6, ll. 41–58, col. 8, ll. 7–15.
According to Appellant, Cedrone does not teach or suggest a single contact
16 or 44 contacting more than one lead 24 on electronic device but instead
teaches two rows of individual surfaces 22 and 44 that contact an individual
lead of the electronic device. Appeal Br. 8–9. As such, Appellant asserts
that Cedrone’s plurality of individual contacts do not form a single
conductive surface for shorting leads on one side of the electronic device
being tested. Id.
We agree with Appellant that there is reversible error in the
Examiner’s finding of anticipation. For the Examiner to carry the burden of
establishing a prima facie case of anticipation, the Examiner must establish
where each and every element of the claimed invention, arranged as required
by the claim, is found in a single prior art reference, either expressly or
under the principles of inherency. See generally In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).

a single conductive surface as claimed. We also note that the Examiner
refers to plate 18a as the single conductive surface. Ans. 6. We understand
the Examiner’s position to be that the plate area 18a is a single conductive
surface that contacts the leads of the electronic device through connecting
members 44. However, such an interpretation still does not address the issue
discussed above regarding the plurality of spaced apart surfaces.
Appeal 2019-001028
Application 15/151,159

8
As we discuss above, the claimed invention requires that each lead
guide has a single conductive surface that physically contacts all the leads of
an electronic device to be tested at the point where they meet. As Cedrone
illustrates in Figures 2A and 3–6, each holder 40 of plate 18a, through
connecting member 44, contacts a single lead of the electronic device.
Cedrone, col. 8, ll. 7–10. The Examiner does not direct us to any portion of
Cedrone that expressly discloses plate 18a as having a single conductive
surface for shorting all leads on one side of an electronic device under test as
claimed. Nor does the Examiner explain why Cedrone would inherently
teach this limitation. Accordingly, we REVERSE the Examiner’s prior art
rejection of claims 1–4, 6–10, 13, 17, 19, and 20–26 under 35 U.S.C. §
102(a)(1) for the reasons the Appellant presents and we give above.
REJECTIONS II and III (Obviousness under 35 U.S.C. § 103)
In addressing the rejections of claims 5, 11, 12, 14–16, 18, and 27–29,
the Examiner relies on additional secondary references to Yoshida and
Buchanan to meet respective limitations of these claims. See generally Final
Act. The Examiner does not rely on the additionally cited references to
address the deficiencies in Cedrone’s teachings we note above. Id. Nor do
these references cure such noted the deficiencies.
Accordingly, we REVERSE the Examiner’s prior art rejections of
claims 5, 11, 12, 14–16, 18, and 27–29 under 35 U.S.C. § 103 for the
reasons the Appellant presents and we give above.

Appeal 2019-001028
Application 15/151,159

9
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–10,
13, 17, 19,
20–26
102(a)(1) Cedrone 1–4, 6–10,
13, 17, 19,
20–26
5, 14–16,
18, 27–29
103 Cedrone, Yoshida 5, 14–16,
18, 27–29
11, 12 103 Cedrone,
Buchanan
11, 12
Overall
Outcome
1–29

REVERSED