Ex Parte 6530798 et alDownload PDFPatent Trials and Appeals BoardJun 27, 201390009869 - (R) (P.T.A.B. Jun. 27, 2013) Copy Citation 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. 90/009,869 01/06/2011 6530798 578119-620011 9116 24325 7590 03/20/2014 PATENT GROUP 2N JONES DAY NORTH POINT 901 LAKESIDE AVENUE CLEVELAND, OH 44114 EXAMINER REICHLE, KARIN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/20/2014 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 HON HAI PRECISION INDUSTRY COMPANY, LTD. Appellant ____________ Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 Technology Center 3900 ____________ Before KEVIN F. TURNER, ERIC B. CHEN, and JOHN A. EVANS, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 2 Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision on Appeal entered June 27, 2013. (“Decision”), which affirmed the Examiner’s final rejection of claims 1-5 and 7-25. The Request for Rehearing is denied. DISCUSSION Hoffman First, Appellant argues that “[i]t cannot be disputed that Hoffman does not disclose a plurality of standoffs that protrude from or are on the bottom surface of the base of a connector” because “Hoffman is directed to a standoff for an electronic package and not a standoff for a connector.” (Req. for Reh’g 3.) However, Appellant’s Appeal Brief argues that “[a]s an initial matter, the Hoffman ‘427 patent is directed to a ball grid array electronic package and not a ball grid array socket connector” (App. Br. 23), which was addressed in our Decision at pages 8-9 (bridging paragraph). Other than reiterating an argument that was previously presented (Req. for Reh’g 3), Appellant has failed to “state with particularity the points believed to have been misapprehended or overlooked by the Board” as required by 37 C.F.R. § 41.52. Second, Appellant argues that “Hoffman teaches away from applying its standoff to a connector” because “[a]n important objective of Hoffman is achieved by the standoff 12 of Hoffman being bonded to the base 14 of the electronic package 10 and not to the base of a connector.” (Req. for Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 3 Reh’g 4.) Third, Appellant argues that “[c]laims 1-3, 7-8, 11-13, 16-18, and 21-23 all recite ‘a plurality of stand-offs downwardly protruding from the bottom surface of the base and terminating at a plane generally parallel with the bottom surface of the base’” (Req. for Reh’g 7) and accordingly, the “Decision misapprehended or overlooked the claim language, as properly construed, which requires a plurality of standoffs to terminate in a plane, (i.e., to have a flat bottom surface) and the dimples and ridges of Hoffman terminate in a curved surface instead of a plane” (Req. for Reh’g 8). However, these are new arguments not raised in the Briefs before the Board. Such new arguments will not be considered. “Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R. § 41.52(a)(1). Appellant has not identified a reason for meeting one of these exceptions. Fourth, Appellant argues that “[t]he Decision appears to misapprehend the claim language in claims 2, 5, 12, 15, 17, 20, 22 and 25, which recite ‘wherein at least one of the stand-offs is not aligned with the other standoffs.’” (Req. for Reh’g 8.) In particular, Appellant argues that “[t]his claim language requires that at least one stand-off to not be in a straight line with another stand-off, based on the ordinary meaning of the term ‘align’ which is to “place or arrange (things) in a straight line” and “[t]he claim language does not require that each stand-off must be in the Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 4 same line as each of the remaining stand-offs as suggested by the Decision.” (Id.) However, our Decision states: Hoffman explains that “ribs or a pattern of reinforcing dimples 70 may be provided in noncritical portions of the standoff, such as along a diagonal or disposed about the center of the standoff to increase the stiffness of the central portion 56.” (Col. 5, ll. 17-20.) Figure 8 of Hoffman illustrates two diagonals of dimples, such that dimples selected from opposite diagonals are “not aligned.” (Dec. 12.) Appellant further admits Figure 8 of Hoffman illustrates that “dimples 70 along one diagonal are not aligned with dimples 70 in another diagonal.” (Req. for Reh’g 9.) Stated differently, the claim language “wherein at least one of the stand-offs is not aligned with the other standoffs” is broad enough to encompass Figure 8 of Hoffman, because the dimples 70 of one diagonal are “not aligned” with some of the dimples 70 from the opposite diagonal. Fifth, Appellant argues that “[c]laims 21-23 recite: ‘wherein at least one of the plurality of stand-offs is not located at a central portion of the base’ and claims 24-25 recite: ‘wherein at least one of the multiple stand- offs is not located at a central portion of the base.’” (Req. for Reh’g 10.) Appellant further argues that the “Decision misapprehended or overlooked the claim language, as properly construed, which requires ‘at least one of the plurality of [or multiple] stand-offs [to] not [be] located at a central portion of the base’. . . .” (Req. for Reh’g 11.) Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 5 With respect to claims 21-25, Appellant’s Appeal Brief states that: Claims 21-23 . . . recite “wherein at least one of the plurality of stand-offs is not located at a central portion of the base.” Claims 24-25 . . . recite “wherein at least one of the multiple stand-offs is not located at a central portion of the base.” The Patent Owner submits that none of the applied references disclose these claim features and thus claims 21-25 are patentable for this additional reason. (App. Br. 27.) Appellant’s previously presented arguments are not substantive because such arguments merely provide a conclusory statement that the references do not teach the features of dependent claims 21-25. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Accordingly, these are new arguments not raised in the Briefs before the Board and such new arguments will not be considered. 37 C.F.R. § 41.52(a)(1). Higuchi Sixth, Appellant argues “[t]he Decision has taken the position that the unambiguous disclosure of the solder balls supporting the connector and not the stands supporting the connector through drawing 4 of Higuchi should be disregarded as an illustration error” and that [t]his position appears to be based on the Decision’s apparent view that the only way for the crushing prevention stands 50 to prevent the solder ball from being crushed when subjected to a force by accident is if the crushing prevention stand 50 supports the connector instead of the solder balls supporting the connector. Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 6 (Req. for Reh’g 14.) Our Decision states that: Furthermore, Higuchi explains that the solder ball connector 1 is mounted to the printed-circuit board 4 using reflow soldering (¶ [0015]) and “[w]hen a solder ball connector has the external force by an accident . . . the solder ball crushing prevention stand 50 prevents the solder ball 10 from being crushed” (¶ [0016]). Because Higuchi expressly states that the solder ball crushing prevention stand 50 “prevents the solder ball 10 from being crushed” (¶ [0016]), the “gap” in Drawing 4 between the mounted to the printed-circuit board 4 is likely an illustration error. Without additional evidence, Appellant’s arguments with respect to Drawing 4 are not persuasive. (Dec. 10.) Contrary to Appellant’s argument that our previous Decision relies upon “the unambiguous disclosure of the solder balls supporting the connector and not the stands supporting the connector through drawing 4” (Req. for Reh’g 14), our Decision relies upon the express explanation in Higuchi that “the solder ball crushing prevention stand 50 prevents the solder ball 10 from being crushed” (¶ [0016]). Regardless of the existence of a “gap” in Drawing 4 of Higuchi, the claim language “adapted to support the socket connector onto the PC board after the solder balls have been heated and melted” is broad enough to encompass the “the solder ball crushing prevention stand 50 [of Higuchi that] prevents the solder ball 10 from being crushed.” (¶ [0016].) Even if Appellant is correct that the “gap” of Drawing 4 exists, Higuchi states that the solder ball connector 1 is subjected to a solder reflow process (¶ [0015]), thus softening and melting the solder balls 10. Accordingly, because the solder balls 10 soften during reflow soldering and are unable to provide mechanical support for the solder ball connector 1, any “gap” between the solder ball connector 1 and the Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 7 printed-circuit board 4 would be eliminated due to the weight of the solder ball connector 1. Appellant also argues that “it is more likely that the crushing prevention stand 50 allows some compression of the solder ball when subjected to a force by accident, but not enough to allow the solder ball to be crushed” and “it could be that upon application of a force by accident, the circuit board could flex enough to allow one leg of the crushing prevention stand 50 to support the connector relieving some of the pressure on a solder ball to prevent the crushing of the solder ball.” (Req. for Reh’g 15.) However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Appellant further argues that “[m]oreover, if there is some error in the drawings, Higuchi is inoperative and cannot be used as a prior art reference.” (Req. for Reh’g 16.) However, Higuchi is presumed to be operable and the burden is on Appellant to provide facts rebutting this presumption of operability. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Appellant has not provided any persuasive rebuttal evidence that Higuchi is inoperable. Seventh, Appellant argues that “Higuchi . . . lacks a teaching regarding ‘being adapted to support the socket connector on the PC board resulting from the solder balls having been heated and melted,’” as recited in claims 11-13. (Req. for Reh’g 17.) Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 8 With respect to claims 11-13, Appellant’s Appeal Brief argues: Claims 11-13 . . . recite “the stand-offs adapted to support the socket connector onto the PC board after and resulting from the solder balls having been heated and melted.” None of the applied references disclose these claim features and thus claims 11-13 are patentable for this additional reason. (App. Br. 37.) Again, Appellant’s previously presented arguments are not substantive because such arguments merely provide a conclusory statement that the references do not teach the features of dependent claims 11-13. See Lovin, 652 F.3d at 1357. Accordingly, these are new arguments not raised in the Briefs before the Board and such new arguments will not be considered. 37 C.F.R. § 41.52(a)(1). Last, Appellant argues that “Higuchi additionally lacks a teaching regarding ‘being adapted to support the socket connector on the PC board immediately after the solder balls having been heated and melted,’” as recited in claims 16-18. (Req. for Reh’g 18.) With respect to claims 16-18, Appellant’s Appeal Brief argues: Claims 16-18 . . . recite “the stand-offs adapted to support the socket connector onto the PC board immediately after the solder balls have been heated and melted.” None of the applied references disclose these claim features and thus claims 16-18 are patentable for this additional reason. (App. Br. 37.) Again, Appellant’s previously presented arguments are not substantive because such arguments merely provide a conclusory statement that the references do not teach the features of dependent claims 16-18. See Lovin, 652 F.3d at 1357. Accordingly, these are new arguments not raised in the Briefs before the Board and such new arguments will not be considered. 37 C.F.R. § 41.52(a)(1). Appeal 2013-006699 Reexamination Control 90/009,869 Patent 6,530,798 9 CONCLUSIONS The Request for Rehearing has been considered and is denied. 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). REHEARING DENIED ak PATENT OWNER : Patent Group 2N Jones Day North Point 901 Lakeside Avenue Cleveland, OH 44114 THIRD PARTY REQUESTER : Sheppard Mullin Richter & Hampton, LLP 390 Lytton Avenue Palo Alto, CA 94301 Copy with citationCopy as parenthetical citation