Ex Parte Fjelstad

Patent Trial and Appeal Board

Sep 13, 2017

13228826 (P.T.A.B. Sep. 13, 2017)

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.
13/228,826 09/09/2011 Joseph Charles Fjelstad VEI-017 8301
73481 7590 09/15/2017
Alliapp.nse. T imiteH T T .P
EXAMINER
2310 Homestead Rd DULKO, MARTA S
#C 1-505
Los Altos, CA 94024-7339 ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
emi @ alliacense.com
ip @ alliacense. com
ned @ alliacense. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSPEH CHARLES FJELSTAD
Appeal 2016-003493
Application 13/228,826
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and
SHELDON M. MCGEE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
May 21, 2015 decision finally rejecting claims 1 and 11 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as the inventor, Joseph
Charles Fjelstad (Appeal Br. 1).
Appeal 2016-003493
Application 13/228,826
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a solderless manufacturing
process that employs a component support fixture that provides support for
components during subsequent processing (Abstract). The component
support fixture provides oversized compartments for housing components of
varying sizes (id.). The compartments have vent holes to vent excess air or
insulating material when the component support fixture is pressed against
the components during manufacture. Details of the invention are described
in claim 1, which is reproduced below from the Claims Appendix of the
Appeal Brief (emphasis added)'.
1. A process comprising:
placing components having at least two heights or two widths or
both defining a size range on an anisotropic adhesive substrate,
wherein the anisotropic adhesive substrate comprises an adhesive
film consisting of an anisotropic adhesive that is conductive in a
direction vertical to the plane of the adhesive film, the adhesive
film adhered to a metal foil; each component having at least one
lead that contacts the substrate, the components adhesively
attached to the anisotropic adhesive substrate without solder;
coating the components with an insulating material;
placing a component support fixture over the components, the
component support fixture comprising oversized compartments
surrounding the components, the size chosen such that the
compartments accommodate components of all sizes with the size
range; wherein the component support fixture comprises vent
holes to permit venting of air or excess insulating material;
pressing the component support fixture until it contacts the
substrate;
patterning the metal foil to provide an electrical connection to
the at least one lead through the anisotropic adhesive.
2
Appeal 2016-003493
Application 13/228,826
DISCUSSION
Claims 1 and 11 — the only claims on appeal — are rejected under
35 U.S.C. § 103(a) as being unpatentable over Grupp2 in view of Akagawa,3
and further in view of Lawlyes.4 The Examiner finds that Grupp discloses
each step of the claimed method, except that it is silent with respect to the
substrate being anisotropic, the components being attached adhesively to the
substrate (Final Act. 3), and the support fixture having vent holes (Final Act.
4). The Examiner finds that Akagawa discloses an anisotropic substrate and
adhesively attaching the components to the substrate (Final Act. 3), and that
Fawlyes teaches the vent holes (Final Act. 4).
Appellant does not allege error in the findings relating to Akagawa or
Fawlyes, or that their combination with Grupp in the rejection was improper
(see, Appeal Br. 4—5). Instead, Appellant argues that the Examiner erred in
finding that Grupp discloses the following claim limitation: “oversized
compartments surrounding the components, the size chosen such that the
compartments accommodate components of all sizes with[sic] the size
range” where the size range is defined by “components having at least two
heights or two widths or both defining a size range” (Appeal Br. 4).
Appellant does not dispute that Grupp discloses components and
compartments of different heights and widths, but argues that Grupp’s
compartments are sized to fit specific components and do not accommodate
components of all sizes and, therefore, do not meet the requirements of
claim 1 (Appeal Br. 5).
2 Grupp, US 2001/0043513 Al, published November 22, 2001.
3 Akagawa, US 5,886,415, issued March 23, 1999.
4 Fawlyes et al., US 2007/0023488 Al, published February 1, 2007.
3
Appeal 2016-003493
Application 13/228,826
Thus, the dispositive issue is whether the correct claim construction
requires that each compartment in the component support fixture
accommodates components interchangeably.
The Examiner determines that the limitation “the component support
fixture comprising oversized compartments surrounding the components, the
size chosen such that the compartments accommodate components of all
sizes with the size range” comprises two separate clauses which are analyzed
separately (Ans. 2). The Examiner determines that the first clause (“the
component support fixture comprising oversized compartments surrounding
the components”) is met by Grupp because, as illustrated in the Examiner’s
annotated version of FIGS. 4A and 4B, compartments A and B surround,
and are therefore larger than, their respective components 66 and 26:
An annotated version of Grupp’s FIGS. 4A and 4B shows the Examiner’s
interpretation of how Grupp discloses one of the limitations recited in claim 1.
The Examiner construes the clause “the size chosen such that the
compartments accommodate components of all sizes with the size range” as
Rg.. 48
66 24 26 68
4
Appeal 2016-003493
Application 13/228,826
simply requiring that each component be accommodated in a compartment,
and that the claim language “does not require each compartment to be the
same size or accommodate components interchangeably” (Ans. 2).
By contrast, Appellant argues that the claim requires that the
compartments accommodate components of all sizes and that Grupp does
not disclose or suggest such an arrangement (Appeal Br. 4—5).
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
In this instance, the Specification states that the invention described
therein is contrasted with the prior art because while the prior art contains
compartments of various sizes for different size components, “there is no
consideration of how to accommodate particular components that have
ranges of sizes” (Spec. 3). Most tellingly, the Specification states, in
connection with the detailed description of Figure 4, that “the size of the
compartments [52] and [62]5 is chosen such that they can accommodate
components of all sizes in [] both the vertical and horizontal ranges” (Spec.
7).
In light of the foregoing disclosure of the Specification, as well as the
claim language which defines “a size range” as covering at least two heights
5 It is apparent that the Specification misidentifies these compartments with
reference numerals 50 and 52.
5
Appeal 2016-003493
Application 13/228,826
or widths or both of at least two components and states that the
compartments “accommodate components of all sizes with the size range”
(emphasis added), we determine that the broadest reasonable construction of
the claim language at issue is that each of the compartments is sized so that
they may accommodate each of the components. Given the specific
disclosures of this application, it would be unreasonable to construe the
claim to include a configuration which the Specification describes the
claimed invention as being an improvement over. See, e.g. In re Man
Machine Interface Technologies LLC, 822 F.3d 1282, 1286—87 (Fed. Cir.
2016).
With this claim construction, the Examiner’s finding that Grupp
discloses “the component support fixture comprising oversized
compartments surrounding the components, the size chosen such that the
compartments accommodate components of all sizes with the size range” is
not supported by a preponderance of the evidence of record.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). Because the Examiner has admittedly not made
6
Appeal 2016-003493
Application 13/228,826
findings that the cited prior art teaches compartments that can accommodate
all sizes, we reverse the obviousness rejection.
CONCLUSION
We REVERSE the rejection of claims 1 and 11 under 35 U.S.C. § 103(a)
as being unpatentable over Grupp in view of Akagawa, and further in view of
Lawlyes.
REVERSED
7