11327710 (B.P.A.I. Apr. 28, 2009)

Ex Parte Hougham et al

Board of Patent Appeals and InterferencesApr 28, 2009

11327710 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GARETH G. HOUGHAM, BRIAN S. BEAMAN, JOHN S. CORBIN, PAUL COTEUS, SHAWN A. HALL, KATHLEEN C. HINGE, THERON L. LEWIS, FRANK R. LIBSCH and AMANDA E. E. MIKHAIL ________________ Appeal 2009-1708 Application 11/327,710 Technology Center 2800 ________________ Decided:1 April 28, 2009 ________________ Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and JEFFREY B. ROBERTSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 5 and 9. Claims 11-20, which are all of the other 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-1708 Application 11/327,710 pending claims, stand withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a land grid array (LGA) interposer and an array of electrical contacts comprising the LGA interposer. Claim 5 is illustrative: 5. A land grid array interposer (LGA) for interconnecting mating parts of two electronic devices, comprising: said LGA interposer comprising a two-dimensional array of individual solid contacts molded in a first step to a standard planar topography and then in a second step, sized to acquire a desired topography and achieve a substantially equal load distribution of said array; a first side of said interposer having a first x-y array of contacts, each said contact in said first x-y array of contacts having a z-dimension substantially equal to a dimension corresponding to deviations from planarity of a first mating part of one type determined by evaluating average and standard deviation of each contact position for a sampling of a first electronic device and then calculating a best fit inverse topography to accommodate variation at each said xy position to best account for random variations; a second, opposing side of said interposer having a second x-y array of contacts, each said contact in said second array of contacts having a z- dimension substantially equal to a dimension corresponding to deviations from planarity of a second mating part of a second type determined by evaluating average and standard deviation of each contact position for a sampling of a second electronic device and then calculating a best fit inverse topography to accommodate variation at each said xy position to best account for random variations. The Reference Brown 2004/0253846 A1 Dec. 16, 2004 2 Appeal 2009-1708 Application 11/327,710 The Rejection Claims 1, 5 and 9 stand rejected under 35 U.S.C. § 102(a) over Brown. OPINION We affirm the Examiner’s rejection. Issue Have the Appellants shown reversible error in the Examiner’s determination that Brown discloses, expressly or inherently, an LGA interposer comprising a two-dimensional array of individual solid contacts sized to acquire a desired topography and achieve a substantially equal load distribution of the array? Findings of Fact Brown discloses a flat LGA interposer comprising 1) contact elements 572, 574, 576, 578 and 580 on one side and terminals 582, 584, 586, 588, 590 on the other side (¶ 0102; Fig. 10C), 2) contact elements 604, 606 on one side and contact elements 607, 608 on the other side (¶ 0106; Fig. 12), and 3) contact elements 704, 706 on one side and contact elements 708, 709 on the other side (¶ 0108-09; Figs. 13A, 14). Analysis “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). The patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by- 3 Appeal 2009-1708 Application 11/327,710 process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.”). Whether a rejection is under 35 U.S.C. § 102 or § 103, when the appellants’ product and that of the prior art appear to be identical or substantially identical, the burden shifts to the Appellants to provide evidence that the prior art product does not necessarily or inherently possess the relied-upon characteristics of the Appellants’ claimed product. See In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974). The reason is that the Patent and Trademark Office is not able to manufacture and compare products. See Best, 562 F.2d at 1255; In re Brown, 459 F.2d 531, 535 (CCPA 1972). The Examiner correctly argues that the Appellants’ claim limitations regarding the manufacture of the LGA interposer are product-by-process limitations and that patentability is determined based upon the LGA interposer itself, not the recited process limitations for making it (Ans. 3, 7). The Appellants do not challenge that argument. The Examiner argues that the Appellants’ claims do not require that the desired topography differs from flat or substantially flat and that, therefore, the Appellants’ claimed invention is anticipated by Brown’s flat LGA interposer (Ans. 4-9). The Appellants do not address the Examiner’s argument and explain why the Appellants consider it to be incorrect. The Appellants merely recite essentially all of the claim limitations and argue that the Examiner has not identified where Brown discloses those limitations (Br. 12). 4 Appeal 2009-1708 Application 11/327,710 The Examiner has explained where the Appellants’ claim limitations are considered by the Examiner to be disclosed by Brown (Ans. 3-11). The Appellants have not addressed that explanation and provided any reason why the Appellants consider it to be incorrect. Conclusion of Law The Appellants have not shown reversible error in the Examiner’s determination that Brown discloses, expressly or inherently, an LGA interposer comprising a two-dimensional array of individual solid contacts sized to acquire a desired topography and achieve a substantially equal load distribution of the array. DECISION/ORDER The rejection of claims 1, 5 and 9 under 35 U.S.C. § 102(a) over Brown is affirmed. It is ordered that the Examiner’s decision 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 tc SHELLEY M. BECKSTRAND, ESQ. P.C. PATENT ATTORNEY 61 GLENMONT ROAD WOODLAWN, VA 24381 5