Ex Parte Stearns et al

Board of Patent Appeals and Interferences

May 11, 2007

09678318 (B.P.A.I. May. 11, 2007)

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for publication and is not binding precedent of the Board.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 WILLIAM P. STEARNS
and NOZAR HASSANZADEH
____________

Appeal 2007-0698
Application 09/678,318
Technology Center 2800
____________

Decided: May 11, 2007
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

REMAND UNDER 37 C.F.R. § 41.50(a)(1) and
ORDER UNDER 37 C.F.R. § 41.50(d)

This is the second remand of this application. Unfortunately, the
present case is still not ready for a decision. As stated in our previous
remand, the central issue on appeal is rather Ohsawa describes, within the
meaning of § 102, the claim requirement that “each trace of each of said pair
of traces being spaced from the other trace of said pair by up to a ball pitch,
Appeal 2007-0698
Application 09/678,318

being maximized for identity in length and having up to one ball pitch
difference in length and being maximized for parallelism and spacing.”
The Examiner, at pages 9 and 10 of the Answer, attempts to
demonstrate how Ohsawa describes the claim recitation by reproducing
Figure 3J of the reference with commentary superimposed over the Figure.
However, the Examiner’s comments are not readily understood. For
instance, Comment (1) states that the Arrow Y indicates a ball pitch, yet no
arrow is evident in the reproduced Figure. Comment (3) refers to a Length
(2) that is not clear in the Figure. Comment (4) explains that Arrow X
points to a pair of traces but no such arrow appears in the drawing. Also, the
Examiner should explain the meaning of L1+L2 referred to in Comment (4).
Appellants, on the other hand, offer little more than conclusory
remarks to the effect that the Ohsawa reference does not literally disclose the
wording of the claim recitation. We agree with the Examiner that
“Appellant has not pointed out specifically how Ohsawa does not read on
claimed subject matter” (Answer 7, first para.). In our view, the Examiner’s
rejection is based on the rationale that Ohsawa reasonably appears to
disclose a pair of traces whose spacing is not greater than the ball pitch, and
whose length is maximized for identity to the extent that any difference in
length between the traces is not greater than one ball pitch. Also, it seems to
be the Examiner’s position that the traces of Ohsawa appear to be parallel
and, therefore, maximized for parallelism. Appellants, however, have
simply noted in their Reply Brief that the Examiner has made no specific
reference to a disclosure in Ohsawa with corresponds to the Examiner’s
description of the reference. Appellants have advanced no reasoning, based
on the drawings of Ohsawa, why the Examiner’s analysis is necessarily in
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Appeal 2007-0698
Application 09/678,318

error, nor have Appellants set forth their own analysis of the reference
disclosure
Accordingly, we hereby order Appellants to place of record a factual
analysis of Ohsawa which explains why the traces of the reference are
spaced from each other by greater than a ball pitch.1 Also, Appellants
should place of record definitions for the recitations “maximized for
identity in length” and “maximized for parallelism and spacing.” It would
seem that one of ordinary skill in the art, such as Ohsawa, would necessarily
maximize the identity in length of the traces, as well as their parallelism and
spacing. Indeed, based on Appellants’ Specification, it would appear that
maximizing the identity in length of the traces would amount to making the
pair of traces as short as possible to minimize resistance. Consequently,
Appellants should establish how one of ordinary skill in the art would
reasonably interpret the Ohsawa disclosure and how methods of laying out
traces within the scope of the appealed claims patentably distinguish over
methods fairly described by Oshawa. Manifestly, before decision on this
appeal, Appellants’ position regarding any distinction between the traces
presently claimed and described by Ohsawa should be clear on the record.
This remand to the Examiner pursuant to 37 C.F.R § 41.50(a)(1) is
made for further consideration of a rejection. After receipt of Appellants’
response in compliance with 37 C.F.R § 41.50(d), the Examiner must
acknowledge receipt and entry of the response. In addition, the Examiner
may withdraw the final rejection and reopen prosecution or may furnish a

1 Pursuant to 37 C.F.R. § 41.50(d)(1) (2004), we order the Appellants to file
a Supplemental Paper to additionally brief any matter deemed appropriate
for a reasoned decision on this appeal.
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Appeal 2007-0698
Application 09/678,318

Supplemental Examiner's Answer responding to any new issue raised in the
response. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if a Supplemental
Examiner’s Answer is written in response to this Remand by the Board.
Also, any Supplemental Answer should only be issued after Appellants have
complied with our Order.
Appellants are given a non-extendable time period of two (2)
months from the mailing date of this order to file a Supplemental Paper.
Failure to respond within the given time period will result in the dismissal of
the appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REMANDED and ORDER UNDER 37 C.F.R. § 41.50(d)(1)

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