MAGNA ELECTRONICS INC.Download PDFPatent Trials and Appeals BoardMar 24, 20212019005885 (P.T.A.B. Mar. 24, 2021) 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. 14/989,372 01/06/2016 John T. Wichlacz MAG04-P2672-423950 8859 153508 7590 03/24/2021 HONIGMAN LLP/MAGNA 650 TRADE CENTRE WAY SUITE 200 KALAMAZOO, MI 49002-0402 EXAMINER BECK, LERON ART UNIT PAPER NUMBER 2487 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): asytsma@honigman.com patent@honigman.com tflory@honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN T. WICHLACZ Appeal 2019-005885 Application 14/989,372 Technology Center 2400 Before CARL W. WHITEHEAD, JR., MICHAEL J. STRAUSS, and DAVID J. CUTITTA, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s Final rejection of claims 1–20.1, 2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 We refer to the Specification, filed January 6, 2016 (“Spec.”); the Final Office Action, mailed July 2, 2018 (“Final Act.”); the Appeal Brief, filed February 1, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed June 5, 2019 (“Ans.”); and the Reply Brief, filed August 2, 2019 (“Reply Br.”). 2 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 Magna Electronics Inc. Appeal Br. 2. Appeal 2019-005885 Application 14/989,372 2 We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to a printed circuit board (pcb) for a camera of a vehicle vision system. Spec., Title. Claim 1, reproduced below with labels added, is illustrative of the claimed subject matter: 1. A camera for a vision system of a vehicle, said camera comprising: [(a)] a printed circuit board comprising a plurality of layers laminated together; [(b)] wherein said plurality of layers includes an outermost layer; [(c)] a pixelated imaging array having a plurality of photosensing elements disposed at said outermost layer of said plurality of layers of said printed circuit board; [(d)] wherein said outermost layer comprises a cutout connecting region to expose a plurality of electrically conductive pads at a layer below said outermost layer; [(e)] wherein said cutout connecting region is established at a perimeter region of said printed circuit board; [(f)] an electrically conductive connecting element connected to said electrically conductive pads at said cutout connecting region, wherein said electrically conductive connecting element comprises a flexible cable; [(g)] wherein a first connecting end of said flexible cable is connected to said electrically conductive pads using component underfill for strain relief; and [(h)] wherein said electrically conductive connecting element electrically connects said electrically conductive pads to at least one of (i) circuitry of another printed circuit board of said camera and (ii) circuitry of another printed circuit board of said vision system. Appeal 2019-005885 Application 14/989,372 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Wu US 5,130,768 July 14, 1992 Perkins US 5,239,448 Aug. 24, 1993 Kerner US 2004/0257782 A1 Dec. 23, 2004 Daves US 2006/0060636 A1 Mar. 23, 2006 Lee US 2008/0055438 A1 Mar. 6, 2008 REJECTION3 Claims 1–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Kerner, Perkins, Wu, and Daves. Final Act. 3–12. STANDARD OF REVIEW We review the appealed rejection for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). OPINION We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). We consider Appellant’s arguments seriatim, as they are presented in, pages 6–29. We are unpersuaded by Appellant’s contentions. Except as otherwise indicated herein below, we adopt as our own the findings and reasons set forth in the Final Office Action, and the Examiner’s Answer in 3 A rejection of claims 4, 6, and 8 under 35 U.S.C. § 112(d) has been withdrawn. Ans. 21. Appeal 2019-005885 Application 14/989,372 4 response to Appellant’s Appeal Brief. Final Act. 3–12; Ans. 13–21. However, we highlight and address specific arguments and findings for emphasis as follows. Analysis The Examiner finds the combination of Lee, Kemer, Perkins, Wu, and Daves teaches or suggests the subject matter of claims 1–20. Final Act. 3– 12. The Examiner finds a printed circuit board (pcb) comprising a plurality of layers laminated together (claim element (a)) is disclosed by each of the Lee, Perkins and Wu references. Id. at 4, 6, 7 (citing Lee ¶¶ 7–8, Fig. 1; Perkins, col. 7, ll. 35-40; and Wu, col. 8, ll. 30–60). The Examiner finds Lee’s bonding pads 24 formed in an exposed upper surface of printed circuit board 20 teach circuit boards having an outermost layer (claim element (b)) and Sensor Chip 10 teaches a pixelated imaging array disposed at the outermost layer (claim element (c)). The Examiner further finds that (i) Lee’s bonding pads 24 embedded in PCB 20 and (ii) Wu’s substrate 112 having a recessed portion of surface 114 exposing conductor pad 117 each teach an outermost layer having a cutout connecting region exposing a plurality of electrically conductive pads at a layer below the outermost layer (claim element (d)). Id. at 4, 7–8 (citing Lee Fig. 1, ¶¶ 7–8; Wu col. 7, ll. 30–45). The Examiner finds both Lee and Wu’s pads are established at a perimeter region of a pcb (claim element (e)). Id. The Examiner finds Lee, Perkins, and Wu each teach the cable of claim elements (f) and (g), although noting that only Perkins and Wu explicitly disclose a cable that is flexible and only Perkins discloses using component underfill for strain relief. Id. at 4–8 (citing Lee, Abstract, ¶ 7, Fig. 1; Perkins, col. 4, ll. 1–35; Wu, col. 7, ll. 30–45.) The Examiner additionally finds Daves’s use of an underfill Appeal 2019-005885 Application 14/989,372 5 adhesive between a pcb and a module also teaches using under fill for strain relief (claim element (g)). Id. at 8–9 (citing Daves ¶ 76). Finally, the Examiner finds claim element (h) is taught both (i) by Kerner’s flex jumpers connecting circuit boards of a motor vehicle (id. at 5–6 (citing Kerner, ¶¶ 4, 37, and Fig. 1,)) and (ii) by Perkin’s flex carrier (id.at 7 (citing Perkins, col. 2, ll. 29–35, col. 5, ll.55–67)). Appellant raises several contentions of error in connection with the rejection of claim 1 under 35 U.S.C. § 103 over Lee, Kerner, Perkins, Wu, and Daves. Id. at 12–23. Appellant initially contends the rejection is not clear because it includes contradictory findings concerning what each of the references discloses and applies multiple references for disclosing the same limitation. Id. at 13–14. Appellant argues these contradictory findings and duplicative citations constitute error as constituting a failure to adequately explain the pertinence of each reference pursuant to 37 C.F.R. § 1.104(c)(2). Id. at 13. Appellant further argues the overlapping application of teachings by the references is contrary to USPTO practice directing Examiners to base rejections on the best available art and avoid cumulative rejections per MPEP § 706.02(1). Id. The Examiner responds, explaining “the criteria for a prime facie case is to follow the Graham v. John Deere analyses.[4]” Ans. 16. According to the Examiner just because Perkins was used in addition to Wu to teach the same elements doesn’t negate the reference for establishing obviousness. Perkins was used as additional evidence to further strengthen the obviousness rejection. There is nothing in the 4 Graham v. John Deere Co. of Kanasas City, 383 U.S. 1 (1966). Appeal 2019-005885 Application 14/989,372 6 MPEP that objects to utilizing additional prior art as evidence in an obviousness rejection. Ans. 16. We are not persuaded the Examiner’s explanation of how the art has been applied in rejecting the claims is deficient to support a prima facie case of obvious. Nor do we find error in the Examiner’s overlapping application of the teachings of the references to the various claim elements. In connection with these procedural arguments, the Federal Circuit has repeatedly noted “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has held that the Office carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Circ. 2011). All that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Noting that 35 U.S.C. § 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Because we find the Examiner has provided sufficient information to allow Appellant to respond to the rejection, we determine the Examiner has set forth a prima facie case of unpatentability under 35 U.S.C. § 103(a). Final Act. 3–12. Appeal 2019-005885 Application 14/989,372 7 We address Appellant’s substantive arguments as follows. a) Printed Circuit Board with Laminated Layers Appellant argues Lee discloses a component, i.e., an image sensor chip, mounted on a pcb, not a pcb including a plurality of layers laminated together as recited by claim element (a). Appeal Br. 6, 15. This argument is unpersuasive of reversible Examiner error because, even if correct, the Examiner additionally cites to Perkins and Wu for disclosing a pcb comprising a plurality of layers laminated together. Final Act. 6, 7. In particular, Perkins discloses a multilayer carrier with dielectric layer 20 laminated to the top of dielectric layer 14. Perkins, col. 7, ll. 35–40, Fig. 11. Similarly, Wu discloses mother substrate 22 laminated onto the surface 36 of cold plate 35. Wu, col. 8, ll. 49–52. Because Appellant does not explain why the disclosures of Perkins and Wu are insufficient to teach the argued limitations of claim element (a), any failure of Lee to also disclose these limitations is unpersuasive of reversible Examiner error. b) Outermost Layer Comprising a Cutout Connection Region Appellant argues Lee’s bonding pads are carved into a pcb board but that there is no outermost layer having a cutout exposing those pads. Appeal Br. 16. Appellant further argues Kerner’s spacer section fails to expose electrically conductive pads as recited by claim element (d). Id. at 18. The Examiner responds, as follows: Lee clearly shows in figure 1 element 24 illustrates multiple bonding pads to connect the image sensor to the circuit board per paragraph [0008]. Fig. 1 further shows that the bonding pads is in a cut out region around the perimeter of the layer. Appeal 2019-005885 Application 14/989,372 8 It’s clear that the cutout region is exposed. In addition, Wu discloses in column 7, lines 30–45, wherein the perimeter of surface is recessed to expose conductor pad. . . . Wherein conductor pad resides an aperture (cutout)). Therefore, one of ordinary skilled in the art, when looking at the references as a whole, would understand that the combination of the references teaches the claimed limitation. Ans. 13–14. Appellant’s argument is unpersuasive. Wu discloses “perimeter of surface 114 of substrate 112 is depicted as recessed to expose conductor pad 117.” Wu, col. 7, ll. 34–34. Wu further discloses chip-site cutout 25 formed as an aperture in surface 24 of mother substrate 22 terminating at conductive pad 66. Wu, col. 8, ll.31–59. Appellant does not persuasively explain why Wu’s disclosure fails to teach the argued cutout. Thus, we agree with the Examiner in finding the combination of Lee and Wu teaches or suggests the disputed limitations of claim element (d). c) Cable Connected Using Component Underfill for Strain Relief Appellant argues Perkins’s flexible cable stiffener neither provides strain relief nor is formed as underfill as required by claim element (g). Appeal Br. 20. According to Appellant “[u]nderfill is a term of art that defines a polymer or liquid that is applied after construction (typically to protect interconnects of ICs).” Id. The Examiner responds, as follows: With respect to wherein a first connecting end of said flexible cable is connected to said electrically conductive pads using component underfill for strain relief, Perkins discloses in column 4, lines 1–35, wherein a stiffener will reduce the stresses involved between the carrier (flex cable) and multi- layered chips. In addition, Daves discloses in [0076] discloses using under fill adhesive material between a printed circuit Appeal 2019-005885 Application 14/989,372 9 board and module. Therefore, one of ordinary skilled in the art, when looking at the references as a whole, would understand that the combination of the references teaches the claimed limitation. Ans. 19–20. Appellant’s contention is unpersuasive because it fails to address the Examiner’s findings. Instead, Appellant’s argument improperly attacks the Perkins reference individually when the rejection is based on the combination of Perkins and Daves. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). d) Propriety of Combining the Teachings of Lee and Kerner5 The Examiner determines “it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate the teachings of Kerner into the system of Lee in order to simplify electrical connection of circuit boards arranged above one another.” Final Act. 6 (citing Kerner ¶ 6).6 Appellant argues the combination of Lee and Kerner is erroneously based on impermissible hindsight, as follows: Lee and Werner are clearly disparate art that do not share the same field of endeavor. Further, it is wholly unclear how combining Werner’s conductor strip inserted into a cutout 5 Appellant’s references to “Werner” at pages 19–20 of the Appeal Brief are presumed to by typographical errors as, instead, references to “Kerner.” 6 “The object of the invention is thus to simplify the electrical connection of circuit boards arranged above one another.” Appeal 2019-005885 Application 14/989,372 10 would simplify the electrical connection of Lee’s prior art. Lee certainly makes no suggestion of such a need or benefit. Instead, Lee is focused on preventing contamination by micro- particles. Appeal Br. 19. Appellant’s contention is unpersuasive of reversible Examiner error. We first address Appellant’s argument that the references are not properly combined because the references are from different fields of endeavor. Id. To be considered in an obviousness analysis, the art must be analogous “prior art,” which means the prior art must be either: (i) in the same field of Appellant’s endeavor; or (ii) reasonably pertinent to Appellant’s problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Appellant provides insufficient evidence to persuade us that either Lee or Werner is non- analogous to the field of the rejected claims because Appellant fails to address either prong (i) or (ii) set forth above. Therefore, in light of the absence of persuasive evidence to rebut the Examiner’s findings and conclusion, we determine that the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. See Final Act. 6. e) Propriety of Combining the Teachings of Lee and Kerner with Perkins The Examiner explains the reason to modify the teachings of Lee and Kerner to include the teachings of Perkins is “in order to efficiently provide a functional subsystem consisting of plural densely placed electronic devices.” Final Act. 7 (citing Perkins, col. 2, ll. 15–20). Appellant argues “[o]ne of ordinary skill in the art would have no motivation for searching for the likes of Perkins, as neither Lee nor Werner [sic] provides any sort of Appeal 2019-005885 Application 14/989,372 11 indication or support for providing a ‘functional subsystem consisting of plural densely placed electronic devices.’” Appeal Br. 21. Appellant’s contention is unpersuasive of reversible Examiner error. Any judgment on obviousness is . . . necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds . . . must [include] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); and Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has long been the law that the motivation to combine need not be found in prior art references, but equally can be found ‘in the knowledge generally available to one of ordinary skill in the art.’”) (quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992)). The Court further instructs, [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421. Appeal 2019-005885 Application 14/989,372 12 Appellant’s contention is unpersuasive of reversible Examiner error. The Examiner cites to Perkins, not the argued Lee or Kerner references, for disclosing a reason for combining the teachings of the references. In any case, as explained above, the reasoning to combine the teachings of the references need not be found in the references themselves. In the present case, we find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. Accordingly, we are unpersuaded by Appellant’s argument that the Examiner’s combination of references is improper. For similar reasons, we further disagree the Examiner erred in combining the teachings of lee, Kerns, and Perkins with the teachings of Daves and Wu. Appeal Br. 22–23; Final Act. 7, 8. In summary, Appellant’s arguments in connection with the rejection of independent claim 1 are unpersuasive of reversible Examiner error. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103 over Lee, Kerner, Perkins, Wu, and Daves. Appellant’s arguments in connection with independent claims 10 and 16 (Appeal Br. 25–26, and 27–28) essentially repeat those made in connection with independent claim 1 and are unpersuasive for the same reasons. Therefore, we further sustain the rejection of claims 10 and 16. Finally, Appellant either relies on arguments presented in connection with claim 1 in arguing the dependent claims or does not present separate argument for their patentability. Appeal Br. 23– 25, and 28. Accordingly, we further sustain the rejection of dependent claims 23–9, 11–15, and 17–20. Appeal 2019-005885 Application 14/989,372 13 CONCLUSION We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103 over Lee, Kerner, Perkins, Wu, and Daves. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Lee, Kerner, Perkins, Wu, Daves 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation