MAGNA ELECTRONICS INC.

Patent Trials and Appeals Board

Mar 24, 2021

2019005885 (P.T.A.B. Mar. 24, 2021)

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.
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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.
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Application 14/989,372
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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.
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Application 14/989,372
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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
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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).
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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.
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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.
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Application 14/989,372
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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
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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.”
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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
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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.
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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.
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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