3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Jan 31, 2022

2021003255 (P.T.A.B. Jan. 31, 2022)

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. 15/755,207 02/26/2018 Jin-Bae Kim 76916US008 8288 32692 7590 01/31/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER TRAN, BINH BACH THANH ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIN-BAE KIM, JUNG-JU SUH, and JEONGWAN CHOI Appeal 2021-003255 Application 15/755,207 Technology Center 2800 Before JEFFREY T. SMITH, JEFFREY R. SNAY, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11-26. We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as 3M Company. Appeal Br. 2. Appeal 2021-003255 Application 15/755,207 2 CLAIMED SUBJECT MATTER According to the Specification, “[s]ome circuit board systems include a curved design. For example, wearable electronics that are configured to fit on a human body may be curved.” Spec. ¶ 1. “While a circuit board may exhibit some flexibility, a shield for the circuit board may be too rigid to bend in a particular curved shape.” Id. The claims on appeal are directed to systems comprising a curved circuit board with at least one electronic component mounted thereon, and flexible metal fences for conformably mounting on a curved circuit board. See Claims 11, 23. Independent claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A system comprising: a curved circuit board; at least one electronic component mounted on the circuit board and electrically connected to a first electrically conductive trace of the circuit board; an electrically conductive curved fence conformably attached to the circuit board and surrounding the at least one electronic component, the fence electrically connected to a different second electrically conductive trace of the circuit board; and an electrically conductive lid comprising a non-woven tape conformably attached to a top side of the fence and covering the at least one electronic component, wherein the fence comprises a plurality of spaced apart first tabs arranged along at least a first portion of a perimeter of the fence, each first tab having a free end and attached to the electrically conductive lid or the circuit board. Appeal Br. 6 (Claims App.). Appeal 2021-003255 Application 15/755,207 3 REJECTIONS On appeal,2 the Examiner maintains the following rejections under 35 U.S.C. § 103: I. Claims 11-16 and 18-22 over Werner,3 Phelps,4 and Lionetta5; II. Claim 17 over Werner, Phelps, Lionetta, and Eversley6; and III. Claims 23-26 over Werner, Phelps, and Eversley. OPINION Rejections I and II We review these rejections for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Upon consideration of the entirety of the appeal record, we are not persuaded that Appellant has identified reversible error in these rejections. We, therefore, sustain them for essentially the same reasons provided by the Examiner in the Final Office Action and the Answer. Final Act. 4-9; Ans. 5-6. We add the following only for emphasis. 2 The Examiner withdrew the written description rejection of claims 23-26 set forth at pages 2-3 of the May 13, 2020 Final Office Action. Ans. 4. 3 US 2013/0120957 A1, published May 16 2013. 4 US 5,724,234, issued March 3, 1998. 5 US 2004/0172502 A1, published September 2, 2004. 6 US 6,359,768 B1, issued March 19, 2002. Appeal 2021-003255 Application 15/755,207 4 Appellant asserts that it would not have been obvious to combine the cited prior art because doing so “would not achieve a functioning end product.” Appeal Br. 3; see also id. at 4 (repeating this assertion). Specifically, Appellant contends that Phelps’ curved circuit board is not intentionally designed to be curved, but is rather the result of “warpage and wear.” Id. at 4. According to Appellant, this means that Phelps’ “design must rely on a continual downward force to make consistent contact with the ground trace,” and that “[r]eplacing the rigid top of the shield can with [Lionetta’s] flexible non-woven tape would not allow consistent and even pressure to be applied . . . to keep the shield in contact with the ground trace.” Id. Appellant also asserts that the Examiner’s proposed modification of Werner’s circuit board 102 with that of Phelps is erroneous because doing so would “likely” result in the teeth of Phelps’ shield can “break[ing] as warpage occurs (over time).” Reply Br. 2-3.7 Appellant’s contentions are unpersuasive for several reasons. First, Appellant offers mere attorney argument to support its contentions. Appeal Br. 3-4. Such assertions cannot take the place of factual evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Furthermore, Phelps’ curved printed circuit board (“PCB”) is not limited to instances where the curvature is due to warpage or deterioration as Appellant alleges. Compare, Phelps 5:20-22 (“ground trace 12 may be curved due to warpage or deterioration”), with id. at 2:18-19, 40-59 (recognizing that “it is not economically feasible to produce shield cans and PCBs which are perfectly coplanar,” and that when a small vertical force is 7 Because the Reply Brief lacks page numbers, we refer to the consecutively numbered pages of this document. Appeal 2021-003255 Application 15/755,207 5 applied to a horizontal plane of the shield, it makes “more consistent or uniform contact (electrical and mechanical contact) with a ground trace on the PCB.”); see also id. at 1:10-14 (disclosing that “the present invention relates to a method of and an apparatus for obtaining uniform or uninterrupted contact between a shield can and a PCB when the contact surfaces of the shield can and the PCB are not coplanar.”). Thus, Phelps discloses that manufactured PCBs are not completely planar as seemingly argued by Appellant. Appeal Br. 4 (asserting that Phelps teaches “a standard (normally flat and rigid) circuit board that may be ‘curved’ due to warpage and wear” (emphasis added)); see Phelps, Abstract (“The design of the shield can allow[] it to conform to variations in the surface of the PCB”); 2:42 (referring to “the non-planar surface of the PCB”); 3:11-17 (recognizing “variations in the surface of the insulating substrate,” e.g., a PCB); Figs. 3, 4. Furthermore, Appellant’s assertion that introducing Lionetta’s non- woven material to Phelps’ shield can 16 “would result in a non-functioning end product” is meritless. Even assuming Appellant is correct that Phelps requires “constant downward pressure” Appellant has not explained how, much less directed us to evidence to establish that, Lionetta’s non-woven fabric would be incapable of providing such “constant downward pressure.” Appeal Br. 4. Appellant’s Reply Brief arguments likewise fail to persuade us of reversible error in the rejection because the arguments are improperly premised on the bodily incorporation of disparate parts of Werner, Phelps, and Lionetta into one another. Reply Br. 2-3. It is well established, however, that the obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are Appeal 2021-003255 Application 15/755,207 6 rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Therefore, for these reasons and those provided by the Examiner, we sustain Rejections I and II. Rejection III Because Appellant does not contest this rejection with any degree of specificity on appeal, we summarily affirm it. See 37 C.F.R. § 41.37(c)(1)(iv) (requiring arguments in an Appeal Brief to “explain why the examiner erred as to each ground of rejection,” and noting that “any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). We are not persuaded by Appellant’s apparent belief, expressed in the Reply Brief, that “a successful appeal of the rejection of claim 23 under 35 U.S.C. [§] 112 will put claim 23 in condition for allowance.” Reply Br. 2; see also id. (referencing a similar statement made during prosecution). Rather, we agree with the Examiner (Ans. 6) that Appellant failed to present any substantive argument in its Appeal Brief specific to the Examiner’s prior art rejection of claims 23-26. Compare Final Act. 9-11, with Appeal Br. 3- 5. Significantly, although the Examiner withdrew the written description rejection pertaining to the limitation such that, when the metal fence is conformably mounted to the circuit board, at least one free end of at least one second tab is Appeal 2021-003255 Application 15/755,207 7 in contact with the circuit board, and at least one free end of at least one first tab is not in contact with the circuit board, Appellant has not disputed the Examiner’s finding that Werner teaches this limitation. Final Act. 9; Ans. 6; Appeal Br. 3-5. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 11-16, 18- 22 103 Werner, Phelps, Lionetta 11-16, 18-22 17 103 Werner, Eversley 17 23-26 103 Werner, Phelps, Eversley 23-26 Overall Outcome 11-26 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