BorgWarner, Inc.

Patent Trials and Appeals Board

Jan 21, 2022

2021001487 (P.T.A.B. Jan. 21, 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. 16/522,170 07/25/2019 Lathom Alexander LOUCO DKT19006 5223 125024 7590 01/21/2022 REISING ETHINGTON-BORGWARNER 755 W BIG BEAVER RD. Suite 1850 Troy, MI 48084 EXAMINER ROBINSON, KRYSTAL ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): cicotte@reising.com docketing@reising.com meerhaeghe@reising.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LATHOM ALEXANDER LOUCO Appeal 2021-001487 Application 16/522,170 Technology Center 2800 Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-5 and 7-12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies BorgWarner, Inc. as the real party in interest. Appeal Brief (“Appeal Br.”) filed September 9, 2020, at 2. Appeal 2021-001487 Application 16/522,170 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to a printed circuit board (“PCB”) having first and second electrical components physically attached, respectively, to first and second sides thereof, and both an electrically conductive layer and a thermally and electrically insulating layer disposed within the PCB between the sides. Specification (“Spec.”) filed July 25, 2019, ¶ 3.2 At least one first electrical component may be vertically overlapping at least one second electrical component. Claim 1. Further, one or more apertures may be provided in the first side for receiving one or more first electrical components. Claim 7. Claims 1 and 7, reproduced below from the Claims Appendix to the Appeal Brief, are illustrative of the claimed subject matter. The limitations at issue are italicized. 1. A printed circuit board (PCB) comprising: a first side and a second side; a conductive layer within the PCB between the first side and the second side; one or more first side electrical components that are physically attached to the first side and electrically connected to the conductive layer; one or more second side electrical components attached to the second side of the PCB and electrically connected to the conductive layer; and a thermally and electrically insulating dielectric layer, within the PCB between the first side electrical components and 2 This Decision also cites to the Final Office Action (“Final Act.”) dated April 27, 2020, the Examiner’s Answer (“Ans.”) dated December 18, 2020, and the Reply Brief (“Reply Br.”) filed December 29, 2020. Appeal 2021-001487 Application 16/522,170 3 the second side electrical components, that prevents heat emitted by the first side electrical components from increasing the temperature of the second side electrical components, wherein at least one of the first side electrical components vertically overlaps at least one of the second side electrical components. 7. A printed circuit board (PCB) comprising: a first side and a second side; a conductive layer within the PCB between the first side and the second side; one or more apertures in the first side for receiving one or more first side electrical components that are electrically connected to the conductive layer and positioned within the aperture(s) on the first side, wherein the top surface of the first side electrical component(s) is configured to contact a heat sink; one or more second side electrical components attached to the second side of the PCB; and a thermally and electrically insulating dielectric layer, within the PCB between the first side electrical components and the second side electrical components, that prevents heat emitted by the first side electrical components from increasing the temperature of the second side electrical components. REFERENCES The Examiner relies on the following prior art: Name Reference Date Casperson US 5,812,375 Sept. 22, 1998 Hsu US 2006/0186536 A1 Aug. 24, 2006 Gilch et al. (“Gilch”) US 2010/0175375 A1 July 15, 2010 Appeal 2021-001487 Application 16/522,170 4 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections: 1. Claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Casperson; 2. Claims 2, 3, 7, 8, 11, and 12 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Hsu; 3. Claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Gilch; and 4. Claims 9 and 10 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Hsu, and further in view of Gilch. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. 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) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering Appellant’s arguments and the evidence of record, we are persuaded of reversible error in the Examiner’s rejections of claims 1-5 for the reasons set forth in the Appeal and Reply Briefs. However, for substantially the fact findings, reasoning, and conclusions set forth in the Examiner’s Answer, we are not persuaded of reversible error in the Examiner’s rejections of claims 7-12. We offer the following for emphasis. Rejection 1: Anticipation by Casperson The Examiner rejects claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Casperson. Ans. 3-4. In particular, the Examiner finds that Appeal 2021-001487 Application 16/522,170 5 Casperson teaches a PCB as recited in claim 1 including at least one first electrical component 32 vertically overlapping at least one second electrical component 32. Id. at 4. The Examiner states that this finding is based on interpreting each electrical component 32 as including the lead wires (unlabeled) that electrically connect electrical component 32 to conductive path 27. Id. at 7. The Examiner explains that the lead wires “cannot be excluded from the overall structure of the electrical component because the electrical component would not operate with the circuit board if it is not attached to the main body of the component.” Id. Moreover, the Examiner finds that the lead wires are not part of the circuit board and, therefore, must be part of the electrical component. Id. In light of these findings, the Examiner notes that Casperson teaches the lead wires of a first electrical component vertically overlap the lead wires of a second electrical component. Id. at 7-8 (annotating Casperson’s Fig. 2). Appellant argues, inter alia, that Casperson fails to disclose a first electrical component that vertically overlaps a second electrical component as recited in claim 1. Appeal Br. 5. Appellant contends that the Examiner’s interpretation of electrical component 32 as including the lead wires electrically connecting the component to conductive path 27 is neither reasonable nor consistent with Appellant’s Specification. Id. at 6. Appellant asserts, therefore, that Casperson’s first electrical components do not vertically overlap a second electrical component. Id. Appellant’s argument is persuasive of reversible error. During examination, claim terms are given their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appeal 2021-001487 Application 16/522,170 6 The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is consistent with the specification. In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (internal quotation omitted). Appellant describes, in several instances, the manner in which electrical components attached to opposite sides of the PCB have area “footprints” that overlap, at least partially, in the vertical or Z-axis direction. Appeal Br. 5; Spec. ¶¶ 9, 10. We also note that, in describing first and second electrical components, neither Appellant nor Casperson include the lead wires electrically connecting these components to the conductive paths or layers. Appellant also provides at least one reason for vertically overlapping opposing electrical components-to increase electrical performance of the electrical circuit when, for example, electrical components regulating power supply on one side of the PCB vertically overlap microcontroller electrical components on the opposite side. Spec. ¶ 10. In addition, an interpretation that the lead wires are part of the electrical components is inconsistent with the broadest interpretation of “electrical component” because such a structure is narrower in scope than an interpretation that the lead wires are not part of the “electrical component.” On the other hand, the Examiner provides no basis for including the lead wires as essential parts of the electrical components. The Examiner is correct that the electrical components would not operate without the lead wires electrical connecting to the conductive paths. However, such reasoning Appeal 2021-001487 Application 16/522,170 7 could extend to the conductive paths (and indeed the vias and other features of the PCB) as well, such that an electrical component would arbitrarily include any feature of the PCB needed to meet a claim limitation. Such an interpretation, therefore, is unreasonable. A reference anticipates a claim if it “disclose[s] each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation omitted). The elements “must be arranged or combined in the same way as in the claim.” Id. (internal quotes and citation omitted). Here, although disclosing first and second electrical components on respective first and second sides of a PCB, Casperson fails to disclose that any of the first electrical components vertically overlap any of the second electrical components, when properly interpreted. As such, the Examiner fails to establish that Casperson anticipates the PCB as recited in claim 1. Accordingly, we do not sustain the Examiner’s anticipation rejection of claim 1. Rejection 2: Obviousness over Casperson and Hsu The Examiner rejects claims 2, 3, 7, 8, 11, and 12 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Hsu. Final Act. 4-8; Ans. 4-6. Initially, we note that the Examiner does not rely on Hsu to remedy the deficiency in Casperson discussed above with regard to claim 1. As such, for the same reasons given above, we do not sustain the Examiner’s obviousness rejection as applied to claims 2 and 3, which depend from claim 1. Appeal 2021-001487 Application 16/522,170 8 With regard to the remaining claims subject to this rejection, Appellant presents arguments regarding claim 7 only. Appeal Br. 8-10. Therefore, claims 8, 11, and 12 stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(iv) (2020). The Examiner finds that Casperson teaches a PCB as recited in claim 7, except for one or more apertures in the first side for receiving one or more first electrical components. Ans. 4-5. The Examiner finds that Casperson’s PCB includes glass epoxy layers 13, which the Examiner determines to be inherently a thermally and electrically insulating dielectric layer. Id. For the aperture(s), the Examiner finds that Hsu teaches one or more apertures in the first side of a PCB for receiving electrical component 43. Id. at 5. The Examiner concludes that it would have been obvious to modify Casperson’s PCB to include one or more apertures in the first side thereof for receiving an electrical component “for evenly controlling the uniformity of the carrier structure (PCB) and the mounting surface of the semiconductor chip (component).” Id. Appellant argues that neither Casperson nor Hsu teaches or suggests a thermally and electrically insulating dielectric layer. Appeal Br. 8. Appellant contends that Casperson is silent with respect the functionality of layers 13, and requires that insulation layer 18 act as a thermal conductor and electrical insulator. Id. at 7. Appellant, therefore, urges that the Examiner fails to establish that Casperson’s glass epoxy layers 13 are both thermally and electrically insulating as recited in claim 7. Id. Appellant contends that the Examiner instead improperly relies on Appellant’s Specification in support of the finding that layers 13 are thermally and electrically insulating. Id. Appeal 2021-001487 Application 16/522,170 9 Appellant’s argument is not persuasive of reversible error. Reliance on an applicant’s disclosure to support an inherency finding may be proper where, as here, the Examiner compares a prior art disclosure to the applicant’s disclosure to assess whether there is a reasonable basis to believe that a recited property is inherent in the prior art. In re Spada, 911 F.2d 705, 708 (CCPA 1990). The Examiner may establish a sound basis for such a belief by demonstrating the structural elements performing the functional limitations in the claimed apparatus are the same as those disclosed in the prior art. Id. Moreover, a sound basis does not turn on absolute certainty; rather, a sound basis requires the Examiner “to make sufficient factual findings, such that it can reasonably infer that the prior art [feature] and that of the [claim limitation] at issue are the same.” Howmedica Osteonics Corp. v. Zimmer Inc., 640 F.App’x. 951, 958 (Fed. Cir. 2016). The Examiner finds that Casperson teaches that substrate 14 may be made of a variety of materials including polyimide or layers 13 of glass epoxy. Ans. 9-10; Casperson 3:46-49. The Examiner finds that Appellant discloses that the thermally and electrically insulating dielectric layer may be made of “polymide.”3 Ans. 9; Spec. ¶ 19. Appellant also discloses that dielectric layer 68 may be thin enough to minimize parasitic inductance in comparison to other dielectrics, such as glass epoxies including FR4. Id. Because the Examiner has shown that Casperson teaches the same materials for layers 13, 14 as Appellant discloses, the Examiner has established a 3 It is not clear what type of polymer a “polymide” is. “Polyimide” is a polymer with repeating imide groups, whereas “polyamide” is a polymer with repeating amide groups. It appears the Examiner assumed, without objection, that Appellant’s disclosure refers to “polyimide,” the same material Casperson teaches as an alternative to glass epoxy. Appeal 2021-001487 Application 16/522,170 10 reasonable basis for believing that Casperson’s layers 13, 14 inherently provide thermal and electrical insulation. Moreover, claim 7 recites an apparatus. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends on the claimed structure, not on the use or purpose of that structure, Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or the function or result of that structure. In re Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948). Although “[a] patent applicant is free to recite features of an apparatus either structurally or functionally[,] . . . . choosing to define an element functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner establishes a reasonable belief that a property or characteristic recited in the claims would have been inherent to the apparatus, the burden of proof shifts to Appellant to show that this characteristic or property is not possessed by the prior art. Id. Appellant has not provided any evidence or persuasive technical reasoning to refute the Examiner’s reasonable determination that Casperson’s glass epoxy layers 13 or polyimide layer 14 would have been capable of providing at least some thermal and electrical insulation. Appellant next argues that the Examiner fails to provide a valid reason for modifying Casperson’s PCB in view of Hsu’s teachings to arrive at claim 7’s PCB. Appeal Br. 9. Although Appellant acknowledges that the Examiner provides a reason for modifying Casperson’s PCB, Appellant contends that this reason “is merely a recitation of disclosure found in Hsu that lacks any Appeal 2021-001487 Application 16/522,170 11 real motivation to combine the teachings [with Casperson].” Id. Appellant asserts that the Examiner fails to explain or even consider why an ordinary artisan would be motivated to modify Casperson’s PCB to include apertures as taught in Hsu. Id. According to Appellant, such explanation should include how Casperson’s PCB would be improved in light of the reason given for the combination. Id. Appellant further contends that because Casperson fails to teach, or provide a reason for including, apertures, an ordinary artisan would have no reason to apply Hsu’s teaching to Casperson’s PCB. Id. at 10. Appellant also asserts that Casperson’s first electrical components (on the bottom of the PCB) are non-heat-generating components and would not benefit from being embedded to abut a heat sink as Hsu teaches. Id. This argument also is not persuasive of reversible error. The Examiner has the initial burden of establishing a prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). Meeting that burden requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); In re Van Os, 844 F.3d 1359, 1361-62 (Fed. Cir. 2017) (“a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine” because “[t]his type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan Appeal 2021-001487 Application 16/522,170 12 would have combined the elements in the manner claimed.”) (emphasis omitted) (citing KSR, 550 U.S. at 418, 421). There is no dispute that the Examiner provides a reason for modifying Casperson’s PCB to include apertures for receiving electrical components 32, i.e., for evenly controlling the uniformity of the carrier structure (PCB) and the mounting surface of the semiconductor chip (component). The Examiner further explains that embedding electrical components in apertures in Casperson’s PCB would make the top surface of the embedded components coplanar with the side of the board and would provide a direct electrical connection to the component. Ans. 5. As the Examiner finds, placing electrical components in apertures as Hsu teaches permits a heat sink to directly contact the embedded component and provides more mounting space for mounting electrical components, thereby enhancing electrical properties. Id. at 5-6, 11-12. Although Casperson discloses that the electrical components mounted to the bottom or underside of the PCB generate little or no heat, we note that mounting of the heat sink to the electrical components is only one of several reasons Hsu teaches for providing apertures in the PCB for receiving electrical components as set forth above. Moreover, we note that it would have been equally obvious in view of Hsu to mount Casperson’s upper heat-generating electrical components in apertures, thereby permitting heat sinks to directly contact these components. Since claim 7 fails to structurally distinguish the first and second electrical components or the first and second sides of the PCB, Casperson’s electrical components on the top and bottom of the PCB may each alternatively read on the recited first and second electrical components. Appeal 2021-001487 Application 16/522,170 13 Accordingly, we sustain the Examiner’s obviousness rejection of claim 7, and dependent claims 8, 11, and 12, over the combination of Casperson and Hsu. Rejection 3: Obviousness over Casperson and Gilch The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Gilch. Final Act. 8-9. The Examiner does not rely on Gilch to remedy the deficiency in Casperson discussed above with regard to claim 1. As such, for the same reasons given above, we do not sustain the Examiner’s obviousness rejection as applied to claims 4 and 5, which depend from claim 1. Rejection 4: Obviousness over Casperson, Hsu, and Gilch The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Hsu, and further in view of Gilch. Final Act. 9-10. Appellant does not separately argue this rejection nor claims 9 and 10, which depend from and, therefore, stand or fall with claim 7. Accordingly, for the same reasons given above with regard to claim 7, we sustain the Examiner’s obviousness rejection of claims 9 and 10. CONCLUSION For the reasons set forth above and in the Appeal and Reply Briefs, the Examiner’s decision to reject claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Casperson, and claims 2-5 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Hsu or Gilch, is reversed. However, upon consideration of the record and for the reasons given above and in the Examiner’s Answer, the Examiner’s decision to reject claims 7-12 under 35 U.S.C. § 103 as unpatentable over Casperson in view of Hsu and/or Gilch is affirmed. Appeal 2021-001487 Application 16/522,170 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102(a)(1) Casperson 1 2, 3, 7, 8, 11, 12 103 Casperson, Hsu 7, 8, 11, 12 2, 3 4, 5 103 Casperson, Gilch 4, 5 9, 10 103 Casperson, Hsu, Gilch 9, 10 Overall Outcome 7-12 1-5 TIME PERIOD FOR RESPONSE 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. § 41.50(f). AFFIRMED IN PART