Ex Parte Beaman et al

Board of Patent Appeals and Interferences

May 11, 2012

11553498 (B.P.A.I. May. 11, 2012)

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.
11/553,498 10/27/2006 Brian S. Beaman ROC920060306US1 3861
7590 05/11/2012
IBM Corporation
Intellectual Property Law Dept. 917
3605 Hwy. 52 North
Rochester, MN 55901
EXAMINER
NGUYEN, TRUC T
ART UNIT PAPER NUMBER
2833
MAIL DATE DELIVERY MODE
05/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN S. BEAMAN, JOSEPH KUCZYNSKI, and
AMANDA E. MIKHAIL
____________________

Appeal 2010-001250
Application 11/553,498
Technology Center 2800
____________________

Before: JOSEPH L. DIXON, JAMES R. HUGHES, and
ANDREW J. DILLON, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001250
Application 11/553,498
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8-
25. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-25 were
subjected to restriction requirement, dated January 28, 2008. Appellants
have elected, without traverse, to prosecute claims 8-25 and have withdrawn
from prosecution claims 1-7 in a letter dated February 28, 2008. Therefore,
claims 1-7 are not on appeal.
We affirm.

The claims are directed to printed circuit board connectors and
methods of manufacturing the same. Claim 8, reproduced below, is
illustrative of the claimed subject matter:
8. A connector for a printed circuit board (PCB),
comprising:
a housing formed from a material having first properties
which have been changed by annealing the housing before the
housing is coupled to the PCB such that, after the connector is
coupled to the PCB using a reflow process, warpage of a
resulting connector-PCB assembly is within a predetermined
tolerance;
first connector features adapted to couple the connector
to the PCB; and
second connector features adapted to couple the
connector to a smaller PCB supported by the connector.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Renfro US 2004/0147156 A1 Jul. 29, 2004

Applicants' Admitted Prior Art
Appeal 2010-001250
Application 11/553,498
3
REJECTIONS
Claim 8-25 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Applicants' Admitted Prior Art and Renfro.

OPINION

ANALYSIS
Appellants have not filed a Reply Brief. Therefore, we limit our
review to the arguments advanced in the Appeal Brief. Appellants set forth
the language of independent claim 1 and assert that independent claim 17
recites similar features. (App. Br. 11). We note that independent claim 1
has not been appealed or prosecuted by Appellants. Therefore, Appellants’
arguments to the express language of independent claim 1 is not persuasive
of error in claims 8 and 17 on appeal. We find that similar language is also
present in independent claim 8, and we will treat Appellants' argument as
being directed to independent claim 8 which is on appeal.

Furthermore, we note that Appellants' proffered arguments with
respect to "annealing a housing before the housing is coupled to a PCB"
(App. Br. 11) does not structurally detail the limitations of the "connector for
a printed circuit board (PCB)" or "housing" of independent claim 8 or the
"card assembly", or "housing" of independent claim 17. Appellants'
proffered distinction is based upon a process of forming/treating the housing
or combination which does not change the structure of the end product
(product by process limitations). The admitted prior art in Appellants'
Specification relied upon by the Examiner teaches a connector for a printed
Appeal 2010-001250
Application 11/553,498
4
circuit board comprising a housing, a first connector features adapted to
couple the connector to the PCB, and a second connector features adapted to
couple the connector to a smaller PCB supported by the connector.
Therefore, we find the admitted prior art relied upon by the Examiner
teaches and fairly suggests the claimed housing and product of the claimed
invention.
Additionally, we find that the teachings of the Renfro reference
clearly evidence a recognition by those skilled in the art that annealing
causes beneficial structural changes in the end product. Therefore, we find
that it would have been obvious to one of ordinary skill in the art at the time
of the invention that the annealing step may be performed by either of the
two alternatives either before reflow or after reflow, which are the only two
choices. Therefore, we agree with the Examiner that the combined teachings
of the admitted prior art and the teachings of Renfro would have rendered
the claim 8 invention obvious. Since Appellants have not set forth separate
arguments for patentability of independent claim 17, we will group
independent claim 17 and dependent claims 9-16 and 18-25 as falling with
representative claim 8.

CONCLUSIONS OF LAW
The Examiner did not err in concluding that independent claim 8
would have been obvious at the time of the invention.

DECISION
For the above reasons, the Examiner’s rejection of claims 8-25 is
affirmed.
Appeal 2010-001250
Application 11/553,498
5

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009). ). See
37 C.F.R. § 41.50(f).

AFFIRMED

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