Ex Parte Chan

Board of Patent Appeals and Interferences

Jul 27, 2012

10990634 (B.P.A.I. Jul. 27, 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.
10/990,634 11/17/2004 Alan K. Chan NUKZ 2 00466 4726
27885 7590 07/30/2012
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
AL HASHIMI, SARAH
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
07/30/2012 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 ALAN K. CHAN
____________

Appeal 2010-004342
Application 10/990,634
Technology Center 2800
____________

Before JEAN R. HOMERE, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004342
Application 10/990,634

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-23, 26-30, 33, and 34 (App. Br. 3). Claims 24, 25, 31, and 32 were
canceled or withdrawn (Id.). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. A cartridge for use with an associated printing
apparatus, the cartridge comprising:

a housing defining a chamber for holding a marking
material within the housing;

a semiconductor storage device storing information about
the marking material;

a plurality of contacts for connecting the semiconductor
storage device with the associated printing apparatus; and,

a rigid printed circuit board held in a fixed relationship
relative to said housing, the printed circuit board defining a pair
of opposite sides, said semiconductor storage device and said
plurality of contacts being disposed exclusively on a one of said
pair of opposite sides of the printed circuit board.

The Examiner rejected claims 1, 2, 11, 17, 27, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Tsukada (U.S. Patent Application
Publication No. 2002/0012015 A1) in view of Trafton (U.S. Patent
Application Publication No. 2003/0035032 A1) (Ans. 3-5).
The Examiner rejected claims 3, 4, and 12-14 under 35 U.S.C.
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§ 103(a) as being unpatentable over Tsukada in view of Trafton and Saruta
(U.S. Patent No. 6,196,670 B1) (Ans. 5-6).
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Tsukada in view of Trafton and Good (U.S. Patent No.
5,678,290) (Ans. 6-7).
The Examiner rejected claims 6-10, 15, 16, 18-21, 26-29, 33, and 34
under 35 U.S.C. § 103(a) as being unpatentable over Tsukada in view of
Trafton and Matsuda (U.S. Patent No. 4,633,274) (Ans. 7-10)1.
The Examiner rejected claims 22 and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Tsukada in view of Trafton (Ans. 10-11).

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that Tsukada teaches or
suggests a “semiconductor storage device and said plurality of contacts
being disposed exclusively on a one of said pair of opposite sides of the
printed circuit board,” as recited in independent claim 1 and as similarly
recited in independent claims 11, 17, 20, 27, and 33?
2. Did the Examiner err in finding that the combination of
Tsukada and Matsuda teaches or suggests “an integrated circuit socket on
said printed circuit board adapted to selectively receive said semiconductor

1 Miscellaneous Communication to Applicant Mailed September 28, 2009
states that claim 34 should be added to this Rejection. Claims 24 and 25
were canceled.
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Application 10/990,634

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storage device,” as recited in claim 9 and as similarly recited in claims 15,
18, and 28?
3. Did the Examiner err in finding that Tsukada teaches that “said
rigid printed circuit board is a single-sided printed circuit board,” as recited
in claim 30?
4. Did the Examiner err in finding that Tsukada and Trafton
render obvious that “said receiving area includes a pair of spaced apart L-
shaped finger members,” as recited in claim 22?

ANALYSIS
We disagree with Appellant’s contentions regarding the Examiner’s
rejection of each of the claims on appeal. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 3-17) in response to arguments made in the
Appellant’s Appeal Brief. We concur with the conclusion reached by the
Examiner. We highlight and address certain findings and arguments below.

35 U.S.C. § 103 Rejection of Claims 1, 11, 17, 20, 27, and 33
Appellant argues that the Examiner erred in finding that independent
claims 1, 11, 17, 20, 27, and 33 are obvious because Tsukada “does not
teach or suggest a plurality of contacts and a semiconductor storage device
disposed exclusively on one side of a printed circuit board” (App. Br. 13, see
also id. at 19-20). Appellant argues that Tsukada’s Figure 17a “shows a
mounting structure 700 including a semiconductor storage means 7 disposed
on one side of a printed circuit board 610 and a plurality of terminals 612
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disposed on the opposite side of the printed circuit board 610” (id. at 13
(emphasis omitted)). Appellant further argues that “[p]lacing the terminals
612 on the same side as the semiconductor storage means 7 would limit
access to the terminals 612 to the small area between the circuit board 610
and the sidewall 194b and thus the contacts would not be externally
accessible under the examiner’s interpretation of Tsukada” (id. at 14).
Contrary to Appellant’s contentions, however, the Examiner found
that Tsukada teaches that the terminals are disposed on the same side of the
circuit board as the semiconductor storage means because Tsukada states
that the terminals are formed in the semiconductor storage device (Ans. 11).
The Examiner also found that “contrary to appellants [sic] arguments, it is
possible to place the terminals 612 on the same side as the storage device
and have them be externally accessible” (id. at 12). We find no error in the
Examiner’s findings. The terminals in Tsukada are necessarily disposed on
the same side of the circuit board as the semiconductor storage means
because they are formed “in the semiconductor storage means” (Tsukada, ¶
[0188]). Moreover, Figure 17c of Tsukada shows that the terminals may be
placed on the same side of the circuit board as the semiconductor storage
means because they can be accessed via wires through a space between the
circuit board and the ink container (Tsukada, FIG. 17c). In other words,
Appellant’s arguments are unsupported by factual evidence, and therefore,
are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Accordingly, we find no error in the Examiner’s obviousness
rejections of claims 1, 11, 17, 20, 27, and 33.

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35 U.S.C. § 103(a) Rejections of Claims 9, 15, 18, and 28
Appellant asserts that the Examiner erred in finding that claims 9, 15,
18, and 28 are obvious because the socket in Matsuda’s apparatus is
disposed in the support member, and not on the printed circuit board, as
required by the claims (App. Br. 17-19). The Examiner found, however, that
“it would have been obvious that the socket be disposed on the printer circuit
board because the printer circuit board on the printer cartridge serves as a
connection area with external substrates such as the surface of a printer
cartridge, and the socket is intended to allow a connection with a substrate”
(Ans. 14). We agree. Tsukada shows a circuit board disposed on an ink
container (Tsukada, Figs. 17a, 17b, and 17c). And Matsuda shows a socket
disposed on an ink container (Matsuda, Fig. 1). Thus, the claim requirement
of disposing a socket on a printed circuit board is a combination of familiar
elements from Tsukada and Matsuda that yields predictable results. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Accordingly, we find no
error in the Examiner’s obviousness rejection of claims 9, 15, 18, and 28.

35 U.S.C. § 103(a) Rejection of Claims 22 and 23
Appellant contends that the Examiner erred in rejecting claims 22 and
23 as obvious because Tsukada and Trafton do not teach “a receiving area
including a pair of spaced apart L-shaped finger members” (App. Br. 22). In
support of this contention, Appellant argues that “one of ordinary skill in the
art would recognize that the L-shaped finger members gripping the sides of
the circuit board would provide little or no protection to the storage device
disposed on the circuit board” (id.). Appellant also argues that the Examiner
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“failed to submit a sufficient basis for modification of the printer cartridge”
(id.).
The Examiner, however, did submit a basis for modifying the printer
cartridge of Tsukada and Trafton to include the claimed L-shaped finger
members by explaining that they “serve as a stabilizing component, and
thu]s will protect the storage device from being disturbed on the circuit
board and will prevent the storage device from damage due to a loose
attachment” (Ans. 17). Moreover, Appellant’s arguments regarding the
supposed lack of protection that the L-shaped finger members would give to
the storage device are mere attorney arguments and conclusory statements
that are unsupported by factual evidence, and therefore, are entitled to little
probative value. In re Geisler, 116 F.3d at 1470; see also In re De Blauwe,
736 F.2d at 705. In other words, “[a]rgument in the brief does not take the
place of evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA
1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). Accordingly, we
find no error in the Examiner’s obviousness rejection of claims 22 and 23.

35 U.S.C. § 103(a) Rejection of Claim 30
Appellant contends that the Examiner erred in rejecting claim 30 as
obvious because Tsukada does not teach that the “rigid printed circuit board
is a single-sided printed circuit board” (App. Br. 15). In support of the
contention, Appellant argues that the claimed single-sided board should be
construed as “a board comprising a first side opposing a second side wherein
the second side is void of any electronic or electrical components” (id.). The
Examiner found, however, that Figure 17a of Tsukada does teach a single
sided board under Appellant’s construction because “there are no electronic
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components on the second side” (Ans. 12). We agree with the Examiner.
Figures 17a and 17b of Tsukada show that the storage means 7 and the
actuator 106 are on the same side of the printed circuit board and that there
are no electrical components on the other side of the board (Tsukada, FIGs.
17a and 17b). Accordingly, we find no error in the Examiner’s obviousness
rejection of claim 30. We also find no error in the Examiner’s rejection of
the remaining claims on appeal because Appellant did not set forth any
separate patentability arguments for them (See App. Br. 13-23).

DECISION
We affirm the Examiner’s decision rejecting claims 1-23, 26-30, 33,
and 34.
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).

AFFIRMED
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