Ex Parte Crotty

Patent Trial and Appeal Board

Apr 27, 2017

13197459 (P.T.A.B. Apr. 27, 2017)

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.
13/197,459 08/03/2011 Paul W. Crotty JR. 9062-000500-US 5814
28997 7590 05/01/2017
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
CRUM, JACOB R
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL W. CROTTY JR.
Appeal 2016-002657
Application 13/197,459
Technology Center 2800
Before BEVERLY A. FRANKLIN, ELIZABETH M. ROESEL, and
AVELYN M. ROSS, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant.1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—25. We have jurisdiction under 35 U.S.C.
§ 6(b).2
We AFFIRM.
1 Laird Technologies, Inc. is identified as the real party in interest. App. Br.
3.
2 In our opinion below, we reference the Specification filed August 3, 2011
(Spec.), the Final Office Action mailed January 15, 2015 (Final Action), the
Appeal Brief filed June 12, 2015 (App. Br.), and the Examiner’s Answer
mailed September 17, 2015 (Ans.).
Appeal 2016-002657
Application 13/197,459
STATEMENT OF THE CASE
Claimed Invention
The claimed subject matter relates to a shielding apparatus suitable for
shielding components on a printed circuit board from electromagnetic
interference (EMI) and/or radio frequency interference (RFI). App. Br. 20
(claim 1); Spec. 11. The shielding apparatus includes a frame configured
for installation on a substrate surrounding an electronic component to be
shielded and a releasably attachable/detachable pickup member configured
to allow the pickup member and the frame to be picked up by pick and place
equipment (e.g., suction nozzle, grippers, etc.). Id. H 7, 25.
One embodiment is shown in Figures 6 and 9, which are reproduced
below:
Fig. 9
Figure 6 shows a shielding apparatus, including frame 204 and pickup
bridge 208, which is releasably attached to frame 204 by means of interlock
220. Id. 18, 63. Pickup bridge 208 includes pickup area 260 and end
portions 290, which that are bent or angled upwardly such that the pickup
area is higher than the upper surface of the frame’s flange 268. Id. 1 64.
Figure 9 shows the shielding apparatus of Figure 6 after removal or
detachment of the pickup bridge from the frame. Id. 121.
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Application 13/197,459
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below from Appellant’s Appendix 1:
1. A shielding apparatus comprising:
a frame; and
a pickup member integrally formed with and having a
monolithic construction with the frame, the pickup member
releasably attached to the frame to allow the frame and the
releasably attached pickup member to be picked up by the
pickup member and placed on the substrate;
wherein the pickup member includes a pickup area and
arms extending outwardly from the pickup area and releasably
attachable to corresponding sidewalls of the frame such that the
pickup member spans across an open top of the frame and such
that the pickup area is higher than an upper surface of the frame
whereby greater clearance is provided for electronic
components;
whereby the pickup member is detachable and
completely separable from the frame, without deforming the
frame, after the frame is installed on the substrate such that the
frame remains installed on the substrate without the pickup
member.
App. Br. 20.
References
Davidson US 5,895,884 Apr. 20, 1999
English et al. US 7,488,902 B2 Feb. 10, 2009 (“English”)
Crotty, Jr. US 7,504,592 B1 Mar. 17, 2009 (“Crotty”)
Fukutomo et al. JP 2008-034713 Feb. 14, 2008 (“Fujitsu”)3
3 Fujitsu Ltd. is the assignee of JP 2008-034713. We cite to an English
machine translation made of record May 8, 2014.
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Application 13/197,459
Rejections
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
1. Claims 1—8, 10-18, and 20-23 as unpatentable over English,
Crotty, and Fujitsu. Final Action 2—14.
2. Claims 9 and 19 as unpatentable over English, Crotty, Fujitsu, and
Davidson. Id. at 15—16.
3. Claims 24 and 25 as unpatentable over English, Crotty, and
Davidson. Id. at 16—18.
ANALYSIS
Appellant does not separately argue the patentability of dependent
claims 3—6, 10, 12—15, 17, 18, and 20-23. App. Br. 4—18. In accordance
with 37 C.F.R. § 41.37(c)(l)(iv), claims 3—6, 10, 12—15, 17, 18, and 20-23
will stand or fall together with their respective parent claims 1 and 11.
Upon consideration of the evidence presented in this Appeal and each
of Appellant’s contentions, we are not persuaded that Appellant identifies
reversible error, and we find that a preponderance of evidence supports the
Examiner’s conclusion that the subject matter of Appellant’s claims is
unpatentable over the applied prior art. We sustain the rejections of the
appealed claims based on the Examiner’s findings of fact, conclusions of
law, and rebuttals to Appellant’s arguments, as expressed in the Final Action
and the Answer. We add the following primarily for emphasis.
Claims 1 and 11
The Examiner finds that English discloses a shielding apparatus
comprising a frame and a pickup member having a monolithic construction,
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Application 13/197,459
but does not teach that the pickup member is releasably attached to the frame
and does not teach that the pickup area is higher than an upper surface of the
frame. F inal Action 2—3.
The Examiner finds that Crotty discloses a shielding apparatus,
including a cover that is releasably attachable to a frame by means of an
interlock. Id. at 3. The Examiner finds that it would have been obvious to
modify the shielding apparatus of English to include an interlock as
suggested by Crotty “such that the arms of the pickup member are releasably
attached to the sidewalls of the frame, so that the pickup member can be
removed and then reattached, in order to provide access to electrical
components beneath the pickup member.” Id. at 3.
The Examiner finds that Fujitsu discloses a shielding apparatus
including a pickup member having arms that extend outwardly from a
pickup area and are releasably attachable to a frame, such that the pickup
area is higher than an upper surface of the frame whereby greater clearance
is provided for electronic components. Id. at 3^4. The Examiner finds that
it would have been obvious to modify the shielding apparatus of English and
Crotty to include the pickup member features, as taught by Fujitsu “in order
to reduce the height of the frame while preventing the pickup member from
contacting the electronic components.” Id. at 4.
Appellant argues that the cited references fail to teach all the features
of the claims and that, even if prima facie obviousness has been shown, it is
rebutted by Appellant’s arguments and evidence. App. Br. 6—7. For the
reasons discussed below, we are not persuaded that Appellant identifies error
in the Examiner’s findings and conclusions.
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Appellant argues that Crotty’s detachable cover differs from the
claimed pickup member, which is not a cover. App. Br. 8—9. This argument
does not identify error in the Examiner’s finding that Crotty teaches an
interlock and that it would have been obvious to modify English’s shielding
apparatus with Crotty’s interlock. Appellant fails to provide convincing
argument or evidence that an interlock for releasably attaching two parts of
an EMI shield (a cover and a frame) would be viewed by a person of
ordinary skill in the art as inapplicable for providing releasable attachment
of two other parts of an EMI shield (a pickup member and a frame).
Appellant does not dispute the Examiner’s finding that a releasably
attachable pickup member was known in the art. Final Action 3^4; Fujitsu
39, 41, 42, Figs. 13—15 (disclosing pickup member 41 that is “freely
attachable/detachable” to/from frame 25).
Next, Appellant argues that English teaches away from a pickup
member that is detachable and completely separable from the frame. App.
Br. 9—10 (quoting English 5:44—51, 7:51—58). According to the quoted
disclosures, English’s pickup member contributes stiffening support to the
frame and enables the frame to be handled by pick-and-place equipment. Id.
Appellant does not, however, direct us to evidence showing that such
stiffening support is needed after the frame is installed on a substrate and the
pickup member is detached. According to Appellant’s Specification, a
detachable pickup member provides the same stiffening support as taught by
English. Compare English, 5:44—51, with Spec. 48. Appellant’s
Specification thus demonstrates that the Examiner’s proposed modification
would not be contrary to English’s intended purpose. Accordingly,
Appellant’s argument and evidence do not convince us that English teaches
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away from a detachable pickup member. Galderma Labs., L.P. v. Tolmar,
Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (“A reference does not teach away,.
. . if it merely expresses a general preference for an alternative invention but
does not criticize, discredit, or otherwise discourage investigation into the
invention claimed.”).
Next, Appellant challenges the Examiner’s rationale for combining
English and Crotty, arguing that English’s shielding apparatus already
includes means for providing access to electrical components beneath the
pickup member and the Examiner’s proposed modification would merely
add unnecessary manufacturing steps and cost. App. Br. 10 (quoting
English, 5:60-64). Appellant does not, however, dispute the Examiner’s
finding that English’s pickup member is disposed over the open surface of a
frame and obstructs access to electronic components beneath the pickup
member to some extent. Ans. 7—8 (citing English Fig. 2). Crotty teaches
that a removable cover enables access to electrical components beneath the
cover. Crotty 4:59—5:3. The Examiner is correct that this teaching would
have provided a motivation to include a removability feature in the shielding
apparatus of English. Id.', Final Action 3. Although English’s pickup
member does not obstruct access to the same extent as Crotty’s cover, we
find that a preponderance of the evidence supports the Examiner’s position
that English’s shielding apparatus would nevertheless benefit from making
the pickup member removable.
Next, Appellant argues that Crotty does not suggest modifying
English’s pickup member to make it removable, but would have instead led
a person of ordinary skill in the art to eliminate the central hub and use the
cover as a pickup surface. Appellant’s argument is unconvincing. At best,
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Appellant proposes an alternative way of combining the cited references.
The existence of such an alternative does not persuade us that the
Examiner’s proposed modification lacks sufficient reasoning, rational
underpinnings, or evidentiary support. See Acco Brands Corp. v Fellowes,
Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (“[E]ven if one possible obvious
combination falls outside of the claims, it fails to undercut the fact that the
other possible obvious combination lies within their scope.”).
In addition, Appellant argues that Crotty’s single piece EMI shield
having a cover that can be repeatedly removed and reattached would not be
considered relevant in developing a two piece shield having a sacrificial
pickup member that may be removed and discarded. App. Br. 11—12.
Appellant submits the same argument in the form of an inventor
declaration..4 We are not persuaded by Appellant’s argument and
Declaration. Appellant’s attempted distinction between “single piece” and
“two piece” construction is not persuasive. App. Br. 12. Both Crotty and
Appellant describe an EMI shield comprising two parts that are formed from
a single piece of material. Compare Crotty 5:4—8, 5:43—45, with App. Br. 20
(claim 1). The fact that reattachment is not a required feature of Appellant’s
pickup member does not does not persuade us of error in the Examiner’s
findings and conclusion. A preponderance of the evidence supports the
Examiner’s finding that Crotty’s interlock would have been a known and
relevant feature for inclusion in an EMI shielding apparatus. See, e.g.,
Crotty, Abstract, Fig. 4, 8:4—11. A preponderance of the evidence also
supports the Examiner’s finding that English’s shielding apparatus would
4 Declaration of Paul W. Crotty, Jr., filed October 15, 2013 (“Crotty Deck”).
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benefit from inclusion of this feature, namely by increasing access to
electrical components beneath the pickup member. Final Action 3; Ans. 5,
7—8; Crotty, 4:59—5:3. Furthermore, as noted by the Examiner (Final Action
7), the teachings of Fujitsu provide further support for modifying the pickup
member of English to be removable. Fujitsu 39, 41, 43, Figs. 12—15
(pickup member 41 is “freely attachable/detachable” and is removed from
frame 25 after the frame is soldered to a circuit board and before shield
cover 24 is placed over the frame).
Appellant argues that Fujitsu’s frame and pickup member do not have
a monolithic single-piece construction. App. Br. 9. That argument does not
identify error in the Examiner’s rejection, which relies on English, not
Fujitsu, to teach a monolithic single-piece construction for the frame and
pickup member. Final Action 2 (citing English Fig. 14); see also English,
4:54—58, 5:4—7 (teaching integral, monolithic construction for frame 102,
including upper surface (pickup member) 106); id. at Figs. 1 and 2.
Appellant additionally argues that Fujitsu is concerned with providing
clearance when top plate 41 is bent or flexed downwardly by the force of
pickup nozzle, “not with accommodating taller components.” App. Br. 9.
Appellant’s argument is unconvincing. As the Examiner correctly finds
(Final Action 4; Ans. 4), Fujitsu Figures 13 and 15 show that pickup area
41a of pickup member 41 is higher than an upper surface of frame 25 and
also show clearance between pickup area 41a and electronic components 23.
Fujitsu 142, Figs. 13, 15. Appellant relies on Fujitsu Figure 17 (App. Br. 9),
but that figure shows a different embodiment than Fujitsu Figures 12—16,
which are the basis for the Examiner’s findings. Final Action 4 (citing
Fujitsu Figs. 13, 15); compare Fujitsu 38—47 (describing Figs. 12—16
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including pickup member 41), with Fujitsu Tflf 48—56 (describing Figs. 17—20
showing an embodiment without a separate pickup member).
Appellant argues that “numerous advantages that may be realized by
using the releasably attached/detachable pickup members.” App. Br. 13
(quoting Spec. Tflf 25, 30-48). Appellant does not, however, explain how the
asserted advantages are unexpected or unpredictable. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Lastly, Appellant argues that its EMI shields with releasably attached
pickup members have been commercially successful and received positive
industry recognition. App. Br. 19.
Appellant asserts that over one million units have been sold to at least
five different customers (App. Br. 19; Crotty Deck 9), but provides no
hard evidence, e.g., sales data, to support those assertions. In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996) (“the PTO must rely upon the applicant to
provide hard evidence of commercial success”). Furthermore, the number of
units sold and the number of customers, without an indication of whether
they represent a substantial share of the relevant market, is at best only weak
evidence of commercial success. Id. Furthermore, Appellant provides no
evidence showing a nexus between sales of its products and the subject
matter of the appealed claims. Id. (evidence of commercial success is
relevant “only if there is proof that the sales were a direct result of the
unique characteristics of the claimed invention—as opposed to other
economic and commercial factors unrelated to the quality of the patented
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subject matter”). Accordingly, we view Appellant’s evidence of commercial
success as weak.
As support for its assertion of “positive industry recognition,”
Appellant submits a magazine article discussing Appellant’s shields. App.
Br. 19; Appendix B. The article is not true industry praise because it is co­
authored by the inventor, Paul Crotty, Jr., and another engineer from Laird
Technologies, Inc., the real party in interest. Bayer Healthcare Pharm., Inc.
v. Watson Pharm., Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013) (article
authored by the first-named inventor is “self-referential commendation” and
“fall[s] well short of demonstrating true industry praise”).
We therefore sustain the Examiner’s rejection of claims 1 and 11.
Claims 2, 7, 8, and 16
Regarding claims 2, 7, and 16, Appellant identifies one or more
deficiencies of each of English, Crotty, and Fujitsu individually, but fails to
identify error in the Examiner’s findings and conclusions based on the
combined teachings of the references. In re Young, 927 F.2d 588, 591 (Fed.
Cir. 1991) (“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.”); In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”).
Regarding claim 8, Appellant argues that Fujitsu Figure 15 shows
portions 43 vertically straight up and down and not bent or angled upwardly,
as shown in Appellant’s Figure 6. App. Br. 16—17. We agree with the
Examiner, however, that the phrase, “end portions of the arms are bent or
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angled upwardly,” as recited in claim 8, is broad enough to include portions
that are bent or angled at an angle of 90 degrees. Our claim construction is
supported by Appellant’s Specification, which does not define or limit the
angle at which the end portions are bent or angled. Spec. 1 64, Fig. 6
(showing bent or upwardly angled portions 290).
We therefore sustain the Examiner’s rejection of claims 2, 7, 8, and
16.
Claims 9 and 19
Although Appellant argues claims 9 and 19 under a separate heading,
Appellant merely argues that Davidson—the additional reference cited by
the Examiner—does not remedy the asserted deficiencies in English, Crotty,
and Fujitsu. App. Br. 17—18. Appellant’s argument is not persuasive to
show error in the Examiner’s rejection, which relies on Davidson to teach a
flangeless construction for the frame. Final Action 15.
We therefore sustain the Examiner’s rejection of claims 9 and 19.
Claims 24 and 25
Appellant fails to present a separate substantive argument regarding
claims 24 and 25. App. Br. 18—19; see In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (the Board reasonably interpreted 37 C.F.R. § 41.37
(c)(l)(vii) as requiring “more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”).
We therefore sustain the Examiner’s rejection of claims 24 and 25.
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CONCLUSION OF LAW AND DECISION
The weight of the evidence supports the Examiner’s conclusion of
obviousness. Therefore, the § 103(a) rejections are sustained.
The decision of the Examiner rejecting claims 1—25 is affirmed.
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).
AFFIRMED
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