11069102 (B.P.A.I. May. 31, 2012)

Ex Parte Fedde et al

Board of Patent Appeals and InterferencesMay 31, 2012

11069102 (B.P.A.I. May. 31, 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. 11/069,102 03/01/2005 Mickiel P. Fedde 267.00080101 5646 26813 7590 05/31/2012 MUETING, RAASCH & GEBHARDT, P.A. P.O. BOX 581336 MINNEAPOLIS, MN 55458-1336 EXAMINER CHUNG TRANS, XUONG MY ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 05/31/2012 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 MICKIEL P. FEDDE and KENNETH I. KRAWZA ____________ Appeal 2010-005463 Application 11/069,102 Technology Center 2800 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8 and 20-36.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Claims 9-19 have been cancelled. Appeal 2010-005463 Application 11/069,102 2 STATEMENT OF THE CASE Appellants' invention concerns a connector adapter for use with, for example, packaged devices, ball grid array (BGA) packages, surface mount devices, male pin adapters, or female socket adapter apparatus. A substrate has a plurality of openings defined therethrough. The adapter apparatus further includes a plurality of conductive elements, each mounted in a corresponding opening of the plurality of openings using a curable material. One or more of the conductive elements includes at least a first end configured to receive solder material thereon (Spec. 1, 4). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. An adapter apparatus comprising: a substrate, wherein a plurality of openings are defined through the substrate from a first surface to a second surface; and a plurality of conductive elements, wherein each conductive element is non-movably mounted within a corresponding opening of the plurality of openings using a curable material, wherein one or more of the conductive elements comprise at least a first end configured to receive solder material thereon, wherein the first end configured to receive solder material thereon is non-movably mounted using the curable material proximate the first surface such that the curable material proximate the first surface blocks entry of other material into the corresponding opening. REFERENCES and REJECTION The Examiner rejected claims 1-8 and 20-36 under 35 U.S.C. § 103(a) as being unpatentable based upon the teachings of Murphy (U.S. Patent No. 5,702,255 (filed November 3, 1995)) and Hougham (U.S. Patent No. 6,764,313 B2 (filed Jan. 3, 2002)). Appeal 2010-005463 Application 11/069,102 3 ISSUE Appellants contend, inter alia, that Hougham does not teach each conductive element is mounted within a corresponding opening using a curable material, and that the first end configured to receive solder material thereon is non-movably mounted using the curable material proximal the first surface such that the curable material proximate the first surface blocks entry of other material into the corresponding opening (App. Br. 9). The Examiner concedes that Murphy does not teach this–Murphy teaches a friction fit contact (Ans. 3, 6). Appellants argue that Hougham teaches that, with the central section of the contact affixed to interposer 46, the spring arms (the ends of contact 10) are movable. Thus, Appellants contend, there is no teaching that the first end is non-movably mounted (App. Br. 10). Appellants' arguments and the Examiner’s findings present us with the following issue: Does the combination of Murphy and Hougham teach or fairly suggest that the first end of each conductive element (configured to receive solder material thereon) is non-movably mounted using curable material proximate the first surface? PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’ Appeal 2010-005463 Application 11/069,102 4 KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS The Examiner admits that Murphy does not teach that each conductive element is mounted within a corresponding opening of the plurality of openings using a curable material and the first end configured to receive solder material is non-movably mounted using the curable material proximate the first surface, as independent claims 1 and 20 require (Ans. 3). The Examiner finds, however, that Hougham teaches such a non-movable mounting (Ans. 4). The Examiner specifically finds that Hougham teaches the use of curable material to mount the contact in the opening (Ans. 3-4, citing Hougham col. 4, ll. 20-67). We have reviewed Hougham and find that Hougham teaches, in the context of affixing the contact 10 onto an interposer 46 with an end (col. 4, ll. 19-20) that “[o]ther means may be used to hold the contacts in the interposer such as a bonding material, a frictional fit, or even an overlying layer” (col. 4, ll. 21-23, emphasis added). App App cont cont and n mov cont may each prox eal 2010-0 lication 11 Figure 1 Figure 1 act 10. As Appe act 10 of H ot mounte ably moun act 10 of H be bonded Because conductiv imate the f 05463 /069,102 0 of Houg 0 of Houg llants poin ougham, d using cu ted, as the ougham ( using bon neither M e element irst surfac ham is rep ham show t out, the configured rable mat claims req which is n ding mate urphy nor is non-mo e, we conc 5 roduced b s a side vie first (i.e., b to receive erial. That uire. Only ot configu rial to inte Hougham vably mou lude that t elow: w detailin ottom) en solder m is, the firs central p red to rece rposer 46 teaches th nted using he Examin g the elec d 18 of th aterial, is m t end 18 is ortion 22 o ive solder (Reply Br at the first the curab er’s asser trical e spring ovable not non- f spring material) . 3-4). end of le materia ted prima l Appeal 2010-005463 Application 11/069,102 6 facie case of obviousness is erroneous. We will not sustain the Examiner’s § 103 rejection of claims 1-8 and 20-36. CONCLUSION The combination of Murphy and Hougham does not teach or fairly suggest that the first end of each conductive element (configured to receive solder material thereon) is non-movably mounted using curable material proximate the first surface. DECISION The Examiner’s decision rejecting claims 1-8 and 20-36 is reversed. REVERSED pgc