Ex Parte Figaro et al

Patent Trial and Appeal Board

Aug 22, 2016

11752759 (P.T.A.B. Aug. 22, 2016)

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.
11/752,759 05/23/2007 Michael Edward Figaro 3025058 US01 4327
67070 7590 08/22/2016
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
SAWYER, STEVEN T
ART UNIT PAPER NUMBER
2847
MAIL DATE DELIVERY MODE
08/22/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL EDWARD FIGARO, SCOTT EDWARD BACOM,
and JAY GREGORY SHERRITT1
____________

Appeal 2015-002715
Application 11/752,759
Technology Center 2800
____________
Before BRADLEY R. GARRIS, PETER F. KRATZ, and
JEFFREY R. SNAY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–5, 8, 9, 11, 12, 22, and 25–27.2 We have
jurisdiction under 35 U.S.C. § 6.

1 Spectra Logic Corp. is identified as the real party in interest. App. Br. 2.
2 Of the claims that remain pending, claims 10 and 13–18 are withdrawn
from further consideration, claims 19–21 and 28 are allowed, and claims 6,
7, 23, and 24 are objected to but otherwise allowable (see, e.g., Final Action
Summary and Final Action 9).
Appeal 2015-002715
Application 11/752,759
2
We AFFIRM.
Appellants claim a component (200) comprising: a substrate (201);
first, second, and third electrically conductive pads (202, 204, 206) disposed
on the substrate; and an electrical device 208 attached to the first and second
pads; wherein the first, second, and third electrically conductive pads are
adapted to be electrically connected to first, second, and third electrical
components (312, 316, 314) that are externally located from the substrate
(independent claims 1 and 22, Fig. 3A); and wherein the component is a
passive electrical component that is recognizable as an independent
component by both a computer aided design program and an automated
component assembly machine (independent claim 1).
A copy of representative claims 1 and 22, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. A passive electrical component comprising:
a substrate;
at least a first, second and third electrically conductive pad, each
disposed on said substrate;
a first electrical device fixedly attached to said first pad and said
second pad and making an electrical connection therebetween,
said third pad devoid of electrical connection to either said first or said
second pads and wherein said first electrical device is not physically
attached to said third pad, said first, second and third electrically conductive
pads are adapted to be electrically connected to a first, second, and third
electrical component wherein said first, second, and third electrical
components are in a location external from said substrate, and
wherein said passive electrical component is recognizable as an
independent component by both a computer aided design program and an
automated component assembly machine.

22. A component comprising:
a substrate possessing a first pad, a second pad and a third pad;
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Application 11/752,759
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an electrical device fixedly attached to said first pad and said second
pad and making an electrical connection therebetween, said electrical device
not attached or electrically connected to said third pad;
said component adapted to be electrically connected to a first external
device via said first pad, a second external device via said second pad and a
third external device via said third pad whereby an electrical pathway exists
between said first external device and said second external device, no
electrical pathway exists for said third external device via said third pad.

Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 1–5, 11, and 12 over the Appellants’ prior art (i.e., Fig. 1A and
Spec. ¶¶ 3–4) in view of Li et al. (US 2006/0209521 A1, published Sept. 21,
2006) (“Li”) and Farnworth (US 2003/0043360 A1, published Mar. 6,
2003);
claim 8 over Appellants’ prior art, Li, Farnworth, and Ozawa (US
4,641,113, issued Feb. 3, 1987);
claim 9 over Appellants’ prior art, Li, Farnworth, and Wang (US
2004/0106231 A1, published June 3, 2004);
claims 22, 25, and 26 over Appellants’ prior art and Li; and
claim 27 over Appellants’ prior art, Li, and Wong (US 5,701,234,
issued Dec. 23, 1997).
Appellants present arguments concerning independent claims 1 and 22
which are likewise applicable to the claims depending therefrom (App. Br.
8–25) and present additional, separate arguments concerning dependent
claims 25 and 26 specifically (id. at 24–25). The dependent claims that are
not separately argued will stand or fall with their parent independent claims
1 and 22.
We will sustain the above rejections for the reasons expressed in the
Final Action, the Answer, and below.
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The Examiner determines that Appellants’ prior art in combination
with Li (i) would have suggested an electrical component having pads
fixedly attached to an electrical device and adapted to be electrically
connected to electrical components externally located from the substrate as
required by independent claims 1 and 22 (Final Action 2–4, 9–11) and (ii) in
further combination with Farnworth would have suggested modifying the
electrical component to be recognizable as an independent component by
both a computer aided design program and an automated component
assembly machine as required by claim 1 (id. at 4–5).
Appellants argue that “none of the referenced purported prior art teach
or suggest a ‘passive electrical component’ with any related configuration
that comprises a ‘substrate’ as recited in the claim language of claim 1”
(App. Br. 10) and “meets the claim language of claim 22” (id. at 20). More
specifically, Appellants argue that prior art Figure 1A shows only a layout
design without a substrate and therefore does not show a component
comprising a substrate as claimed (see, e.g., id. at 11, 14–15), that Figure 1A
is described only by paragraph [0004] rather than paragraphs [0003] and
[0004] in combination (id.), and concomitantly that the substrate board
described in paragraph [0003] is unrelated to Figure 1A and in any event
differs from the claimed substrate (id. at 12–14). In support of these
arguments, Appellants’ attorney explains “the undersigned did not have in
mind paragraphs [0003] and [0004] as collectively describing FIGS. 1A and
1B when drafting the present patent application” (Reply Br. 4), “[p]aragraph
[0004] was intended to provide insight that errors will be generated if one
were to attempt the hypothetical layout depicted in FIGS. 1A and 1B” (id.),
and “FIGS. 1A and 1B were intended to be described by paragraph [0004]
only and not by paragraph [0003]” (id.).
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Appellants’ arguments are not persuasive. “Unlike a section 102
defense . . ., ‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.
v. Biocraft Laboratories, Inc., 874 F.2d 804, 806 (Fed. Cir. 1989) quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976). As a consequence, harmful
error in the rejections of independent claims 1 and 22 is not shown by the
mere fact that Appellants’ prior art of Figure 1A and paragraphs [0003]–
[0004] fails to expressly teach Figure 1A in combination with a substrate.
The record before us supports a determination that one having ordinary skill
in this art would have found the disclosures of Appellants’ prior art
suggestive of an electrical component comprising a substrate, electrically
conductive pads, and an electrical device as required by the independent
claims.
Appellants refer to Li and Farnworth (App. Br. 15–17) stating, for
example, “Li’s printed circuit board 50 and Farnworth’s double platen
assembly 100 are inapposite to Appellant’s [sic] recited passive electrical
component” (id. at 15–16).
However, Appellants do not specifically discuss, and identify errors
in, the Examiner’s conclusions that it would have been obvious to adapt the
pads of Appellants’ prior art to be electrically connected to externally
located electrical components in view of Li as required by claims 1 and 22
and to modify Appellants’ prior art to be recognizable by a computer aided
design program and an automated component assembly machine as required
by claim 1.
In addition, Appellants dispute the Examiner’s finding that
Appellants’ Figure 1A prior art includes the claim 25 feature wherein the
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third pad never facilitates electrical connectivity with the first and second
pads (Final Action 11). In particular, Appellants argue this prior art does not
read on the claimed feature because “the background section [of the
Specification] says “[s]hown herein is . . . a backup component (Component
F 4) that is not electrically connected to the circuit, however, is capable of
being connected to the circuit’” (App. Br. 24).
This argument lacks convincing merit because Appellants do not
explain why such a capability somehow negates the arrangement of Figure
1A which shows third pad C as not electrically connected with first and
second pads A and B.
Finally, Appellants also challenge the Examiner’s finding that
Appellants’ prior art including Figure 1A discloses the claim 26 arrangement
“wherein said substrate is for accommodating said an electrical device only
capable of attaching to two of said pads” (claim 26) (Final Action 11).
According to Appellants, “[t]he Examiner asserts that this feature is shown
by the ‘electrical device 10 shows only two connection points’, however,
this is incorrect because the same electrical device 10 is also shown in FIG.
1B as connected to pad B/D ‘pad-B 12 and pad-D 14 are substantially
superimposed, creating pad-B/D 20’” (App. Br. at 25).
Appellants’ position is not well taken because the Examiner’s finding
is based on the prior art of Figure 1A not Figure 1B.
In summary, we sustain the Examiner’s § 103 rejections of the
appealed claims because Appellants fail to reveal error in these rejections.
The decision of the Examiner is affirmed.

Appeal 2015-002715
Application 11/752,759
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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).

AFFIRMED