Ex Parte Fjelstad

Patent Trial and Appeal Board

Mar 26, 2018

13019550 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/019,550 02/02/2011
73481 7590
Alliacense Limited LLC
2310 Homestead Rd
# Cl-505
Los Altos, CA 94024-7339
03/28/2018
FIRST NAMED INVENTOR
Joseph C. Fjelstad
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
VEI-001-Dl 1678
EXAMINER
CARLEY, JEFFREY T.
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
emi@alliacense.com
ip@alliacense.com
ned@alliacense.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JOSEPH C. FJELSTAD
Appeal2017-005225
Application 13/019,550
Technology Center 3700
Before: MICHAEL L. HOELTER, BRETT C. MARTIN, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 16-22. App. Br. 2. Claims 1-15 have been canceled and claim 23
has been withdrawn. App. Br. 13, 15 (Claims Appendix). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to the field of
electronic assembly and more specifically, but not exclusively, to the
manufacture and assembly of electronic products without the use of solder."
Appeal2017-005225
Application 13/019,550
Spec. 4:5-7. Method claims 16 and 17 are independent. Claim 16 is
illustrative of the claimed subject matter and is reproduced below:
Hsu.
16. A method of making a circuit assembly comprising: in
order,
Hsu
placing (800) at least one component ( 406) on a
substrate (808), the component ( 406) having at least two
sides, the substrate (808) having a first planar side and a
second planar side,
incorporating (900) a first electrically insulating
material (908), the insulating material (908) completely
covering and attaching the at least one component ( 406)
with the first planar side of the substrate (808), and
forming (1000) a first set of at least one via (1002)
through the second planar side of substrate (808) to
expose a first set of at least one lead ( 412) of the at least
one component ( 406).
REFERENCE RELIED ON BY THE EXAMINER
US 2007/0143993 Al June 28, 2007
THE REJECTION ON APPEAL
Claims 16-22 are rejected under 35 U.S.C. § 102(e) as anticipated by
ANALYSIS
Appellant argues claims 16-22 together. App. Br. 9-11. We select
method claim 16 for review, with claims 17-22 standing or falling with
claim 16. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner primarily relies on Figures 2C and 2D of Hsu in
rejecting claim 16, and specifically correlates the recited "substrate" to
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Appeal2017-005225
Application 13/019,550
Hsu 's item 22'. 1 Final Act. 2 (referencing Hsu i-fi-128, 29); Ans. 4. The
Examiner's correlation of Hsu's item 22' to the recited "substrate" is
important because, despite being informed of such correlation (see Final
Act. 2, Ans. 4), Appellant only presents arguments based on Hsu's item 21
correlating to the recited "substrate."2 App. Br. 10; Reply Br. 2. Because
Appellant argues a different component as the recited "substrate," Appellant
presents arguments that the recited order of the claimed steps (as well as the
steps themselves) is not taught in Hsu. See App. Br. 10-11; Reply Br. 1-3.
Appellant does not present arguments based on the Examiner's correlation
of Hsu's item 22' to the recited "substrate," nor does Appellant explain why
Hsu's item 22' cannot serve as a substrate. 3 In short, Appellant is not
responding to the rejection expressed by the Examiner because Appellant is
relying on descriptors found in Hsu rather than descriptors employed by the
Examiner.
We are also of the opinion that the Examiner met the requisite prima
facie burden in rendering the rejection because the Examiner identifies
(citing items, figures, paragraphs, and line numbers) where Hsu teaches the
1 The Examiner also correlates Hsu's item 23 to the recited "component,"
item 22 to the recited "electrically insulating material," item 221' to the
recited "via," and item 231 to the recited "lead." Final Act. 4.
2 To be clear, Hsu describes item 21 as a "substrate" and item 22' as a
"dielectric layer." Hsu i-fi-127, 29. The Examiner seems aware of Hsu's
terminology, but reiterates, "[i]n the final Office Action, the Examiner cited
the structures of Hsu as intended." Ans. 4. In other words, the Examiner
explicitly correlates Hsu's layer 22' to the recited "substrate." Final Act. 2;
Ans. 4. The Examiner does not rely on Hsu's item 21 in rejecting claim 16.
3 Hsu describes item 22' as a "dielectric layer" (Hsu i129) and Appellant
does not explain why a "dielectric layer" cannot serve as a "substrate" in a
circuit assembly.
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Appeal2017-005225
Application 13/019,550
three steps recited in claim 16. Ans. 4--6. Appellant attempted to rebut these
teachings, but again by relying on Hsu's item 21 being the "substrate" and
also by focusing on Hsu's Figure 2B, when, in fact, the Examiner relied on
Hsu's Figure 2C for the "placing" limitation. See Reply Br. 3; Ans. 4.
It is further noted that the "incorporating" step recites the electrically
insulating material "completely covering and attaching" the at least one
component. This "completely covering and attaching" language is, as per
the Examiner, disclosed as occurring in the processing between Figures 2C
and 2D of Hsu. See Ans. 4--6. Appellant disagrees, stating, "the
components are already physically covered, except on their sides." Reply
Br. 5 (emphasis added). It is these "sides" that are depicted as being
subsequently covered in the process occurring between Figures 2C and 2D
of Hsu. Nevertheless, Appellant contends, "filling the gaps cannot meet the
claim limitation of 'completely covering and attaching."' Reply Br. 5. In
view of Hsu's disclosure of completely filling the gaps (Hsu i-f 29, Fig. 2D),
Appellant's contention that this "completely covering" limitation is not
disclosed is not persuasive.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner's rejection of claims 16-22.
DECISION
The Examiner's rejection of claims 16-22 as being anticipated under
35 U.S.C. § 102( e) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended in accordance with 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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