Ex parte Gober

Board of Patent Appeals and Interferences

Aug 27, 1998

08515218 (B.P.A.I. Aug. 27, 1998)

Application for patent filed August 15, 1995. According1
to appellant, this application is a continuation of
Application 08/154,047, filed November 17, 1993, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALAN GOBER
__________
Appeal No. 97-4158
Application No. 08/515,2181
__________
ON BRIEF
__________
Before COHEN, ABRAMS and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 41-60, which constitute all of the
claims remaining of record in the application.
Appeal No. 97-4158
Application No. 08/515,218
2
The appellant's invention is directed to a zero insertion
force socket (claims 41-47), to a method of providing a
retention force in a zero retention force socket (claims 48-
54), and to a computer system comprising a circuit board with
a zero insertion force socket (claims 55-60). The subject
matter before us on appeal is illustrated by reference to
claim 1, which has been reproduced in an appendix to the
Appeal Brief (Paper No. 23).
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Scheingold et al. (Scheingold) 4,278,311 Jul. 14,
1981
Kishi et al. (Kishi) 5,244,404 Sep. 14,
1993
Bright 5,256,080 Oct. 26,
1993
Bruder, IBM Technical Disclosure Bulletin, Vol. 13, No. 5
(October 1974) p. 1265.
Jarvela, IBM Technical Disclosure Bulletin, Vol. 16, No. 12
(May 1974) pp. 3975-3976.
THE REJECTION
Appeal No. 97-4158
Application No. 08/515,218
3
Claims 41 through 60 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bruder in view of Bright, Kishi,
Jarvela and Scheingold.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Appeal Brief.
OPINION
This rejection is under 35 U.S.C. § 103, and therefore
the examiner bears the initial burden of presenting a prima
facie case of obviousness (see In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). It is our view that
the examiner has not met this burden, and therefore we will
not sustain the rejection. Our reasons for arriving at this
conclusion follow.
Appeal No. 97-4158
Application No. 08/515,218
4
The problem to which the appellant has directed his
inventive efforts is applying a second component retaining
force to ZIF sockets to minimize the probability of component
movement or detachment in the face of the use of larger
components, such as those containing heat sinks
(specification, page 3). The appellant solves the problem by
incorporating into the mechanism which operates the first
retaining system, a second system which applies a resilient
force to the upper surface of the component to urge it toward
the upper surface of the body upon which it is mounted.
Claim 41 is directed to a zero insertion force (ZIF)
socket comprising four components. Bruder discloses a ZIF
socket comprising the claimed body, binding member and first
arm member, which operate together in the same manner as the
appellant’s invention to retain the component assembly
installed thereon in place by engaging the component pins.
What Bruder does not teach, however, is the second retention
means, that is, the “first projection extending generally
perpendicularly from the first arm member and extending over a
portion of the component assembly” to provide a retention
force to “resiliently urge the component assembly toward the
Appeal No. 97-4158
Application No. 08/515,218
To entrap is to catch in or as if in a trap. Mirriam2
Webster’s Collegiate Dictionary, Tenth Edition, 1996, page
387.
5
upper surface of the body.” We observe in passing that Bruder
describes his handle (lid) 6 as “entrapping” the test subject
when in the lowered position. It would be speculation,
however, to conclude that handle 6 applies a retention force
to the upper surface of the test subject, for the reference
does not so state, and the common definition of the word does
not support such a conclusion.2
The examiner looks to Jarvela for its teaching of
pressing down on the top of an electronic module with a non-
resilient element, and to Kishi and Scheingold for theirs of
pressing downwardly on a part with a resilient or spring
structure, from which he concludes it would have been obvious
to one of ordinary skill in the art to add a resilient spring
to the inside of the Bruder handle (lid) 6. However, the mere
fact that the prior art structure could be modified does not
make such a modification obvious unless the prior art suggests
the desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we fail to
Appeal No. 97-4158
Application No. 08/515,218
6
perceive any teaching, suggestion or incentive that would have
led one of ordinary skill in the art to provide the Bruder
device with a resilient projection extending over the
component, absent the hindsight accorded one who first
reviewed the appellant’s disclosure. There are several
reasons for arriving at this conclusion. First, the problem
addressed by the appellant has not been recognized by any of
the applied prior art references, much less Bruder and Bright,
which are the only ones that disclose ZIF sockets. Therefore,
no suggestion to modify Bruder in the manner proposed by the
examiner is found in this consideration. Second, there is no
other suggestion, explicit or implicit, in any of the applied
references which would have motivated one of ordinary skill in
the art to add a second component retention system to the
Bruder device. Bruder discloses a test fixture, and there
would seem to be no reason why the artisan would be concerned
about components becoming detached because of being subjected
to rough treatment, as would be the case in a portable
computer, for example, and so the “binding” system would be
sufficient to secure the component being tested. Finally, the
references do not disclose or teach operating two different
Appeal No. 97-4158
Application No. 08/515,218
7
retention systems by means of the same operating arm, and
therefore they would have provided no suggestion to modify
Bruder in the manner proposed by the examiner.
For the reasons expressed above, it is our opinion that
the combined teachings of the references fail to establish a
prima facie case of obviousness with regard to the subject
matter recited in claim 41, and we will not sustain the
rejection of this claim or of the claims that depend
therefrom. Since this limitation also appears in independent
claims 48 and 55, the same holds true for them and for their
dependent claims.
Appeal No. 97-4158
Application No. 08/515,218
8
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 97-4158
Application No. 08/515,218
9
Stephen A. Terrile
Skjerven, Morrill, MacPherson, Franklin & Friel
25 Metro Drive, Suite 700
San Jose, CA 95110