Ex Parte Ichiyama

Patent Trial and Appeal Board

Nov 21, 2014

11783932 (P.T.A.B. Nov. 21, 2014)

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.
11/783,932 04/13/2007 Iwane Ichiyama 05225.0303 2048
22852 7590 11/21/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
GORDON, MATTHEW E
ART UNIT PAPER NUMBER
2892
MAIL DATE DELIVERY MODE
11/21/2014 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 IWANE ICHIYAMA
____________________

Appeal 2012-008524
Application 11/783,932
Technology Center 2800
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant seeks review of the Examiner’s decision to reject claims 1,
3, 4, and 9 under 35 U.S.C. § 103(a) as obvious over Hasegawa1 in view of
Hirosue,2 and claims 5–8 under 35 U.S.C. § 103(a) as obvious over those
references further in view of Ueda.3 We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).
We REVERSE.

1 Hasegawa et al., US 2002/0008832 A1, published Jan. 24, 2002.
2 Hirosue et al., US 2005/0248710 A1, published Nov. 10, 2005.
3 Ueda et al., US 2003/0094305 A1, published May 22, 2003.
Appeal 2012-008524
Application 11/783,932

2
The claims are directed to an electric terminal device. We need only
consider claim 1, the only independent claim on appeal. We illustrate the
claimed invention by reproducing claim 1 with reference numerals from
Figures 1A, 1B, and 2:
1. An electric terminal device comprising:
a primary substrate [11; Fig. 2];
a set of primary-substrate-side terminals [15a, 15b; Figs.
1A and 1B] provided on the primary substrate [11] and having a
first pitch between adjacent primary-substrate-side terminals
[15a, 15b];
a tape substrate [16a, 16b; Fig. 2] which is larger in
thermal expansion rate than the primary substrate [11]; and
a set of tape-substrate-side terminals [21a, 21b; Figs. 1A
and 1B] provided in parallel, a number of the tape-substrate-
side terminals [21a, 21b] corresponding to a number of the
primary-substrate-side terminals [15a, 15b], the tape-substrate-
side terminals [21a, 21b] comprising:
alignment terminals [25; Figs. 1A and 1B]
arranged at both ends of the set of the tape-substrate-side
terminals [21a, 21b] to correspond to predetermined
primary-substrate-side terminals [15a, 15b], and
connecting terminals [26; Figs. 1A and 1B]
positioned between the alignment terminals [25] , the
connecting terminals [26] being electrically and
mechanically connected to the primary-substrate-side
terminals [15a, 15b] by thermo-compression bonding and
having a second pitch between adjacent connecting
terminals [26], and a spacing between one of the
connecting terminals [26] and one of the alignment
terminals [25] immediately adjacent to the one
connecting terminal [26] being larger than the second
pitch, wherein a reduction adjustment is taken for the
Appeal 2012-008524
Application 11/783,932

3
second pitch between adjacent connecting terminals [26]
but not taken for the spacing.
Claims Appendix at Br. 17.

OPINION
Claim 1 requires a tape-substrate-side terminal (21a, 21b) comprising
an alignment terminal (25).
The Examiner finds that Hirosue’s alignment mark 20 is the alignment
terminal of claim 1. Ans. 6. But as pointed out by Appellant, structures 20
are mounting overlap marks on the insulating substrate 1. Br. 11; see also
Hirosue ¶ 41 and Fig. 5. There is no question that insulating substrate 1 is
not a tape-substrate-side terminal. The Examiner finds that Hirosue’s
flexible substrate 18 is a tape-substrate-side terminal. But mark 20, as
shown in Figure 5 is to the side of the flexible substrate 18; it is not a part of
flexible substrate 18.
The Examiner has not established that marks 20 have the structure of
terminals much less established that marks 20 are part of “tape-substrate-
side terminals.” We cannot say that Hirosue’s teachings with regard to the
marks 20 provide a basis for concluding that one of ordinary skill in the art
would have arranged the terminals of Hasegawa with the claimed terminal
spacing.
The Examiner’s application of Ueda does not cure the deficiency.

CONCLUSION
We do not sustain the Examiner’s rejections.

Appeal 2012-008524
Application 11/783,932

4
DECISION
The Examiner’s decision is reversed.

REVERSED

cdc