Ex Parte Kitada et al

Board of Patent Appeals and Interferences

Sep 11, 2012

11676213 (B.P.A.I. Sep. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMOFUMI KITADA and HIROKI MARUO
____________

Appeal 2010-005676
Application 11/676,213
Technology Center 2800
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Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005676
Application 11/676,213
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-21. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

INVENTION
This invention relates to “a printed wiring board including a terminal
portion to be connected by use of solder and its connection configuration.”
(Spec. 1). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A printed wiring board comprising:
an insulating base material;
a wiring, including at least a first connection terminal
portion and a second connection terminal portion, formed on a
surface of the insulating base material, the wiring forming a
predetermined circuit pattern;
the first connection terminal portion having a first width;
the second connection terminal having a second width
that is smaller than the first width; and
a cover layer that covers at least a portion of the wiring
and exposes the first and the second connection terminal
portions.

REJECTIONS
1. Claims 1-13 and 15-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent Application Publication No.
Appeal 2010-005676
Application 11/676,213
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2004/0081751 A1 to Nakanishi et al. (''Nakanishi'') in view of U.S. Patent
No. 5,793,150 to Kober et al. ("Kober") (Ans. 3-11).
2. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nakanishi in view of Kober, and further in view of U.S. Application
Publication No. 2006/0226200 A1 to Banno et al. ("Banno") (Ans. 11-12).
3. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakanishi in view of Kober, and further in view of U.S.
Patent Application Publication No. 2003/0087037 A1 to Honda et al.
("Honda") (Ans. 12-13).

GROUPING OF CLAIMS
Based on the Appellants' arguments, we will decide the appeal of the
obviousness rejections of claims 1-6 and 20 on the basis of claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
Based on the dependencies of the claims, we will decide the appeal of
the obviousness rejections of claims 7-19 and 21 on the basis of claim 7.

ANALYSIS
A.
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"the first connection terminal portion having a first width; the second
connection terminal having a second width that is smaller than the first
width," within the meaning of claim 1?
Appellants argue that Nakanishi does not teach the limitation at issue
because "each of the connection terminals [67-69] are formed to have the
Appeal 2010-005676
Application 11/676,213
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same width as the control signal wiring line from which they extend."
(Reply Br. 5).
Appellants' arguments are unpersuasive. We agree with the
Examiner's response: "[t]he A]pplicants] argue] that terminals 67-69
hav[e] the same width [as the control signal wiring line], which the
[E]xaminer did not use in the rejection." (Ans. 14). The Examiner instead
relies on Nakanishi's external connection terminals (67, 70) as corresponding
to the first and second connection portions (Ans. 4; Nakanishi, Fig. 6, ¶
[0089]). We agree that Nakanishi would have taught or suggested the
limitation at issue. (Id.). Therefore, on this record, we are not persuaded of
Examiner's error.

B.
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"a cover layer that covers at least a portion of the wiring and exposes the
first and the second connection terminal portions," within the meaning of
claim 1?

Appellants contend:
Kober merely discloses a sealing structure including cover
layers 3 and 4 of the printed circuit boards 5 and 12, which are
different from the present invention. Without any disclosure
regarding printed wiring boards, Appellants] argued that one
skilled in the art would not be motivated or have a rational
reason to provide at least cover layer 3 of Kober on the
configuration taught in Nakanishi. Such modification was
argued to be based on impermissible hindsight.
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(Reply Br. 5).
Appellants' arguments are unpersuasive for at least the following
reasons:
(1) We agree with the Examiner's reasoning that "[A]pplicants] admitted
Kober teaches a cover layer 3 of the printed circuit board 5, but [does]
not disclose [a] printed wiring board. It is clear that a printed circuit
board is as same as printed wiring board to one having ordinary skill
in the art." (Ans. 14) (emphasis omitted).
(2) Appellants' fail to provide any or sufficient evidence that Kobes'
"printed circuit board" is different than the Appellants' "printed wiring
board."
(3) Appellants' hindsight and lack of motivation arguments (Reply Br. 5-
6) are unpersuasive because Appellants fail to present sufficient
evidence to rebut the motivation articulated by the Examiner of
providing "better protection for the wiring patterns in the electronic
device" (Ans. 4).

While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court guides
that the “combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results,”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (citation omitted).
This reasoning is applicable here. On this record, we are not persuaded of
Examiner error. Therefore, we sustain the rejection of claim 1.
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Regarding dependent claims 2-6 and 20, Appellants contend that
claims 2-6 and 20 are allowable because they depend from claim 1. (App.
Br. 11, 14). However, we did not find Appellants arguments persuasive
regarding claim 1, as discussed above. Therefore, we also sustain the
rejections of claims 2-6 and 20, which fall therewith, since no separate
argument is presented. See 37 C.F.R. § 41.37(c)(1)(vii).

C.
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"wherein the first connection terminal portion is connected to the fourth
connection terminal portion, and wherein the second connection terminal
portion is connected to the third connection terminal portion," within the
meaning of claim 7?
The Examiner makes the following findings and conclusions:
Since Nakanishi et al. discloses a circuit board (60, fig. 6)
with the wirings and terminals same as the first circuit board in
the instant claim, the second circuit board (20, fig. 2), and two
circuit boards could connected by the opposed terminals (fig.
2)[.]
Therefore, it would have been obvious to one having
ordinary skill in the art at the time the invention was made to
arrange the terminals in the circuit board so that the third
connection terminal portion to oppose and connect to the
second connection terminal portion, the fourth connection
terminal portion to oppose and connect to the first connection
terminal portion in the electronic device of Nakanishi et al., in
order to connect to different circuits, and to meet different
design choices, and since it has been held that rearranging parts
of an invention involves only routine skill in the art. In re
Japikse, 86 USPQ 70.
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((Ans. 7) (emphasis added); See Ans. 16).
Appellants disagree:
[T]he Examiner maintains that the use of the "rearrangement of
parts" rationale is proper since Nakanishi discloses one circuit
board face up and a second circuit board face down to be
connected together, where all of the connection terminals are
provided. The Examiner therefore maintains that since the
terminals face each other, it is "implicitly" disclosed that the
terminals on the two boards should be rearranged to meet
together. As shown in Figures 1 and 2 of Nakanishi, however,
the arrangement for connection is already set. There is no
reason to modify the arrangement, especially in a manner that
would arrive at the claimed configuration, nor is there any
suggestion of such a modification provided in Nakanishi.
(Reply Br. 8).
Appellants' arguments are persuasive for at least the following
reasons: (1) On this record, the Examiner has not articulated reasoning with
the requisite "rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation
omitted). (2) More specifically, the Examiner's reasoning that one would
rearrange the connection terminals to match Appellants' claimed
configuration "to connect to different circuits, and to meet different design
choices" is merely a theory of possible use, unsupported by evidence. (Ans.
7). Therefore, we reverse the rejection of independent claim 7 and the
rejections of claims 8-19 and 21, which depend therefrom.

Appeal 2010-005676
Application 11/676,213
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DECISION
We affirm the Examiner's rejections of claims 1-6 and 20.
We reverse the Examiner's rejections of claims 7-19 and 21.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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