Ex Parte Kitaoka

Patent Trial and Appeal Board

Dec 10, 2018

14252884 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/252,884
61654 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
04/15/2014
12/12/2018
FIRST NAMED INVENTOR
Y asuhide Kitaoka
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.
1510801.267US1[75656US1] 5636
EXAMINER
LEWIS-TAYLOR, DAYTON A.
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
patent@lockelord.com
swofsy@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte YASUHIDE KITAOKA 1
Appeal2018-004444
Application 14/252,884
Technology Center 2100
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 3-13, and 15, which are all the pending claims (see Non-Final
Act. 1 and App. Br. 10-12 (Claims App'x)). We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies the Applicant, Goodrich Corporation, as the
real party in interest (i.e., the Appellant). App. Br. 2.
Appeal2018-004444
Application 14/252,884
Introduction
According to Appellant, the "disclosure relates to data transfer
systems, more particularly to removable data transfer interfaces." Spec. 1 :4--
5. Appellant's "disclosure provides solutions for" "a need in the art for
more robust [ circuit card assembly] connection systems." Spec. 1: 18-19.
A data transfer interface includes a circuit card assembly
(CCA) including a mounting surface, a data transfer port
mounted to the mounting surface of [the] CCA, and a support
that is through-hole mounted to the CCA and is engaged to the
data transfer port to reinforce the data transfer port from against
detaching from the CCA.
Abstract.
Claim 1 is representative of the claims on appeal:
1. A data transfer interface, comprising:
a circuit card assembly (CCA) including a mounting
surface;
a data transfer port that is surface mounted to the
mounting surface of the CCA, wherein the data transfer port is
surface mounted using surface mount technology; and
a support that is through-hole mounted to the CCA and is
engaged to the data transfer port to reinforce the data transfer
port against detaching from the CCA.
App. Br. 10 (Claims App'x).
Rejections & References
Claims 1, 3-7, 12, 13, and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Matsunuma et al. (US 5,993,258, issued Nov. 30, 1999)
(hereinafter "Matsunuma") and Huang (US 2006/0234550 Al, published
Oct. 19, 2006) (hereinafter "Huang"). Non-Final Act. 4--8.
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Application 14/252,884
Claim 8 stands rejected under§ 103 as unpatentable over Matsunuma,
Huang, and Lin (US 2001/0018299 Al, published Aug. 30, 2001)
(hereinafter "Lin"). Non-Final Act. 8.
Claims 9 and 10 stand rejected under § 103 as unpatentable over
Matsunuma, Huang, and Chen et al. (US 2011/0151680 Al, published June
23, 2011) (hereinafter "Chen"). Non-Final Act. 8-9.
Claim 11 stands rejected under § 103 as unpatentable over
Matsunuma, Huang, and Werner et al. (US 2014/0073149 Al, published
Mar. 13, 2014) (hereinafter "Werner"). Non-Final Act. 9-10.
ANALYSIS
Appellant argues the Examiner errs in the rejection of all claims based
on the limitations commonly recited by independent claims 1 and 13. See
App. Br. 5-8. We select claim 1 as representative. See 37 C.F.R.
4I.37(c)(l)(iv). We consider the arguments presented by Appellant;
arguments not made are waived. See id.
The Examiner finds Matsunuma teaches all elements of claim 1
except for "wherein the data transfer port is mounted using surface mount
technology," which the Examiner finds Huang teaches. Non-Final Act. 4--5
(citing Matsunuma Fig. 2; 4:41--48; Huang Fig. 2, ,r 13). Appellant argues
the Examiner errs because:
the Examiner merely takes a reference that shows only through-
hole mounting and combines it with another reference that only
discloses being used with card of the surface mount technology
type. It is respectfully submitted that one having ordinary skill
in the art would not and could not combine a reference that
shows only through-hole mounting (i.e., Matsunuma) with a
reference that describes using only surface mount circuit boards
(i.e., Huang) to create a data port that is surface mounted (e.g.,
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Application 14/252,884
for data transfer circuitry) and a separate support structure that
is through-hole mounted through the board for support of the
data port.
App. Br. 6.
The Examiner answers by finding Huang teaches a connector that uses
both through-hole mounting and surface mounting technology. Ans. 3--4
(citing Huang ,r,r 13-14). Appellant replies that the Examiner's new finding
in the Answer with respect to Huang and through-hole mounting is incorrect,
because:
all Huang discloses are certain flanges that are possibly inserted
into holes in the circuit board. Through-hole mounting, which
has a definition in the art that includes soldering on the back
side of the chip, is not mentioned. Soldering of these flanges
on the back side of the circuit board is not mentioned in Huang
.... [t]his disclosure is not clear or enabling. It is respectfully
submitted that Huang does not disclose that the flange extends
through a hole and is soldered on a back side of the circuit
board, which is required in through-hole mounting.
Reply Br. 6.
Appellant's arguments regarding the teachings of Huang are
unpersuasive. The ordinarily skilled artisan is "a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). Here, such artisans have long understood that when supports
are placed through a circuit board, under many circumstances, soldering has
been a way to fix the supports to the board. Irrespective of any confusion
from references in Huang's specification to non-existent numerals in
Huang's Figures, see generally Huang ,r,r 14, 16, Figs. 1-3, Huang is clear
that flange supports 107, 108 in Figure 2 go "into the respective holes in the
SMT circuit board." Huang ,r 16. Ordinarily skilled artisans would have
understood that a flange support inserted into a hole in a circuit board would
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Application 14/252,884
have been soldered in place. Appellant's Specification discusses the routine
nature of soldering in such circumstances, e.g., describing that "the data
transfer port 103 can be fixedly attached to the support in any suitable
manner" such as "the support 107 can be soldered to the data transfer port
103." Spec. 5. Through-hole attachment by a flange support as taught by
Huang is a type of "suitable manner" to "fixedly attach[] to the support" as
discussed in Appellant's Specification. 2 We agree with the Examiner that
Huang teaches or suggests "a support that is through-hole mounted to the
[ circuit card assembly] and is engaged to the data transfer port to reinforce
the data transfer port against detaching from the CCA," as recited in claim 1.
Appellant's argument that ordinarily skilled artisans would have understood
through-hole mounting to exclude the teachings of Huang, see Reply Br. 6,
is unpersuasive. Beyond attorney argument, there is no evidence of record
as to what skilled artisans would have understood through-hole mounting to
mean. Attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
Appellant also argues that with respect to Matsunuma and Huang,
"[t]he cited references simply provide no reason to be combined." App. Br.
7. The Examiner does not respond in the Answer (see passim), instead
standing on the motivation to combine as provided in the Non-Final
Rejection (see Non-Final Act. 5 (citing Huang ,r 7)). The standard the
2 Separately, we note Matsunuma explains that "soldering can simply be
performed" and "is effective owing to its high productivity and ensures the
reliable fixation of a connector body." Matsunuma 1 :29--33.
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Application 14/252,884
Examiner must meet is that the rejection must articulate some "reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). However, the
reasoning need not appear in, or be expressly described by one or more of
the references on which the Examiner relies. Instead, a reason to combine
teachings from the prior art "may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved." WMS
Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)). "Under the
correct [obviousness] analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR, 550 U.S.
at 420.
Here, Appellant has not effectively challenged the Examiner's finding
that it would have been obvious "to include Huang's teachings into
Matsunuma' s teachings for the benefit of providing a way to prevent the
shielding shell of the connector from deforming as the outer force applied
during plug/unplug process." Non-Final Act. 5 (citing Huang ,r 7). On the
facts before us, the Examiner has articulated sufficient "reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F .3d at 988.
Accordingly, Appellant does not persuade us of Examiner error in the
rejection of claim 1 under 35 U.S.C. § 103, and we sustain its rejection. In
doing so, as consistent with the foregoing discussion, we adopt as our own
the findings and reasons of the Examiner for the rejection of claim 1 and as
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Application 14/252,884
set forth in the Answer. We also, for the same reasons, sustain (a) the
rejection of claim 13, which Appellant argues together with claim 1 (see
App. Br. 5-7) and (b) the rejections of claims 3-12 and 15, for which
Appellant offers no substantive separate arguments (see App. Br. 7-8).
DECISION
We affirm the Examiner's 35 U.S.C. § 103 rejections of claims 1, 3-
13, and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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