Ex Parte Moser et al

Patent Trial and Appeal Board

Aug 4, 2016

12736961 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121736,961 02/23/2011
24972 7590 08/08/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Manfred Moser
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.
BOSC.P6376US/l 1602933 6114
EXAMINER
SAWYER, STEVEN T
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANFRED MOSER, MARK WONNER,
and ROLAND CUP AL
Appeal2015-001958
Application 12/736,961
Technology Center 2800
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
MONTE T. SQUIRE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 11-13 and 15-19. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a control device and a method for assembling it.
Claim 11 is illustrative:
11. A control device for passenger protection means for a
vehicle, comprising:
at least one circuit board for accommodating electric
components;
Appeal2015-001958
Application 12/736,961
a plastic lid and a plastic floor, wherein the at least one
circuit board is disposed between the plastic lid and the plastic
floor; and
at most three connecting units providing: (a) connection
of the plastic lid, the plastic floor and the at least one circuit
board to each other; and (b) a force-locking connection to the
vehicle body,
wherein at least one of the at most three connection units
is a metallic screw, and wherein the circuit board is directly and
electrically connected to the vehicle body via the at least one of
the at most three connection units.
Crockett
Estieule
Skofljanec
The References
us 5,550,712
US 2001/0004559 Al
US 6,741,476 B2
The Rejections
Aug. 27, 1996
June 21, 2001
May 25, 2004
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 11, 12, 15 and 16 over Skofljanec in view of Estieule and claims 13
and 17-19 over Skofljanec in viev,r of Estieule and Crockett.
OPINION
We affirm the rejections.
The Appellants argue the claims as a group (App. Br. 3--4). Although
an additional reference is applied in the rejection of claims 13 and 17-19,
the Appellants do not separately argue those claims (id.). We therefore limit
our discussion to one claim, i.e., claim 11. Claims 12, 13 and 15-19 stand or
fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Skofljanec discloses "a housing for use in a vehicle to accommodate a
printed circuit board carrying electronic components" (col. 1, 11. 9-11 ). The
housing comprises a plastic base plate ( 40) and a generally parallelpipedal
plastic hood (10) having at three or four of its comers a mounting
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Appeal2015-001958
Application 12/736,961
flange ( 16) into which a metallic mounting bushing (26) is molded or
inserted (col. 2, 11. 30-35, 44--46, 55-56; col. 3, 11. 8-10, 14--15; Figs. 4a---c).
Each metallic mounting bushing (26) extends through an opening (48) in the
plastic base plate ( 40) such that a printed circuit board (20) having comer
openings ( 44) each pressed around a metallic mounting bushing (26) is
electrically connected to the vehicle (col. 1, 11. 45--46, 51-54; col. 2, 1. 55 -
col. 3, 1. 4; Figs. 2, 3). The housing is mounted on the vehicle by inserting a
fastening screw (110) through a through hole in each metallic mounting
bushing (26) (col. 1, 11. 59---63; col. 3, 11. 19-22; col. 4, 11. 5-15; Fig. 3).
Estieule discloses "electronic equipment for use in the railroad art for
controlling electrical power machines" (i-f 2). The equipment includes a
printed circuit (1) which is supported by an electrically conductive
chassis (20) via an insulative spacer (21) (i-f 19). The printed circuit (1) is
electrically connected by pins (13, 14) to a nut (12) into which a bolt (22)
extending through the insulative spacer (21) can be screwed to electrically
connect the printed circuit (1) to the chassis (20) (i-f 21; Fig. 2). Removal of
the bolt (22) electrically isolates the printed circuit (1) from the chassis (20),
thereby enabling the printed circuit ( 1) to be tested independently of ground
to the chassis (20) (i-f 12).
"The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks - the so-
called 'primafacie case' .... The 'primafacie case' serves as a procedural
mechanism that shifts the burden of going forward to the applicant, who
must produce evidence and/or argument rebutting the case of
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Appeal2015-001958
Application 12/736,961
unpatentability." A'xparteFrye, 94USPQ.2d1072, 1075(BPA12010)
(precedential).
The Examiner's basis for the rejection is that one of ordinary skill in
the art would have made Skofljanec's fastener (110) metallic and used it to
directly and electrically connect the printed circuit board (20) to the vehicle
because Estieule uses a metallic bolt (22) to electrically connect a printed
circuit ( 1) to a vehicle (chassis 20) (Ans. 2-3) and "Estieule states that if the
PCB is not grounded to the chassis, 'fluctuating potential differences
between the electronic circuit and the chassis connected to ground can cause
high breakdown voltages. The high voltages can cause breakdowns in the
integrated circuit of the electronic equipment' [paragraph 0005]" (Final
Act. 4).
That portion of Estieule discloses:
[I]n the railroad art the chassis concerned is electrically
connected to a boiler of a railroad vehicle, for example a
locomotive, \'l1hich is also connected electrically to the rails on
which the train travels. The rails are in tum connected to the
ground on which they are laid by grounding terminals which
are provided from place to place, via railroad ties which are
generally insulative and poor conductors, being made of wood
or concrete. If such precautions are not taken fluctuating
potential differences between the electronic circuit and the
chassis connected to ground can cause high breakdown
voltages. The high voltages can cause breakdowns in the
integrated circuits of the electronic equipment, for example, or
of the insulation.
The Appellants assert that "the metallic screw of Estieule does not
establish a connection of the plastic lid, the plastic floor and the at least one
circuit board to each other, nor a force-locking connection of the control
device to the vehicle body" (App. Br. 3).
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Appeal2015-001958
Application 12/736,961
That argument is deficient in that the Appellants are attacking Estieule
individually when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754,
757-58 (CCPA 1968). The Examiner relies upon Skofljanec for a disclosure
of three connecting units providing connection of a plastic lid, a plastic floor
and at least one printed circuit board to each other, and a force-locking
connection to a vehicle body (Final Act. 2-3).
The Appellants assert that "[ w ]ere one of ordinary skill in the art to
apply [Estieule's] teaching to Skofljanec, what would result would be nut 12
ofEstieule being joined to screw 110 of Skofljanec, with nut 12 further
being electrically connected to a track on the circuit board 20 of Skofljanec
via beads 18" (App. Br. 4), and "a person skilled in the art looking for a
reference in the prior art providing a solution for the difference to the
Skofljanec reference would not consider the Estieule et al. reference, since
the bolt there does not provide a long lasting connection" (Reply Br. 2).
Those assertions are based upon the references being bodily
combined, and "[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.. . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."). The rejection is based upon modifying Skofljanec, in view of
Estieule, such that Skofljanec's fastener (110) is metallic and directly and
electrically connects the printed circuit board (20) to the vehicle (Final
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Application 12/736,961
Act. 2--4 ). The Appellants have not indicated reversible error in that basis
for a conclusion of prima facie obviousness of the Appellants' claimed
invention. Accordingly, we affirm the rejection.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 11, 12, 15 and 16 over
Skofljanec in view ofEstieule and claims 13 and 17-19 over Skofljanec in
view of Estieule and Crockett are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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