Ex Parte Pettersen et al

Patent Trial and Appeal Board

Dec 30, 2015

12975530 (P.T.A.B. Dec. 30, 2015)

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.
12/975,530 12/22/2010 Eric E. Pettersen XRPS920100104US1 5685
127893 7590 12/30/2015
Streets & Steele - Lenovo (Singapore) Pte. Ltd.
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
EXAMINER
SATANOVSKY, ALEXANDER
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
12/30/2015 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 ERIC E. PETTERSEN, LUKE D. REMIS,
WILLIAM B. SCHWARTZ, and TIMOTHY M. WIWEL
____________

Appeal 2014-001779
Application 12/975,5301
Technology Center 2800
____________

Before MAHSHID D. SAADAT, TERRENCE W. MCMILLIN, and
MATTHEW J. MCNEILL, Administrative Patent Judges.

MCMILLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–16 which are all the pending claims. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 3.
2 Our Decision refers to the Final Office Action mailed May 24, 2013 (“Final
Act.”); Appellants’ Appeal Brief filed August 22, 2013 (“App. Br.”); the
Examiner’s Answer mailed October 3, 2013 (“Ans.”); Appellants’ Reply
Brief filed November 11, 2013 (“Reply Br.”); and the Specification filed
December 22, 2010 (“Spec.”).
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Application 12/975,530

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REJECTIONS ON APPEAL
Claims 1–3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bandholz et al. (US 7,507,102 B1, issued Mar. 24, 2009)
(“Bandholz”) and Clark (US 6,940,412 B2, issued Sept. 6, 2005) (“Clark”).
Final Act. 2.
Claims 4–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bandholz, Clark, and Li et al. (US 2008/0205286 A1,
published Aug. 28, 2008) (“Li”). Final Act. 5.
Claims 10–16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bandholz, Clark, Li, and Wang (US 2011/0313817 A1,
published Dec. 22, 2011) (“Wang”). Final Act. 9.

THE INVENTION
According to the Appellants, “[t]he present invention relates to
installation and removal of a central processing unit with respect to a land
grid array socket on a circuit board.” Spec. ¶ 1. Independent claim 1 is
directed to a land grid array socket, independent claim 6 is directed to a
method, and independent claim 12 is directed to a computer program
product. App. Br. 19–21. Claim 1 recites:
1. A land grid array socket comprising:
a plurality of upwardly-extending pins to engage
corresponding pads on an underside of a processor; and

a first electrical contact and a second electrical contact
adjacent the plurality of pins and coupled to a supervisory
controller to engage a conductor on an insertion tool;

wherein the supervisory controller detects engagement of the
first and second electrical contacts with the conductor of the
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Application 12/975,530

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insertion tool in response to use of the insertion tool to connect
the processor to the land grid array socket.

App. Br. 19.

ANALYSIS
We have reviewed the rejections of claims 1–16 in light of
Appellants’ arguments presented in the Appeal Brief and Reply Brief that
the Examiner erred in rejecting all the pending claims as unpatentable under
35 U.S.C. § 103(a). We are not persuaded. We agree with and adopt the
Examiner’s findings, reasoning, and conclusions as set forth in the Final
Office Action (Final Act. 2–19) and the Examiner’s Answer (Ans. 4–7). We
highlight the following for emphasis.

Claims 1–3
Claim 1 is rejected as obvious based on a combination of the
teachings of Bandholz and Clark. Final Act. 2. Appellants argue Bandholz
fails to teach or suggest electrical contacts as recited in claim 1. App. Br.
11–12. This argument is misdirected. The Examiner relied on Clark to
teach the electrical contacts as recited in claim 1. Ans. 4; Final Act. 3. This
argument is non-responsive to the rejection made by the Examiner and not
persuasive of error.
Appellants argue Clark’s fastener is not an insertion tool. App. Br.
12. This argument fails to address the Examiner’s finding that Bandholz
teaches an insertion tool. Ans. 5; Final Act. 3. This argument is not
persuasive of error.
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Appellants argue that there is no motivation to combine Bandholz and
Clark. Reply Br. 5; App. Br. 12. In accordance with KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), in both the Final Office Action and
the Answer, the Examiner provides articulated reasoning with rational
underpinnings for combining the teachings of the cited references which
teach all the limitations of claim 1. Final Act. 4; Ans. 5. The obviousness
conclusion is well-supported and reasonable. We are not persuaded of error
by this argument.
Appellants argue dependent claims 2 and 3 are patentable for the same
reasons argued for claim 1. We disagree for the reasons stated above with
regard to claim 1.
In addition, with regard to claim 3, Appellants also argue the
Examiner’s logic in combining the teachings of Bandholz and Clark was
improper. App. Br. 13–14. Claim 3 recites, “one or more alignment
structures comprises at least one of the first and second electrical contacts of
the land grid array socket.” App. Br. 19. In the Final Office Action, the
Examiner states,
[a]t the time of the invention, it would have been also obvious
to a person of ordinary skill in the art to modify Bandholz in
view of Clark to utilize alignment structures comprising one or
more electrical contacts to combine the capabilities of both
features (mechanical alignment and electrical contact) in one
structure . . . .
Final Act. 5. In the Answer, in response to Appellants’ argument, the
Examiner further explains the motivation to combine and states:
The Examiner submits that the motivation to combine the
references, as presented in the Final Office Action (p. 4), is
based on the described advantages of combining electrical
alignment features of Clark with mechanical alignment features
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of Bandholz, in one structure. To be able to combine such
structures, when clearly appropriate as in this case, is itself a
beneficial advantage in terms of efficiency, ease of
manufacture, and ease of use, so [as] to be able [to] combine the
capabilities in this manner is a motivation for doing so in itself.
Ans. 5–6. We agree with the Examiner’s articulated reasoning and the
conclusion of obviousness based on the Examiner’s reasoning. We are not
persuaded of error in the rejection of claim 3.
For these reasons, we sustain the rejection of claims 1–3.

Claim 4
Appellants present no arguments in support of the patentability of
claim 4 in either the Appeal Brief or the Reply Brief. See, generally, App.
Br. 11–17; Reply Br. 4–7. For this reason, we summarily sustain the
rejection of claim 4.

Claim 5
Appellants argue dependent claim 5 is patentable because the
combination of references, “fails to identify any disclosure or suggestion in
the references of a tool having a chip storing an identification code.” App.
Br. 15. Claim 5 recites “the baseboard management controller reads an
identification code stored on the chip.” App. Br. 19. The Examiner cites
paragraph 8 of Li. Final Act. 7; Ans. 7. Li is entitled, “TEST SYSTEM
USING LOCAL LOOP TO ESTABLISH CONNECTION TO
BASEBOARD MANAGEMENT CONTROL AND METHOD
THEREFOR.” Paragraph 8 of Li states, “[t]he functions of the test include
obtaining a client/password of the BMC [(baseboard management
controller)], getting a device ID, performing a data write test, performing a
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data read test, or delivering/receiving a test data.” Emphasis added. The
cited references do not explicitly disclose storing the identification code on a
chip on an insertion tool. However, the Examiner contends that this is
inherent in Li in order for proper functioning of the BMC and that, at any
rate, such a feature is known in the art. Final Act. 18–19. To show this
feature is known in the art, the Examiner cites Japanese Patent Application
JP 2004-066417 which teaches a code chip attached to a tool and storing a
tool ID. Id. at 19. We are not persuaded of Examiner error and sustain the
rejection of claim 5.

Claims 6–16
Appellants present no separate arguments in support of the
patentability of claims 6–16. App. Br. 15–17. We sustain the rejections of
claims 6–16 for the reasons stated above.

DECISION
The rejections of claims 1–16 are 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)(1)(iv).

AFFIRMED

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