11050942 (B.P.A.I. Oct. 26, 2009)

Ex Parte Saitoh

Board of Patent Appeals and InterferencesOct 26, 2009

11050942 (B.P.A.I. Oct. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YASUSHI SAITOH ____________ Appeal 2009-003180 Application 11/050,942 Technology Center 2800 ____________ Decided: October 26, 2009 ____________ Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-9. An oral hearing was conducted September 15, 2009. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2009-003180 Application 11/050,942 2 STATEMENT OF THE CASE Appellant’s claimed invention is a press-fit terminal plated with tin to a deposit thickness necessary to inhibit scraping and thereby improving the reliability of a connection with an electrically-conductive through-hole in a board (Spec. 2:2-11). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A press-fit terminal adapted to be press-fitted in a through- hole of a board for electrically conducting with the press-fit terminal, comprising: a terminal-base portion; and a board inserting portion at least partially plated with tin, wherein a thickness of the plated tin is from 0.1 to 0.8 µm to inhibit scraping of the tin on the board inserting portion. REFERENCES Sugawara US 5,849,424 Dec. 15, 1998 Fister US 5,916,695 Jun. 29, 1999 Nagafuji US 5,944,563 Aug. 31, 1999 Suzuki US 2003/0186597 A1 Oct. 2, 2003 The Examiner rejected claims 1-3, 8, and 9 under 35 U.S.C. § 103(a) based upon the teachings of Nagafuji, Fister, and Suzuki. The Examiner rejected claims 4-7 under 35 U.S.C. § 103(a) based upon the teachings of Nagafuji, Fister, Suzuki, and Sugawara. Appeal 2009-003180 Application 11/050,942 3 Appellant contends the Examiner provides no motivation for combining the cited references except that the end result of Appellant’s invention, preventing scraping of tin plating, would result from such combination (App. Br.12; Reply Br. 4). Appellant further contends none of the references recognizes the problem that the thickness of the tin coating on a connector causes scraping of the plating when inserted into an inserting portion (App. Br. 14) and that an ordinarily skilled artisan would not be motivated to combine the references (App. Br. 14, Reply Br. 4). ISSUE Has Appellant established the Examiner erred in finding that Nagafuji in combination with Fister, Suzuki, and Sugawara suggests inhibiting scraping of tin on a board inserting portion of a press-fit terminal? FINDINGS OF FACT 1. Appellant’s invention is directed to a press-fit terminal 1 for press-fitting into a through-hole 2a of a board 2. The terminal includes a base portion 1a and a board inserting portion 1b that is at least partially plated with tin 1g. The thickness of the plated tin is from 0.1 to 0.8 microns. This thickness inhibits the scraping of tin on the board inserting portion. (Spec. 2:3-18; Fig. 1A; cl. 1) 2. Nagafuji teaches a press-in terminal 1 including a base portion 5 and a board inserting portion 2 at least partially plated with tin (Fig. 5; col. 5, ll. 4-10). Appeal 2009-003180 Application 11/050,942 4 3. Fister teaches a tin coated electrical connector. The tin coating layer 14 is from 0.5 microns to 10 microns, preferably from 0.75 microns to 1.5 microns (Col. 3. ll. 47-49; Fig. 1). 4. Suzuki teaches a connector terminal (¶ [0002]). Suzuki also teaches that scraping occurs in sliding portions of the terminal when inserting a male terminal into a female terminal (¶ [0011]). 5. Suzuki teaches an Sn layer 7 formed on the male terminal is less than 0.3 microns and preferably becomes zero (¶ [0045]). 6. Appellant acknowledges the cited references teach the thickness of the tin layer (Transcript 4, l. 20-5, l. 5). PRINCIPLES OF LAW The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is met, then the burden shifts to the Appellants to overcome the prima facie case with argument and/or evidence. See Id. An improvement in the art is obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR 550 U.S. at 416. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the Appeal 2009-003180 Application 11/050,942 5 same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417. ANALYSIS The Examiner finds Nagafuji discloses all the features of claims 1-9 except for the thickness of the tin being from 0.1 to 0.8 microns (Ans. 4). The Examiner then finds Fister teaches that range of thickness, and that Suzuki teaches inhibiting scraping (Ans. 6).1 The Examiner states it would have been obvious to a skilled artisan to “provide adequate thickness of plating to the terminal to … inhibit scraping of the tin on the board inserting portion” (Ans. 4). Appellant addresses the Examiner’s rejection with respect to claim 1 (App. Br. 10-11, 15; Reply 1, 5). Appellant contends that the Examiner is incorrect in combining Suzuki and Fister because they teach away from each other (App. Br. 13; Reply 4). Appellant further contends that Suzuki does not teach or suggest the problem to be solved by Appellant’s claimed invention (App. Br. 14). Appellant does not contradict the Examiner’s findings with respect to the references, but rather asserts the Examiner provides no motivation to support the combination of the references and “only indicates the alleged end result from the combination” (App. Br. 11; Reply Br. 4). Appellant does, however, acknowledge that the cited references teach the claimed thickness of the tin layer (FF 6). Appellant merely states that the references 1 The Examiner clarifies that “Nagafuji et al. discloses recited thickness” (Ans. 6). However, this appears to be a harmless typographical error as Nagafuji does not recite thicknesses of the Sn layer; Fister does (Ans. 4). Appeal 2009-003180 Application 11/050,942 6 do not teach that the claimed thickness inhibits scraping and that the references teach away from each other (App. Br. 14). Appellant asserts that none of the references teaches the motivation of having a tin plated board inserting terminal of a press-fit terminal where the thickness of the tin is from 0.1-0.8 micrometers to inhibit scraping (see App. Br. 12-14). Suzuki teaches it is known that scraping occurs when two terminals slide together in the process of inserting a male terminal into a female terminal (FF 4) and that there is a trade-off between hardness and scraping (¶ [0011]). Suzuki also teaches that the thickness of the Sn layer is less than 0.3 microns and preferably zero (FF 5). Since Appellant does not contest the references teach the claimed range of tin, the Examiner correctly finds that the disclosed “advantage of thin Sn plating is automatically achieved” (Ans. 7). Because Suzuki teaches it is known that scraping occurs (FF 4), providing an optimal range of the tin plating to inhibit scraping is something that an ordinarily skilled artisan could achieve without undue experimentation given the known range of tin plated on press-fit terminals. That is, knowing that scraping occurs and that the tin plating must be within a particular range, optimizing that range would be obvious and determined without undue experimentation. The selection of the particular thickness is merely an obvious optimization of a result- effective variable previously known in the art. This selection is the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421. Appellant provides no additional arguments with respect to claims 2-9 and merely asserts they are allowable for their dependence on claim 1 plus the additional features they recite (App. Br. 15). Therefore, claim 1 and Appeal 2009-003180 Application 11/050,942 7 claims 2-9, which depend therefrom, are obvious over the collective teachings of Nagafuji, Fister, Suzuki, and Sugawara. CONCLUSION Appellant has not established the Examiner erred in finding Nagafuji in combination with Fister, Suzuki, and Sugawara suggests Appellant’s claimed invention under 35 U.S.C.§ 103. DECISION The Examiner’s decision rejecting claims 1-9 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)(1)(iv). AFFIRMED KIS OLIFF & BERRIDGE, P.L.C. P. O. BOX 320850 ALEXANDRIA, VA 22320-4850