Ex Parte Schaefer

Patent Trial and Appeal Board

Nov 30, 2018

14652182 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/652,182 06/15/2015
34044 7590 12/04/2018
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Rainer Schaefer
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.
022862-213 7-usoo 9777
EXAMINER
SAWYER, STEVEN T
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER SCHAEFER
Appeal2018-002204
Application 14/652, 182 1
Technology Center 2800
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-14. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a contact arrangement
for a multi-layer circuit carrier suitable for high current applications. Spec.
1 Appellant is the Applicant, Robert Bosch GmbH, which according to the
Appeal Brief, is also the real party in interest. Appeal Br. 2.
2 In this Decision, we refer to the Final Office Action dated December 27,
2016 ("Final Act."), the Appeal Brief filed August 30, 2017 ("Appeal Br."),
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Application 14/652, 182
,r 1. Claim 1, reproduced below with emphasis added to certain key
recitations and formatting added for readability, is illustrative of the claimed
subject matter:
1. A contact arrangement for a multi-layer circuit carrier (la,
lb, le, Id),
wherein the circuit carrier (la, lb, le, Id) comprises at
least one inner-lying wire (2) that is contacted by way of at least
one cut-out (10),
characterized in that at least two cutouts (10) are spaced
apart on different sides of the at least one inner-lying wire (2),
wherein at least one of the cut-outs (10) receives a contact
element (22),
wherein center axes (12) of the at least two cut-outs (10)
comprise a predetermined spacing (as) with respect to a desired
center line (2.4) of the at least one inner-lying wire (2),
wherein the at least two cut-outs (10) expose the at least
one inner-lying wire (2) to enable contact with at least two
contact regions (2.1) that are arranged on different sides of the
wire (2),
whereby, the contact element is connected to the wire in
an electrically conductive manner.
Appeal Br. 12 (Claims App'x.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Rostek et al.
("Rostek")
Lassen
us 4,109,296
us 4,500,389
Aug. 22, 1978
Feb. 19, 1985
the Examiner's Answer dated October 26, 2017 ("Ans."), and the Reply
Brief filed December 26, 2017 ("Reply Br.").
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Application 14/652, 182
Saka et al.
("Saka")
Watanabe et al.
("Watanabe")
Schmid et al.
("Schmid")
US 5,934,929 Aug. 10, 1999
US 2005/0130463 Al June 16, 2005
US 2007 /0232096 Al Oct. 4, 2007
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-5, 7, 8, 11, and 13 under 35 U.S.C. § 103 as
unpatentable over Schmid in view of Lassen. Final Act. 2.
Rejection 2. Claim 6 under 35 U.S.C. § 103 as unpatentable over
Schmid in view of Lassen and further in view of Rostek. Id. at 7.
Rejection 3. Claims 8 and 9 under 35 U.S.C. § 103 as unpatentable
over Schmid in view of Lassen and further in view of Saka. Id. at 8.
Rejection 4. Claims 12 and 14 under 35 U.S.C. § 103 as unpatentable
over Schmid in view of Lassen and further in view of Watanabe. Id. at 9.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
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Application 14/652, 182
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
The Examiner finds that Schmid teaches a contact arrangement for a
circuit carrier. Final Act. 2. The Examiner relies on Schmid's embodiment
at Figure 1 (id.), reproduced below.
Schmid' s Figure 1 is a plan view of a circuit board on which a conductor
path is present as taught by Schmid. Schmid ,r 12.
The Examiner finds that structure 22 of Figure 1 corresponds to the
claimed wire. Final Act. 2. We note that Schmid does not refer to any
aspect of Figure 1 as being a wire but instead refers to structure 22 as
"conductor path 22." Schmid ,r 18.
The Examiner also finds that Schmid teaches cutouts (24 and 32)
spaced apart on different sides of conductor path 22 to enable contact with
contact regions. Final Act. 2-3. The Examiner finds that Schmid does not
teach that conductor path 22 is "inner-lying" as recited by claim 1. Id. at 3.
The Examiner finds, however, that Lassen teaches an inner-lying wire. Id.
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Application 14/652, 182
The Examiner determines that it would have been obvious to modify Schmid
to make its conductor path inner-lying "because placing the wire within the
circuit carrier will prevent damage (e.g., electrical shorting) from the
environment, such as moisture and/or dust build-up on the exterior of the
circuit carrier." Id.
Appellant argues that Schmid does not teach a wire and that one of
ordinary skill in the art would understand that Schmid's "simple metal path"
22 is not a wire. Appeal Br. 9. The Examiner responds by stating that "wire
is broadly defined as 'a flexible metallic conductor, esp one made of
copper."' Ans. 3 ( citing dictionary.com). Appellant argues that the
Examiner's proposed definition is extraordinary broad and is not a "broadest
reasonable interpretation" of the term wire. Reply Br. 2.
During prosecution, an application's claims are given their broadest
reasonable scope consistent with the specification. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as the claim would have been
interpreted by one of ordinary skill in the art at the time of the invention. Id.
Here, "wire," in view of the patent claims and the Specification, must
be a conducting wire that is an inner-lying part of a multi-layer circuit
carrier. Appellant's Specification further indicates that the wire has a thread
or rod-like shape. For example, Figure 1 of Appellant's Specification,
reproduced below, depicts an inner-lying wire 2. Spec. ,r 26.
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Fig.1
See also Spec. Figures 2-5 (depicting inner-lying wires 2 having wire center
lines 2.4), ,r,r 27-31 (explaining figures).
The most applicable dictionary definitions for "wire" are consistent
with the Specification in that they require that a wire be in the shape of a
thread, rod, or filament. For example, Merriam Webster's Collegiate
Dictionary, 11th Edition (predating the priority date of the instant patent
application) defines wire as "1 a : metal in the form of a usu. very flexible
thread or slender rod b : a thread or rod of such material ... 5 a : a line of
wire for conducting electric current- compare CORD .... " Merriam-
Webster's Collegiate Dictionary 1436 (Merriam-Webster, Inc., 1 ith ed.
2007). This dictionary does not provide any definition of wire as broad as
the definition cited by the Examiner. Ans. 3.
The Examiner cites a definition of wire from dictionary.com as
supporting a wire as being "a flexible metallic conductor, esp one made of
copper." Ans. 3. The Examiner did not, however, attach any evidence of
the contents of dictionary.com at the time he reviewed it and did not indicate
the date of his dictionary.com lookup. We thus consider dictionary.com as it
now exists. At present, dictionary.com defines wire as, for example:
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1. A slender, stringlike piece or filament of relatively rigid or flexible
metal, usually circular in section, manufactured in a great variety
of diameters and metals depending on its application.
2. Such pieces as a material.
3. A length of such material, consisting either of a single filament or
of several filaments woven or twisted together and usually
insulated with a dielectric material, used as a conductor of
electricity.
wire, dictionary.com, https://www.dictionary.com/browse/wire (last visited
November 28, 2018). None of dictionary.corn's American definitions of
wire are as broad as the Examiner's definition.
Dictionary.com also provides "British Dictionary definitions for wire"
as follows:
1. a slender flexible strand or rod of metal
2. a cable consisting of several metal strands twisted together
3. a flexible metallic conductor, esp one made of copper, usually i
nsulated, and used to carry electric current in a circuit
Id. ( emphasis added). It thus appears that the Examiner's proposed
definition of "wire" (Ans. 3) is derived from dictionary.corn's third British
Dictionary definition.
Because both the Specification and the most applicable dictionary
definitions of wire (most applicable in view of the context of the claims and
the Specification) indicate that a wire requires a thread/rod/filament shape,
we agree with Appellant that the Examiner's proposed construction is
unreasonably broad. Reply Br. 2. Under the broadest reasonable
construction, conductor path 22 of Schmid is not a wire. Because the
Examiner relies on no other structure from any prior art as teaching claim
1 's recited wire, we do not sustain the Examiner's rejection of claim 1 and
do not sustain the Examiner's rejections of claim 1 's dependent claims.
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DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-14.
REVERSED
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