Ex parte TARZWELL

Board of Patent Appeals and Interferences

Mar 13, 1998

08084623 (B.P.A.I. Mar. 13, 1998)

Application for patent filed July 1, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PATRICK J. TARZWELL

_____________
Appeal No. 95-2623
Application 08/084,6231
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2623
Application 08/084,623
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1-7 and 9-26,
which constitute all the claims remaining in the application.
The examiner has indicated that claims 1-21 are now allowed
[answer, page 1]. We construe this to mean that claims 1-7
and 9-21 are now allowed since claim 8 has been cancelled.
Accordingly, this appeal is now directed only to claims 22-26.

The disclosed invention pertains to a resilient
electrical connector for use as a measuring probe with
integrated circuits. Specifically, the probe has a barrel
with an electrically conductive plunger therein. A helical
spring within the barrel is connected at one end to the barrel
and at the other end to the plunger. The remaining claims on
appeal are directed to the helical spring portion of the
disclosed invention.
Representative claim 22 is reproduced as follows:
22. A spring for a resilient connector having an
outside diameter of less than 0.01 inches, said spring
comprising:
a tube having a predetermined length between a first
end and a second end and having a helical cut along a
predetermined portion of said length;
Appeal No. 95-2623
Application 08/084,623
3
wherein said helical cut has a predetermined width and
a predetermined number of turns and wherein the spacing of
said turns and said width are in a predetermined ratio.
The examiner relies on the following references:
Kahn et al. (Kahn) 3,179,087 Apr. 20, 1965
Latorre et al. (Latorre) 4,826,143 May 02, 1989
Kazama 5,004,977 Apr. 02, 1991
Claims 22-26 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Kazama and Kahn
with respect to claim 22, and adds Latorre with respect to
claims 23-26.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner's
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner's answer.
Appeal No. 95-2623
Application 08/084,623
4
It is our view, after consideration of the record
before us, that the collective evidence relied upon and the
level of skill in the particular art would have suggested to
one of ordinary skill in the art the obviousness of the
invention as set forth in claims 22-26. Accordingly, we
affirm.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
With respect to independent claim 22, it is the
position of the examiner that the collective teachings of
Appeal No. 95-2623
Application 08/084,623
5
Kazama and Kahn teach everything in claim 22 except for the
diameter of the spring being less than 0.01 inches. The
examiner asserts that absent criticality, the dimensions of a
spring are an obvious design choice [answer, page 3].
Therefore, the examiner concludes that the spring of claim 22
would have been obvious to the artisan in view of the applied
references.
Appellant argues that it would not have been obvious
to substitute the Kahn tubular spring for the helical wire
spring of Kazama because the patents are from non-analogous
arts, and the Kazama patent does not discuss the problems in
the probe art which could be solved by a tubular spring
[brief, page 4]. Our first observation is that claim 22
simply recites a spring, and has nothing to do with the probe
art or the problems associated with the probe art. Thus,
appellant’s arguments are not commensurate in scope with the
claimed invention. For a claim having the breadth of claim
22, we are of the view that any teaching of a spring is in an
analogous art to the claimed invention.
Appellant argues that the helical spring of Kahn is
molded and not cut as required by the claims [brief, page 6].
Appeal No. 95-2623
Application 08/084,623
6
Claim 22 is an article claim in which the spring is recited as
having a helical cut. In our view, this recitation describes
a physical property of the spring and not the manner in which
the spring is manufactured. There is no evidence on this
record that the plastic helical spring of Kahn would have any
different properties from a cut helical spring. The artisan
would expect that two identically appearing springs would be
exactly the same regardless of the method of manufacture.
Therefore, we agree with the examiner that appellant has not
demonstrated that a spring having a helical cut is any
different from an identical helical spring which has been
molded.
Appellant argues that “[t]he Examiner’s rejection is
based upon the premise that a person shall not be entitled to
a patent unless criticality is shown” and this is “contrary to
statute” [brief, page 7]. As we noted above, the burden is
initially on the examiner to establish a prima facie case of
obviousness. If that burden is met, obviousness is determined
on the relative persuasiveness of all the arguments and the
evidence.
Appeal No. 95-2623
Application 08/084,623
7
We note that the springs of Kazama and Kahn are very
similar in appearance. Both springs use a “helical cut” in
the middle with the ends being less resilient. In Kahn the
ends are part of a tube whereas in Kajama the ends are tightly
wound around a tube. The effect is basically the same. Thus,
the artisan would have appreciated that a spring, as broadly
recited in claim 22, has applications as diverse as a spring
for a writing instrument and a spring for a contact probe.
Although the spring in Kahn is clearly much larger than 0.01
inches, the spring in Kajama is within the same order of
magnitude as the claimed spring. Since the prior art
evidences that a spring having a helical cut has a wide
variety of uses, we agree with the examiner that the artisan
would select the size of the spring based upon the environment
in which it will be used. In other words, the record in this
case supports the examiner’s position as being reasonable and
establishing a prima facie case of obviousness for a spring as
broadly recited in claim 22. Thus, even though appellant is
correct that he is not initially required to show criticality
of the dimensions, the burden of going forward has been
shifted in this case, and appellant must present a persuasive
Appeal No. 95-2623
Application 08/084,623
8
argument or evidence that the examiner has erred. Appellant
has not presented any evidence or arguments as to why the
examiner’s prima facie case should not be persuasive with
respect to the invention as recited in claim 22.
Appellant argues that it is not obvious to simply make
a spring smaller because “simply making a spring smaller will
not produce a spring having the appropriate characteristics,
e.g. stiffness, for a probe” [brief, page 8]. As we noted
above, however, claim 22 recites nothing about a probe so that
the spring of claim 22 is not required to meet any
“appropriate characteristics.” The only question is whether a
spring of the claimed size would have been obvious to the
artisan, and we agree with the examiner that it would have
been prima facie obvious to make a helical spring of the size
recited in claim 22. In summary, we agree
with the examiner that the invention as broadly recited in
claim 22 would have been obvious to the artisan in view of the
applied references and the prima facie case of obviousness
established by the examiner. Since appellant has not
persuaded us of error in the examiner’s position, we sustain
the rejection of claim 22.
Appeal No. 95-2623
Application 08/084,623
9
Dependent claims 23-26 recite that the spring is
metal, glass, quartz and plastic, respectively. The examiner
notes that Kahn teaches a spring made from plastic. The
examiner asserts that Latorre would have suggested to the
artisan that the spring of Kahn could be made from any of the
claimed materials as a matter of obvious design choice absent
a showing of criticality [answer, page 3]. Appellant argues
that Latorre does not relate to the art of testing
semiconductor devices, however, as we noted above, the
relevant art for these claims is the art of springs in
general. Thus, all arts which teach springs are available for
consideration by the artisan.
Appellant also again argues the question of
criticality as discussed above. For purposes of considering
the obviousness of the invention as recited in claims 23-26,
we again agree with the examiner that a prima facie case of
obviousness has been established. Kahn teaches a plastic
helical spring and also discusses the fact that metal springs
were used in the prior art. Latorre specifically teaches a
quartz spring. A spring, by definition, is simply an elastic
device which has the property of regaining its original shape
Appeal No. 95-2623
Application 08/084,623
10
after being compressed or extended. The artisan would have
recognized that any elastic material can be used as a spring
under certain circumstances. The artisan would also be
familiar with the fact that glass is a known elastic material.
Thus, since the artisan would know that metal, glass, quartz
and plastic are all elastic materials and, therefore, would
have broad application as springs, the invention as broadly
recited in claims 23-26 would have been obvious to the artisan
for reasons noted by the examiner.
Since the examiner has established a prima facie case
of the obviousness of claims 23-26, and since appellant has
presented no evidence or arguments which demonstrate error in
the examiner’s position, we sustain the rejection of claims
23-26.
In conclusion, we have sustained both of the
examiner’s rejections of claims 22-26. Accordingly, the
decision of the examiner rejecting claims 22-26 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 95-2623
Application 08/084,623
11
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
Paul F. Wille
Cahill, Sutton & Thomas
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