Cook Medical Technologies LLC

Patent Trials and Appeals BoardNov 24, 2021

2021000461 (P.T.A.B. Nov. 24, 2021)

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. 14/848,612 09/09/2015 Kenneth C. Kennedy II 10000-3272 (PA-7664-RFB) 7069 48003 7590 11/24/2021 Crowell/Cook - Chicago Crowell & Moring PO BOX 10395 CHICAGO, IL 60610 EXAMINER NASRI, MARYAM A ART UNIT PAPER NUMBER 2483 MAIL DATE DELIVERY MODE 11/24/2021 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 KENNETH C. KENNEDY II ________________ Appeal 2021-000461 Application 14/848,612 Technology Center 2400 ________________ Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1–4, 7, 9–13, and 16–20.2 We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was conducted on November 10, 2021. We will add a transcript to the record in due course. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Cook Medical Technologies LLC is the real party in interest. Appeal Br. 2. 2 Claims 5, 6, 8, 14, and 15 are cancelled. Appeal Br. 29–31. Appeal 2021-000461 Application 14/848,612 2 INVENTION The invention relates to circuit board connector electrically connected to an image sensor. Spec. ¶ 2. Claim 1 is illustrative of the invention and is reproduced below: 1. An imaging system comprising: an image sensor comprising: an outer package having an outer surface; and a plurality of solder balls configured as a two-dimensional ball grid array integrated with the outer surface; and only one circuit board that intersects the two-dimensional ball grid array with a side surface facing the outer surface of the image sensor, the only one circuit board comprising: only two planar surfaces comprising a first planar surface and a second planar surface facing in an opposite direction than the first planar surface, wherein the side surface extends to respective edges of the only two planar surfaces; and a plurality of electrical connections that , electrically connect a plurality of elongate conductive members of electrical cabling with the plurality of solder balls of the two-dimensional ball grid array, the plurality of electrical connections comprising: a plurality of first connection ends disposed on the first planar surface and the second planar surface, each first connection end disposed adjacent to, electrically connected to, and bonded to a respective one of the plurality of solder balls; and a plurality of second connection ends disposed on at least one of the first planar surface or the second planar surface, each second connection end electrically connected to a respective one of the plurality of elongate conductive members of the electrical cabling, wherein at least one of the first planar surface or the second planar surface forms an angle with the outer surface of the outer package that is greater than zero degrees and less than 180 degrees. Appeal 2021-000461 Application 14/848,612 3 Appeal Br. 28–29 (Claims Appendix) (emphases added). REJECTION The Examiner rejects claims 1–4, 7, 9–13, and 16–20 under 35 U.S.C. § 103 as being unpatentable over the combination of Takamura (US 4,831,456; issued May 16, 1989) and Sauer (US 2013/0242099 A1; published Sept. 19, 2013). Final Act. 4–11. ANALYSIS The Examiner finds Takamura teaches board 34 connects to boards 54 and 56, which the Examiner maps to the limitation “[a] circuit board that intersects the two-dimensional ball grid array with a side surface facing the outer surface of the image sensor, the [] circuit board comprising: only two planar surfaces comprising a first planar surface and a second planar surface facing in an opposite direction than the first planar surface, wherein the side surface extends to respective edges of the only two planar surfaces” recited in claim 1. Ans. 4 (citing Takamura, Figs. 2, 4, 8, 13); Final Act. 5 (citing Takamura, Figs. 2, 4, 8, 13). Moreover, the Examiner finds Sauer teaches a circuit board with two planar surfaces, which the Examiner maps to the limitation “only one circuit board comprising only two planar surfaces” recited in claim 1. Ans. 5 (citing Sauer ¶ 146); Final Act. 6 (citing Sauer ¶ 146). The Examiner finds that a person having ordinary skill in the art at the time the invention was made (hereinafter “PHOSITA”) would combine Takamura and Sauer to provide an enhanced electrical connection between terminals of a connector of a camera. Ans. 5 (citing Sauer ¶ 5); Final Act. 7 (citing Sauer ¶ 5). Appellant argues because of the shortcomings of Takamura and Sauer Appeal 2021-000461 Application 14/848,612 4 individually, the combination of Takamura and Sauer would dispose contacts that connect to an image sensor on only one planar surface of the circuit board. Appeal Br. 18–21; Reply Br. 2–4. Appellant also argues that Takamura and Sauer combination would not merely replace Takamura’s two-board configuration with one circuit board.3 Appeal Br. 22–25; Reply Br. 3–4. Appellant further argues the Examiner relies on impermissible hindsight to combine Takamura and Sauer. Appeal Br. 25. Appellant additionally argues that Takamura and Sauer teach away from their combination. Id. at 25–26; Reply Br. 6–8. We disagree with Appellant. Appellant’s first two arguments are unpersuasive because they amount to bodily incorporation arguments. Appeal Br. 18–25; Reply Br. 2–5. We note the test for obviousness is what the combined teachings of the references would have suggested to a person of ordinary skill in the art, not whether one reference may be bodily incorporated into the structure of another reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, Takamura describes board 34 (i.e., circuit board) connects (i.e., intersects) to boards 54 (i.e., first planar surface) and 56 (i.e., second planar surface), which we find teaches or suggests the claim limitation “[a] circuit board that intersects the two-dimensional ball grid array with a side surface facing the outer surface of the image sensor, the [] circuit board comprising: only two planar surfaces comprising a first planar surface and a second planar surface facing in an opposite direction than the first planar 3 During the Oral Hearing, Appellant admitted that the “design choice” argument from the demonstratives was part of this argument. See Tr. We, therefore, need not address Appellant’s “design choice” argument separately. We address Appellant’s argument below. Appeal 2021-000461 Application 14/848,612 5 surface, wherein the side surface extends to respective edges of the only two planar surfaces” recited in claim 1. See Ans. 4 (citing Takamura, Figs. 2, 4, 8, 13); Final Act. 5 (citing Takamura, Figs. 2, 4, 8, 13). Also, Sauer describes a circuit board (i.e., only one circuit board) with two planar surfaces, which teaches the limitation “only one circuit board comprising only two planar surfaces” recited in claim 1. See also Ans. 5 (citing Sauer ¶ 146); Final Act. 6 (citing Sauer ¶ 146). We agree with the Examiner’s finding that a PHOSITA would combine Takamura and Sauer to provide an enhanced electrical connection between terminals of a connector of a camera. Ans. 5 (citing Sauer ¶ 5); Final Act. 7 (citing Sauer ¶ 5). We, therefore, find the Examiner has set forth sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellant’s improper hindsight argument is unavailing. Appeal Br. 25. Appellant has not provided persuasive evidence that combining the respective teachings of the references (as determined by the Examiner — Ans. 5 (citing Sauer ¶ 5); Final Act. 7 (citing Sauer ¶ 5)) would have been “uniquely challenging or difficult for one of ordinary skill in the art,” or that such a combination would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant provided any objective indicia of non- obviousness, which, as our reviewing court explains, “operate[] as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Appeal 2021-000461 Application 14/848,612 6 Nor are we swayed by Appellant’s “teaching away” argument. Appeal Br. 25–26; Reply Br. 6–8. The Federal Circuit has held that “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In this case, Takamura’s two circuit boards incorporating Sauer’s one circuit board with components on both sides of Sauer’s circuit board reduces the amount of circuit boards. See, e.g., 97, 340, 377, 407 (cited at Ans. 5, 13–14; Final Act. 5). Appellant does not point convincingly to any portion of Takamura that would “criticize, discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at 1201. We, therefore, determine that Takamura does not teach away because it does not lead an artisan in a divergent direction from the claimed invention. Appellant does not argue claims 2–4, 7, 9–13, 16–20 separately with particularity. Appeal Br. 12–27. Accordingly, we sustain the Examiner’s rejection of: (1) independent claim 1; and (2) dependent claims 2–4, 7, 9– 13, 16–20 under 35 U.S.C. § 103. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000461 Application 14/848,612 7 CONCLUSION 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7, 9– 13, 16–20 103 Takamura, Sauer 1–4, 7, 9– 13, 16–20