Ex Parte 6,441,315 et al

Patent Trial and Appeal Board

Sep 26, 2014

90009843 (P.T.A.B. Sep. 26, 2014)

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.
90/009,843 11/01/2010 6,441,315 P71-RX 5675
50905 7590 09/26/2014
Ken Burraston/FormFactor
KIRTON & MCCONKIE
P.O. BOX 45120
SALT LAKE CITY, UT 84145-0120
EXAMINER
TARAE, CATHERINE MICHELLE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/26/2014 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 FORM FACTOR, INC.,
Patent Owner and Appellant.

________________

Appeal 2013-006428
Reexamination Control 90/009,843
Patent 6,441,315 B1
Technology Center 3900
________________

Before HOWARD B. BLAKENSHIP, KEVIN F. TURNER, and
TREVOR M. JEFFERON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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Patent 6,441,315 B1

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A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a Third-Party request for
ex partes reexamination filed by Ronald Yin on November 12, 2010. The
Patent Owner, Form Factor, Inc. (“Appellant”), the owner of the patent
under reexamination, appeals under 35 U.S.C. §§ 134(b) from a final
rejection of claims 1–7, 9–19, 21–28, 30–35, 46, 54–56, 60–63, and 77
1
of
U.S. Patent No. 6,441,315 B1
2
mailed on Dec. 08, 2011. Appellant relies on
its Appeal Brief filed May 7, 2012 (“App. Br.”) and its Reply Brief filed
Mar. 8, 2013 (“Reply Br.”).
An oral hearing was conducted on August 21, 2013. A transcript
(“Tr.”) of the hearing was made of record on January 16, 2014.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm-in-part.
Related Proceeding
Patent Owner informs us that this ex parte reexamination proceeding
is related to inter partes reexamination Control No. 95/000,583 (pertaining
to US Patent No. 6,825,422). App. Br. 1.
Requester informs us that this ex parte reexamination proceeding is
also related to infringement litigation involving US Patent Nos. 6,441,315,
6,825,422, 7,457,446, and 7,518,652, styled Form Factor, Inc. v. Micro–

1
Claims 8, 20, 29, 36, 47–53, 57–59, 64–76, and 78–86 were confirmed or
found patentable and claims 37–45 were not subject to reexamination. Ex
Parte Reexamination Advisory Action, mailed Mar. 15, 2012, at 3.
2
The patent involved in this reexamination appeal proceeding (the “’315
Patent”) issued to Eldridge et al. on August 27, 2002.
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Probe Incorporated and David Browne, D. N.C.. Case No. CV10–03095.
App. Br. 1.
The Invention of the ’315 Patent
The invention relates to the field of electrical interconnection
elements, specifically an apparatus and method to improve contact an
electrical terminal. ’315 Patent, Field of Invention, 2:26–28. The tip
structure of the invention has a blade oriented on the upper surface of the tip
structure such that the length of the blade is substantially parallel to the
direction of horizontal movement of the tip structure. ’315 Patent 2:29–35.
As the tip structure deflects across the terminal the blade slices through any
non-conductive layer(s) on the surface of the terminal and provides a reliable
electrical connection between the interconnection element and the terminal
of the electrical component. ’315 Patent 2:35–38.
Patent Owner notes that tip structures used in testing that wipe across
a terminal to penetrate nonconductive material were known in the art. App.
Br. 7. Indeed, Patent Owner notes that blade contact tips and pyramid
shaped contact tips were known in the art. Id. at 7–8. Patent Owner argues
that “the inventors' advancement was to orient the blade on the end of the
interconnect element so that the elongated cutting edge characteristic of a
blade runs ‘substantially parallel’ to the wiping motion of the blade across
the terminal of the electronic device.” Id. at 8.
Claims 1, 9, 21, 30, 46, and 77 are independent, where claims 46 and
77 are new claims. Independent claims 1, 9, 21, 30, 46, and 77 are
illustrative of the appealed subject matter and are reproduced below (App.
Br. 26–31, Clams App’x (emphases added)):
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l. An electrical apparatus, comprising:
at least one blade on an end of an interconnection
element, said blade having a given length and oriented on the
interconnection element such that said length runs substantially
parallel to a horizontal wiping motion of said blade relative to
an electrical terminal when the interconnection element is
placed in wiping contact with the electrical terminal.

9. A tip structure, comprising:
a foot having an upper and a lower surface; and,
at least one blade on said upper surface of said foot, said blade
having a given length and oriented on said foot such that said
length runs substantially parallel to a horizontal wiping motion
of said foot.

21. A tip structure, comprising:
a foot having an upper and a lower surface; and
at least one blade on said upper surface of said foot, said
blade having a given length and oriented on said foot such that
said length is within approximately ±45° of an axis parallel to a
horizontal wiping motion of said foot.

30. An electrical contact structure comprising:
a plurality of interconnection elements disposed in
relationship with one another;
a plurality of tip structures affixed to respective ones of
said interconnection elements, each of said tip structures further
comprising:
at least one blade on a contact point of a respective one
of said interconnection elements, said blade having a given
length and oriented on the respective one of said
interconnection elements such that said length runs
substantially parallel to a horizontal wiping motion of the
respective one of said interconnection elements when the
respective one of said interconnection elements deflects across
a terminal of an electrical component to make an electrical
contact.

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46. An electrical apparatus, comprising:
a substrate having a horizontal surface;
an interconnection element extending from the horizontal
surface of the substrate, the interconnection element being
elongated from a first end at the substrate to a second end
disposed away from the substrate;
a blade on the second end of the interconnection element,
the blade having a given length that is longer than any width of
the blade, the blade oriented on the second end of the
interconnection element such that the length runs within plus or
minus fifteen degrees of parallel to a horizontal wiping motion
of the blade across a surface of an electrical terminal in which
the blade slices into the electrical terminal,
wherein the horizontal wiping motion results from
flexing of the interconnection element in response to a force on
the blade when the blade on the second end of the
interconnection element is placed in wiping contact with the
electrical terminal.

77. An electrical contact structure comprising:
a substrate having a horizontal surface;
interconnection elements extending from the horizontal
surface of the substrate and disposed in relationship with one
another;
tip structures affixed to respective ones of said
interconnection elements, each of said tip structures further
comprising:
a blade on a contact point of a respective one of said
interconnection elements, said blade having a given length that
is longer than any width of the blade, the blade oriented on the
respective one of said interconnection elements such that said
length runs within plus or minus fifteen degrees of parallel to a
horizontal wiping motion of the blade on the respective one of
said interconnection elements when the blade of the respective
one of said interconnection elements deflects across and slices
into a terminal of an electrical component to make an electrical
contact,
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wherein the horizontal wiping motion results from
flexing of the respective one of the interconnection elements in
response to a force on the blade of the respective one of the
interconnection elements when the blade of the respective one
of the interconnection elements is placed in wiping contact with
the terminal.

The Prior Art
US 4,846,704 Ikeya Jul. 11, 1989
US 5,177,438 Littlebury Jan. 5, 1993
US 5,883,519 Kennedy Mar. 16, 1999
Larry Levy, WaferProbe
TM
System, presented in June 1997 at
Southwest Test Workshop (“Levy”).
Nicholas Sporck, A New Probe Card Technology Using Compliant
Microsprings, International Test Conference, November 1–6, 1997, pp. 527–
532 (“Sporck”).
Rejections
Claims 1–5, 9–16, 21–26, and 30–33 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Levy. Ans. 4–8.
Claims 1–4, 9–12, 14–16, 21–24, and 30–32 stand rejected under 35
U.S.C. § 102(a) as being anticipated by Sporck. Ans. 8–12.
Claims 1, 2, 4, 5, 7, 9–17, 19, 21–26, 28, 30–33, 35, 46, 54–56, 60–
63, and 77
3
stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Ikeya. Ans. 12–20.

3
Although the Examiner’s Answer includes claims 48–50, 53, 59, 79–80,
82, 83, 85, and 86 (Ans. 12), these claims were identified as allowed in the
Advisory Action mailed Mar. 15, 2012.
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Claims 6, 18, 27, and 34 stand rejected under 35 U.S.C. § 103(a) as
obvious over Levy and Littlebury. Ans. 21–22.
Claims 6, 18, 27, and 34 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ikeya and Littlebury. Ans. 22.

B. ANALYSIS
“Blade”
Issue: Did the Examiner err in applying an unreasonably broad
interpretation of “blade having a given length” as recited in claims 1, 9, 21,
30, 46, and 77?
With respect to claim 1, Patent Owner’s principal argument is that the
Examiner erred in applying an unreasonably broad claim interpretation for
the term “blade” as used in claim 1 and related claims. App. Br. 8–14.
Patent Owner specifically contends that there is “no question that the
specification uses ‘given length’ and ‘length of the blade’ to refer to the
characteristic elongated cutting edge of a blade.” App. Br. 9. Patent Owner
argues that this construction is consistent with the ordinary and customary
meaning of “length” as being “the measure of the greatest dimension of a
plane or solid figure.” Id. (citing Webster's Encyclopedic Unabridged
Dictionary Of The English Language, Random House Value Publishing, Inc.
(1996) at 1101).
Patent Owner argues that the broadest reasonable interpretation of
blade is not “any structure at the contact end of an interconnection element
or probe but is a structure with an elongated cutting edge that cuts or slices
through non-conductive material on a terminal.” App. Br. 12. Patent
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Owner argues “that the broadest reasonable interpretation of the term ‘blade’
consistent with the specification is ‘a structure with an elongated cutting
edge that cuts or slices through non-conductive material on a terminal.’”
Reply Br. 2.
We are not persuaded by the Patent Owner’s arguments that the
Examiner erred in construing blade having a given length. We agree with
the Examiner that an elongated cutting edge is not recited in claims 1, 9, 21,
and 30, which are anticipated by Levy and Sporck. See Ans. 24.
We are also not persuaded by Patent Owner’s arguments that the
Examiner’s construction of the claim term “blade” was unreasonably broad.
During argument, counsel for Patent Owner was asked multiple times
whether “blade” was a term of art. Tr. 13, 16, 19. Counsel for Patent
Owner answered repeatedly that “blade” was not a term of art. Tr. 13, 16
(“No, I don’t think [blade is] a term of art.”), 19 (“It’s not a term of art.
There’s not a special meaning for the word “blade” in the testing field.”).
Patent Owner is not asserting that there is a special meaning for the term.
Patent Owner’s arguments regarding the construction of the term
“blade” having a given length characterizes the structure of the blade by the
method of its use to slice. App. Br. 10; Tr. 13–14. The ’315 Patent
specification, however, refers to the orientation of the structure allowing the
blade to cut through the non–conductive layer on the terminal, and not the
structure of the blade as causing the penetration. ’315 Patent 4:63–67, 5:17–
20.
We also disagree with Patent Owner’s argument that the Examiner’s
construction ignores the shape of the blade. App. Br. 10. The ’315 Patent
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claims the blade of claim 1 has a truncated pyramid cross-sectional structure.
App. Br. 26 (claim 4); see also Id. at 26 (claims 5 and 7), 27 (claims 17 and
19), 28 (claim 28); 29 (claim 35). Thus, the pyramid is a shape that falls
within the metes and bounds of the blade of claim, 1and related claims.
Finally, Patent Owner’s construction and arguments are inconsistent
with the ’315 specification. Patent Owner claims that a “blade” has “an
elongated cutting edge that cuts or slices,” but also argues that a truncated
pyramid as disclosed in Sporck fails to disclose the “elongated” edge. App.
Br. 12–13. This is inconsistent with the’315 patent specification that
discloses truncated pyramids and pyramids as blades. App. Br. 23.
In sum, we disagree with Patent Owner’s contentions that the length
of blade is construed as a structure with an elongated cutting edge that cuts
or slices through non-conductive material on a terminal. Instead, we
determine that the structures identified by the Examiner in Sporck and Ikeya
are commensurate in scope with the use of “blade” disclosed in the ’315
Patent specification which claims and describes a “pyramid” and “truncated
pyramid” as embodiments of the claimed blade.

Independent Claims 1, 9, 21, and 30—Anticipation by Levy and Sporck
Issue: Did the Examiner err in finding the Levy and Sporck disclose
the “blade having a given length” or “blade” limitations of claim 1?
With respect to claims 1, 9, 21, and 30, to the extent the Patent
Owner’s arguments rely on their proposed construction of “blade,” which we
rejected above, we do not agree with Patent Owner’s proposed construction.
App. Br. 12–14.
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We also disagree with Patent Owner’s argument that under any
construction the pyramids disclosed in Sporck and Levy would not be
deemed a “blade” as recited in claim 1. App. Br. 12–14. Patent Owner has
not provided persuasive argument or evidence that the structure of truncated
pyramid disclosed in the ’315 specification (col. 12, ll. 61–67, col. 14, ll.
50–53) is distinct from the truncated pyramid disclosed in Sporck or Levy
(Sporck Fig. 3 (flat top pyramid); Levy at 16 (showing truncated pyramid)).
See App. Br. 12–14.
Patent Owner’s argument that the prior art references do not use the
term blade to describe a truncated pyramid are unavailing. There is no
ipsissimis verbis test for determining whether a reference discloses a claim
element, i.e., identity of terminology is not required. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990). In light of the specification and claims, we find
that ’315 Patent specification expressly includes truncated pyramids and
pyramid shapes as blades within claim 1 and related claims.
Based on the foregoing, we find that the Examiner did not err in
determining that Levy and Sporck disclosed the blade limitations of claim 1.
Patent Owner does not make separate arguments for claims1–5, 9–16, 21–
26, and 30–33. Accordingly, we sustain the Examiner’s rejection of claims
1–4, 9–12, 14–16, 21–24, and 30–32 under 35 U.S.C. § 102(b) as being
anticipated by Ikeya; and claims 1–5, 9–16, 21–26, and 30–33 under 35
U.S.C. § 102(b) as being anticipated by Levy.

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Independent Claims 1, 9, 21, 30, 46, and 77—Anticipation by Ikeya
Issue: Did the Examiner err in finding that Ikeya discloses or teaches
“a blade oriented such that its length is substantially parallel to… the wiping
motion?” App. Br. 16.
Patent Owner contends that Ikeya fails to disclose a blade oriented
such that its length is substantially parallel of a wiping motion. App. Br. 16.
Patent Owner contends that Figure 2 of Ikeya shows the length of the blade
is 90 degrees from the motion P of the blade. Id.
The Examiner contends that the dotted lines of Figure 2 in Ikeya show
the blade moves with a motion that is parallel to the length of the blade.
Ans. 27–29. The Examiner asserts that one of ordinary skill in the art would
know that contact element 4 makes connection with the blades 9b when the
blades move parallel to the surface of the contact element as shown in Fig.
1b. Id. Thus, it is inherent that Ikeya discloses motion shown in Figure 2
that is substantially parallel to the length of blade 9b. Id.
With respect to the apparatus claims at issue, we find that the
Examiner has not provided sufficient evidence to support the conclusion that
the blades 9a and 9b in Ikeya are disclosed inherently such that the length of
the blade is substantially parallel to the wiping motion. See Ans. 28. The
Examiner has not provided sufficient evidence that blades 9b, shown in
Figure 1B are oriented substantially parallel to the direction of its
movement. Ans. 28–29. Although Figure 2 of Ikeya shows some relative
movement in direction P, the Examiner has not provided sufficient evidence
that the blades of the blades 9b are necessarily oriented substantially parallel
to the motion of contact shown in Figure 2.
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Based on the foregoing, we find that Ikeya does not disclose “a blade
oriented such that its length is substantially parallel to… the wiping motion”
as recited in claim 1. Independent claims 9, 21, 30, 46, and 77 recite similar
limitations. Accordingly, we cannot sustain the Examiner’s rejection of
claims 1, 2, 4, 5, 7, 9–17, 19, 21–26, 28, 30–33, 35, 46, 54–56, 60–63, and
77 as anticipated by Ikeya.

Dependent Claims 6, 18, 27, and 34—Obvious over Levy and Littlebury
With respect to Levy and Littlebury, Patent Owner argues that
replacing the truncated pyramid tip structure in Levy with Littlebury’s tip
structure is not a simple substitution of equivalent parts. App. Br. 24.
Patent Owner also argues that the size differences and use of the tip would
yield unsatisfactory results in such a substitution. App. Br. 23; Reply Br. 6.
The Examiner replies it would have been obvious to one of ordinary
skill in the art at the time of the invention to substitute the blade disclosed by
Littlebury, which contemplates a variety of shapes for its tip structure
(Littlebury 3:11–13, 3:29–30, 4:39–40), for the blade disclosed in Levy as
the equivalence of these blades was known and such substitution would have
yielded predictable results. Ans. 30.
We disagree with Patent Owner’s arguments regarding the
combination of Levy and Littlebury. App. Br. 23; Reply Br. 6. A
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements. In re Etter, 756
F.2d 852, 859 (Fed. Cir. 1985) (en banc); In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
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be physically combinable to render obvious the invention under review.”);
see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . .”).
In the present case, Patent Owner has admitted that various tip
structures were known in the art. App. Br. 7–8. In addition, the Examiner
has provided reasoning with a rational underpinning in support of the
combination of Levy and Littlebury. Ans. 30. Patent Owner has not
persuaded us that combining the tip structure teachings of Littlebury with the
structures in Levy is beyond the level of ordinary skill in the art. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007) (stating that a person
with ordinary skill in the art is “a person of ordinary creativity, not an
automaton,” and “in many cases . . . will be able to fit the teachings of
multiple patents together like pieces of a puzzle”).
For the above reasons, we find that the Examiner provided a
motivation to combine the tip structures disclosed in Littlebury and Levy.
Thus, we sustain the Examiner’s rejection of claims 6, 18, 27, and 34 under
35 U.S.C. § 103(a) as obvious over Levy and Littlebury.

Dependent Claims 6, 18, 27, and 34—Obvious over Ikeya and Littlebury
Based on the foregoing, we found above that Ikeya fails to teach or
suggest the limitations of independent claims 1, 9, 21, and 30 from which
claims 6, 18, 27, and 34 depend. Accordingly, we cannot sustain the
Examiner’s rejection of claims 6, 18, 27, and 34 under 35 U.S.C. § 103(a) as
obvious over Ikeya and Littlebury.
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C. CONCLUSIONS
For the reasons provided above, the Examiner did not err in rejecting:
(a) claims 1–5, 9–16, 21–26, and 30–33 under 35 U.S.C. § 102(b) as
being anticipated by Levy; and
(b) claims 1–4, 9–12, 14–16, 21–24, and 30–32 under 35 U.S.C.
§ 102(a) as being anticipated by Sporck;
(c) claims 6, 18, 27, and 34 under 35 U.S.C. § 103(a) as obvious over
Ikeya and Littlebury.
The Examiner erred in rejecting:
(a) claims 1, 2, 4, 5, 7, 9–17, 19, 21–26, 28, 30–33, 35, 46, 54–56, 60–
63, and 77 under 35 U.S.C. § 102(b) as being anticipated by Ikeya; and
(b) claims 6, 18, 27, and 34 under 35 U.S.C. § 103(a) as obvious over
Levy and Littlebury.

D. DECISION
The Examiner’s decision rejecting claims 1–6, 9–16, 18, 21–27, and
30–34 is affirmed.
The Examiner’s decision rejecting claims 7, 17, 19, 28, 35, 46, 54–56,
60–63, and 77 is reversed.

AFFIRMED-IN-PART

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alw

Patent Owner:

Ken Burraston/FormFactor
KIRTON & McCONKIE
P.O. Box 45120
Salt Lake City, UT 84145-0120