Ex Parte 6,441,315 et alDownload PDFPatent Trial and Appeal BoardSep 26, 201490009843 (P.T.A.B. Sep. 26, 2014) Copy Citation 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 Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 2 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 3 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)): Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 4 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 5 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, Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 6 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 7 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 Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 8 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 Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 9 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 10 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 11 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 12 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 Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 13 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. Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 14 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 Appeal 2013-006428 Reexamination Control 90/009,843 Patent 6,441,315 B1 15 alw Patent Owner: Ken Burraston/FormFactor KIRTON & McCONKIE P.O. Box 45120 Salt Lake City, UT 84145-0120 Copy with citationCopy as parenthetical citation