Ex Parte Andric et al

Patent Trial and Appeal BoardNov 20, 2012

11560481 (P.T.A.B. Nov. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANTHONY ANDRIC, DAVID L. WIGTON, and PAUL DEVRIENDT ____________________ Appeal 2010-004440 Application 11/560,481 Technology Center 2800 ____________________ Before ALLEN R. MacDONALD, BRYAN F. MOORE, and TREVOR JEFFERSON, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004440 Application 11/560,481 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-9, 11-13, 15-18, 28-34, and 36-40. Claims 10, 14, 19-27 and 35, were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 1 Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. An apparatus, comprising: a stack including a heat sink and a semiconductor chip coupled to a package substrate and having a conductive heat transfer pathway to the heat sink; and a voltage regulator member coupled to the heat sink but not being positioned in the stack and including at least one pin to contact the package substrate and electrically couple to the semiconductor chip. Rejections on Appeal The Examiner rejected claims 1-2, 6, 8, 11, 15, 17, 28-29, 33, 36, and 39 under 35 U.S.C. § 102(b) as being anticipated by Smith (US 5,694,297). The Examiner rejected claims 1-2, 6-9, 11, 15-18, 28-29, 33, 34, 36, 39, and 40 under 35 U.S.C. § 103(a) as being unpatentable over Smith. The Examiner rejected claims 5 and 32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Smith and Swart (US 5,416,428). 1 We do not address the rejections of cancelled claims 10 and 35. (Ans. 7, ll. 18-20). Appeal 2010-004440 Application 11/560,481 3 The Examiner rejected claims 1, 3-4, 6, 8, 28, 30-31, and 33 under 35 U.S.C. § 103(a) as being unpatentable over Hartke (US 6,845,013 B2). 2 The Examiner rejected claims 1, 3-4, 6, 8, 28, 30-31, and 33 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hartke and Shi (US 6,862,184 B2). 3 Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under § 102(b) and § 103(a) using Smith because “Examiner’s construction of the term ‘contact’ is inconsistent with Appellants’ usage thereof.” (App. Br. 15). 2. Appellant also contends that the Examiner erred in rejecting claim 1 under § 103(a) over Hartke because: The element 114 is not strictly described as a package substrate, but rather as an interposer board. Although not cited by the Examiner, Appellants acknowledge that Hartke et al. does disclose a package substrate 152 for a microprocessor 156. Even though the Examiner did not consider the applicability of the disclosed package substrate 152, Appellants take this opportunity to comment. Assuming for the sake of argument that the Examiner had noted the disclosed package substrate 152, would the obviousness rejection have been proper. Again, Appellants concede that pins have been used in electronics for some time. The pertinent question is whether it would have been obvious at the time of the invention to have modified the Hartke et al. device to use a voltage regulator with a pin to contact the 2 Separate patentability is not argued for claims 3-4, 6, 8, 28, 30-31, and 33. Therefore, we treat claim 1 as representative for purposes of this rejection. 3 We do not reach this rejection as we affirm the § 103 rejection based on Hartke alone. Appeal 2010-004440 Application 11/560,481 4 package substrate 152. Appellants submit that it would not have been. (App. Br. 20)(footnotes omitted). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ above contention 1. However, we disagree with Appellants’ above contention 2. As to above contention 1, the Appellants correctly point out that the Examiner has misconstrued claim 1. At page 13 of the Answer, the Examiner relies on a definition to show a broad meaning for the term “contact.” We find that the term “contact” is used in claim 1 as a verb, and that the definition cited by the Examiner is for the noun form of the term. Further, “contact” in the noun form cited by the Examiner is typically used for relationships between people. Unlike terms such as “coupled” or “connection” which may be direct or indirect, we agree with Appellants that the broadest reasonable interpretation of the term “contact” in the claim before us requires “touching.” As to above contention 2, we note figures 10 and 11 cited by the Examiner. The gist of Appellants’ arguments are that (A) an artisan would not recognize Appellants’ single substrate and Hartke’s substrate/interposer combination as being equivalent, and (B) it would not be routine in the art to replace a connection such as 1008 in Hartke with a pin. We disagree. We find nothing in Appellants’ claim that precludes use of a substrate/interposer (a two part substrate such as in Hartke) as the claimed substrate. The Examiner correctly pointed out that pins “have been notoriously known at the time of the invention for connecting electronic components.” (Ans. 8). Appeal 2010-004440 Application 11/560,481 5 Appellants do not dispute this finding. Rather, Appellants’ argument concedes this point. We agree with the Examiner that “it would have been obvious to a person of the ordinary skill in the relevant art at the time of the invention to use pins instead of the plug-in arrangements shown on Fig. 8-11 of Hartke.” (Ans. 8). We concur with the conclusion reached by the Examiner. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1-2, 6, 8, 11, 15, 17, 28-29, 33, 36, and 39 as being unpatentable under 35 U.S.C. § 102(b) as being anticipated by Smith. (2) Appellants have established that the Examiner erred in rejecting claims 1-2, 5-9, 11, 15-18, 28-29, 32-34, 36, 39, and 40 as being unpatentable under 35 U.S.C. § 103(a) over Smith alone or in combination. (3) The Examiner did not err in rejecting claims 1, 3-4, 6, 8, 28, 30-31, and 33 under 35 U.S.C. § 103(a) as being unpatentable over Hartke. DECISION The Examiner’s rejection of claims 2, 5, 7, 9, 11-13, 15-18, 29, 32, 34, and 36-40 is reversed. The Examiner’s rejection of claims 1, 3-4, 6, 8, 28, 30-31, and 33 is affirmed. Appeal 2010-004440 Application 11/560,481 6 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). AFFIRMED-IN-PART msc