Ex Parte Olesiewicz et al

Patent Trial and Appeal BoardOct 23, 2012

12043259 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TIMOTHY W. OLESIEWICZ, DAVID W. HARTWELL, and BRETT C. ONG ____________ Appeal 2010-004356 Application 12/043,259 Technology Center 2800 ____________ Before CAROLYN D. THOMAS, THU A. DANG, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004356 Application 12/043,259 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-17, 21, and 22 (App. Br. 4). Claims 18-20 were cancelled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Exemplary Claim 1 follows: 1. A mezzanine board alignment and mounting device comprising: a multi-stage pin connected to a main board near a mezzanine board connector disposed on the main board; the multistage pin comprising: a base adapted to connect to the main board; a point distal to the base adapted to pass through an opening on a mezzanine board; and a support with a flat upper surface disposed between the base and the point, wherein a diameter of the point widens towards the support, wherein a diameter of the support is wider than a diameter of the opening and acts as a positive stop to the passing of the multistage pin through the opening, and wherein when the joint is fully inserted through the opening in the mezzanine board, the mezzanine board is aligned properly to connect with the mezzanine board connector on the main board and the mezzanine board rests on the flat upper surface of the support. Appeal 2010-004356 Application 12/043,259 3 Claims 1, 2, 4-6, 8-16, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Crowley (U.S. 5,963,432) and Noschese (U.S. 5,575,686) (Ans. 3-9). Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Crowley in view of Noschese and Fathauer (U.S. Pat. Pub. 2008/0089044 A1) (Ans. 9-10). Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Crowley in view of Noschese and Stucke (U.S. 5,335,146) (Ans. 10-11). Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Crowley in view of Noschese and Meserth (U.S. Pat. Pub. 2007/0014085) (Ans. 11). ISSUE Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner err in finding that Crowley teaches or suggests a support with a flat upper surface disposed between the base and the point of a multi-stage pin, in which the support acts as a positive stop to the passing of the multistage pin through an opening of a mezzanine board, as required by independent claim 1? ANALYSIS The Examiner found that item 220 in the apparatus of FIG. 5 of Crowley renders obvious the support recited in claim 1 (Ans. 4). Although the Examiner acknowledged that item 220 does not have a flat upper surface, Appeal 2010-004356 Application 12/043,259 4 the Examiner nonetheless “pointed out the upper surface of 210 having a flat surface, so the mounting surface of 220 could modified [sic] to a flat surface” (id. at 12). Appellants argue that “there exists no reasonable support for the Examiner’s proposed modification, as the Examiner is indiscriminately selecting separate and distinct features from the opposite ends of the standoff pin 200 in Crowley and modifying so as to depart from their described function” (App. Br. 14). We agree with Appellants. "Having determined what subject matter is being claimed, the next inquiry is whether the subject matter would have been obvious." Ex Parte Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004). "A factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning." KSR Int'l v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). In other words, "[i]t is impermissible to use the claimed invention as an instruction manual or 'template' to piece together the teachings of the prior art so that the claimed invention is rendered obvious." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Consequently, "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re Lee, 277 F.3d 1338, 1343-46 (Fed. Cir. 2002); In re Rouffet, 149 F.3d 1350, 1355-59 (Fed. Cir. 1998)). Here, we find that the Examiner has merely used the claimed invention as an instruction manual to make the modifications, as the Examiner has not provided a rational explanation as to why one of ordinary skill in the art would have made the upper surface of item 210 flat so that it Appeal 2010-004356 Application 12/043,259 5 could act as a positive stop (see Ans. 4-5 and 11-13). Accordingly, we find error in the Examiner’s obviousness rejection of claim 1 as well as the claims dependent therefrom (i.e., claims 2-17, 21 and 22) because the Examiner did not find that any other reference teaches the claim limitation that is missing from Crowley (see Ans. 4-13). DECISION We reverse the Examiner’s decision rejecting claims 1-17, 21, and 22 as obvious. REVERSED tkl