Ex Parte Porta et al

Patent Trial and Appeal Board

Nov 30, 2016

13478465 (P.T.A.B. Nov. 30, 2016)

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.
13/478,465 05/23/2012 DAVID SALA PORTA 82974771 2186
22879
HP Tnr
7590 12/02/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
NGUYEN, HOA CAO
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
12/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SALA PORTA, DAVID SORIANO FOSAS, and
JUAN LUIS LOPEZ RODRIGUEZ
Appeal 2015-005813
Application 13/478,465
Technology Center 2800
Before TERRY J. OWENS, JEFFREY W. ABRAHAM, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s final rejection of claims 1—17.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
April 24, 2014 (“Final Act.”), the Appeal Brief dated September 22, 2014
(“App. Br.”), the Advisory Action dated March 25, 2015 (“Adv. Act.”), the
Examiner’s Answer to the Appeal Brief dated March 25, 2015 (“Ans.”), and
the Appellants’ Reply Brief dated May 20, 2015 (“Reply Br.”).
2 Appellants identify the Hewlett-Packard Development Company, LP as the
Real Party in Interest. App. Br. 1.
Appeal 2015-005813
Application 13/478,465
The Claimed Invention
Appellants’ disclosure relates to a printed circuit board comprising at
least one microstrip transmission line that, according to Appellants, is said to
have improved protection against electromagnetic radiation. Abstract; Spec.
2,11. 2-4. Claim 1 is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Claims
App’x i) (key disputed limitations italicized):
1. A printed circuit board comprising:
at least one microstrip transmission line, said microstrip
transmission line comprising a conductive solid reference plane
and a first signal transmission conductive trace embedded in a
dielectric substrate; and
at least one conductive shielding layer having a lattice
structure, wherein the first signal transmission conductive trace
is arranged between the solid reference plane and the shielding
layer, without presence of another signal transmission
conductive trace in a layer between the shielding layer and the
first signal transmission conductive trace, and without presence
of another signal transmission conductive trace in a layer
between the solid reference plane and the first signal
transmission conductive trace.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Suski US 5,675,299 Oct. 7, 1997
Lin et al., US 2001/0010270 Al Aug. 2, 2001
(hereinafter
Cugalj et al.,
“Lin”)
US 6,646,197 B1 Nov. 11,2003
(hereinafter “Cugalj”)
Arnold US 2006/0272857 Al Dec. 7, 2006
Chang et al., US 2010/0282504 Al Nov. 11,2010
(hereinafter “Chang”)
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Appeal 2015-005813
Application 13/478,465
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—5, 12, 16, and 17 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Suski first and second
embodiments. Final Act. 2; Ans. 2.
2. Claims 6, 7, 13, and 14 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Suski first and second
embodiments and further in view of Lin. Final Act. 5; Ans. 2.
3. Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Suski first and second embodiments and further
in view of Cugalj. Final Act. 6.3
4. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Suski first and second embodiments and further in view of
Chang. Final Act. 7; Ans. 2.
5. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Suski first and second embodiments and further in view of
Arnold. Final Act. 7; Ans. 2.
6. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Suski first and second embodiments, further in view of
Lin as detailed in claim rejections 1 and 7, and in further view of Arnold.
Final Act. 8; Ans. 2.
3 This rejection appears to have been inadvertently omitted from the list of
rejections as stated on page 2 of the Answer. But see Final Act. 6, 7 (setting
forth the Examiner’s rejection of claims 9 and 10 under pre-AIA
35 U.S.C. § 103(a) based on the combination of Suski and Cugalj); Ans. 2
(stating that “[ejvery ground of rejection set forth in the [Final] Office action
. . . from which the appeal is taken is being maintained”).
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Appeal 2015-005813
Application 13/478,465
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Rejection 1
Appellants argue claims 1—5, 12, 16, and 17 as a group. We select
claim 1 as representative and the remaining claims stand or fall with claim 1.
37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that Suski suggests a printed circuit board
satisfying all of the limitations of claim 1 and concludes that the reference
would have rendered claim 1 obvious. Final Act. 2, 3. In particular, the
Examiner finds that Suski’s first embodiment teaches a printed circuit board
comprising at least one microstrip transmission line and that the disclosed
microstrip transmission line comprises a conductive reference plane. Id. at
2, 3 (citing Suski, Figs. 7, 8, col. 12,11. 22—37, col. 11,11. 3—10). The
Examiner finds further that Suski’s second embodiment discloses a solid
reference plane. Id. at 3 (citing Suski, Fig. 14, col. 15,11. 16—33).
Based on the above findings regarding Suski’s teachings, the
Examiner concludes that “it would have been prima facie obviousness to one
of ordinary skill in the art at the time the invention was made to make one of
the reference planes solid in order to give control of impedance of the signal
conductor.” Id. (citing Suski, col. 1,1. 62—col. 2,1. 7).
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Application 13/478,465
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because Suski does not teach or suggest a “microstrip transmission
line,” as required by the claim. App. Br. 5. In particular, Appellants argue
that the claimed “microstrip transmission line is . . . different from the
technology of [Suski’s] stripline transmission line” and “the Examiner erred
in asserting that Figs. 7 and 8 of Suski discloses the microstrip transmission
line of claim 1.” Id. at 5, 6. Appellants also argue that “a person of ordinary
skill in the art would have found no reason to combine [Suski’s]
embodiments to achieve the claimed subject matter.” Id. at 9.
We are not persuaded by Appellants’ arguments. On the record
before us, we find that a preponderance of the evidence and sound technical
reasoning support the Examiner’s conclusion and finding that Suski suggests
all of claim 1 ’s limitations, including the claimed transmission line as that
term is used in claim 1. Suski, Figs. 7, 8, 14, col. 1,1. 62—col. 2,1. 7, col. 12,
11. 22-37, col. 11,11. 3-10, col. 15,11. 16-33.
As the Examiner found (Final Act. 2, 3), Suski’s Figures 7, 8, and 14
suggest a transmission line having a structure that reads on claim 1. In
particular, Suski suggests a transmission line wherein the first signal
transmission conductive trace 160 is arranged between the solid reference
plane 418 and the shielding layer 120, without the presence of another signal
transmission conductive trace in a layer between the shielding layer and the
first signal transmission conductive trace, as claimed. Suski, Figs. 7, 8, 14,
col. 11,11. 3-10, 12,11. 22-37, col. 15,11. 3-10.
Moreover, we concur with the Examiner’s finding (Ans. 3) that
because claim 1 recites conductive layers, i.e., a “conductive solid reference
plane” and a “conductive shielding layer,” on both sides of a “conductive
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Application 13/478,465
trace embedded in a dielectric substrate,” it actually claims a stripline
transmission line. Id. (noting that a microstrip design with a conductive
shield on top, as claimed, “effectively creat[es] a stripline”). Appellants’
argument exposes no reversible error in the Examiner’s analysis and factual
findings in this regard.
Appellants’ mere labeling or characterization of part of the claimed
invention as comprising a “microstrip transmission line” does not
necessarily make the entire claimed invention a microstrip transmission line.
Moreover, although Appellants argue that their claimed “microstrip
transmission line is according to a technology that is different from the
technology of a stripline transmission line” (App. Br. 5), they do not direct
us to sufficient evidence or provide an adequate technical explanation to
rebut the Examiner’s contrary finding in this regard.
Appellants’ reliance on the Specification is misplaced. As the
Examiner points out (Ans. 3), the portions of the Specification that
Appellants rely on (App. Br. 5) actually support the Examiner’s analysis and
findings that Suski discloses a structure that reads on claim 1. In particular,
the Specification provides that:
it is known to employ transmission lines with microstrip
technology, i.e. comprising an asymmetric structure in which
a conductive trace is embedded in a dielectric substrate with a
conductive reference plane, such as a ground plane, arranged
on one side ... [as compared to] transmission lines with
stripline technology, which involve a symmetric structure in
which the conductive trace has conductive reference planes
on both sides: the two conductive planes can shield the
transmission line from radiation.
Spec. 1,11. 1—13. As the Examiner found (Ans. 3) and previously discussed
above, although claim 1 recites a “microstrip transmission line” as a
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Application 13/478,465
component of the invention, the claimed invention, in its entirety, is actually
directed to a stripline transmission line as described in the Specification, i.e.,
“a symmetric structure in which the conductive trace has conductive
reference planes on both sides.” Spec. 1,11. 10—13; see also claim 1; Spec.
2,1. 26—Spec. 3,1. 12, Figs. 1, 2a, 2b.
The portions of Suski that Appellants rely on (App. Br. 6, 7) are also
unpersuasive of reversible error. Contrary to what Appellants’ argument
suggests, the proper inquiry is not whether Suski “recognizes the difference
between a microstrip transmission line and a stripline transmission line”
(App. Br. 6). Rather, the proper inquiry is whether Suski would have
suggested to one of ordinary skill in the art a printed circuit board which
reads on claim 1. As previously discussed above, we concur with the
Examiner’s findings and conclusion in this regard. Moreover, Appellants do
not provide any persuasive reason why Suski’s Figures 7, 8, and 14 would
not have suggested the printed circuit board recited in claim 1.
Appellants’ arguments that the Examiner’s proposed modification of
Suski “would fundamentally change the principle of operation of the
structure” and that “a person of ordinary skill would not have found any
reason to combine the embodiment of Figs.7-8 of Suski with the
embodiment of Fig. 14 of Suski” (App. Br. 7) are equally unpersuasive
because Appellants do not identify sufficient evidence or provide an
adequate technical explanation to support them. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
On the contrary, as the Examiner found (Ans. 3, 4), the preponderance
of evidence suggests that combining the first and second embodiments of
Suski would not change the operation of the structure because changing the
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Application 13/478,465
lower lattice structure to a solid reference plane would not alter the
structure’s functionality and the signal conductors would still be able to
transmit signals. Suski, Figs. 7, 8, 14. As the Examiner also found (Ans. 4),
the overall structure taught by Suski’s Figures 7 and 8 would likewise be
unchanged based on Figure 14’s suggestion of a solid reference plane rather
than a lattice reference plane. Suski, Fig. 7, 8, 14.
Further, we find that the Examiner provides a reasonable basis and
identifies by a preponderance of the evidence why one of ordinary skill
would have had reason to modify Suski’s circuit board to arrive at
Appellants’ claimed invention. Final Act. 3 (explaining that one of ordinary
skill would have been motivated to make one of the reference planes solid in
order to give control of impedance of the signal conductor) (citing Suski,
col. 1,1. 62—col. 2,1. 7); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 420 (2007) (explaining that any need or problem known in the art can
provide a reason for combining the elements in the manner claimed).
Appellants’ disagreement with the Examiner’s reasoning in this regard,
without more, is insufficient to establish reversible error.
Accordingly, we affirm the Examiner’s rejection of claims 1—5, 12,
16, and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Suski.
Rejections 2, 3, 4, 5, and 6
In response to the Examiner’s Rejections 2 through 6, stated above,
Appellants argue that these rejections should be reversed for the same
reasons presented above in response to Rejection 1, stating that:
In view of the allowability of base claim 1 over Suski, the
obviousness rejection of dependent claims over Suski [and
the additional cited prior art] has been overcome.
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Application 13/478,465
App. Br. 10, 11.
We do not find Appellants’ argument persuasive for the same reasons
discussed above in affirming the Examiner’s Rejection 1.
Accordingly, we affirm the Examiner’s Rejections 2, 3, 4, 5, and 6
stated above.
DECISION/ORDER
The Examiner’s rejections of claims 1—17 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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