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09/15/2003 20:28 FAX 626 577 8800 



CHRISTIE PARKER 4 



121005 



Appln No. 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2003 

REMARKS / ARGUMENT S 

Executive summary 

The following remarks are responsive to the Office action 
mailed July 15, 2003. Applicants submit that the majority of the 
rejections made in the Office action are based upon a belief that 
the limitation "at least one electrical connection exists between 
the carbon containing layer and the electronic device" is not 
supported by the specification. Applicants strenuously urge that 
one of ordinary skill in the art would find clear support for 
this limitation in the discussion of the many embodiments of the 
claimed invention disclosed in the specification of the above 
referenced application. In addition, the prior art cited in the 
prosecution of the above referenced application does not teach 
this limitation or the inventive combinations of claims 56 - 71. 
Therefore, applicants submit that all claims should be allowed. 

Summary of Office action 

Claims 56 - 71 are currently pending in the above referenced 
application. In the Office action, the following rejections were 
made : 

• all claims were rejected under 35 U.S.C. §112 on the basis 
that "the specification does not describe an electronic 
device having an electrically connection between the carbon 
containing layer and the electronic device." 

• claim 70 was also rejected under 35 U.S.C. §112 on the basis 
that the recitations in the claim "related to 'circuit 
traces' and T a trace on the layer of electrically conductive 
material* were also not supported and described in the 
specification in such a way as to reasonably convey to one 
skilled in the relevant art that the inventor (s) , at the 



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CHRISTIE PARKER 4 



(23 006 



Appln No. 10 / 020 r 50 6 

Amdt date September 15 , 2003 

Proposed Reply to Office action of July 15, 2003 

time the application was filed, had possession of the 
claimed invention. D 

• claims 56-61, 64-68 and 71 were rejected under 35 U.S.C. 
§102 (e) as being anticipated by U.S. Patent 4,888,247 to 
Zweben et al. (the Zweben et al . patent); 

• claim 62 was rejected under 35 U.S.C. §103 (a) as being; 
obvious in light of the Zweben et al. patent; and 

• claim S3 was rejected under 35 U.S.C. §103 (a) as being 
unpatentable over Zweben et al . in view of U.S. Patent 
5,326,636 to Durand et al . 

Response to rejection under 35 U,S*C- §112. 

Applicants admit being surprised to learn of the 35 U.S.C 
§112 rejection in the Office action dated July 15, 2003. 
Applicants believe that the specification of the above referenced 
application explicitly teaches: 

A printed wiring board on which an electronic 

device is mounted, comprising: 

at least one carbon containing layer; and 
wherein at least one electrical connection 

exists between the carbon containing layer and the 

electronic device . 

Summary of 35 U.S.C, §112 support. 

The basis of Applicants' belief that the currently pending 
claims satisfy 35 U.S.C. §112 is based on the following teachings 
from the specification of the application (each teaching is 
addressed in detail below) : 

1. the specification explicitly teaches that electrical 
connections can exist between electronic devices and the 
functional layers of a printed circuit board; 



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09/15/2003 20:28 FAX 626 577 8800 



CHRISTIE PARKER 4 



d)007 



Appln No. 10/020,506 

Amdt date Septexiiber 15 , 2003 

Proposed Reply to Office action of July 15, 2003 

2 . the specification explicitly teaches printed wiring boards 
that include "at least one carbon containing layer"; 

3. the specification explicitly teaches that the "at least one 
carbon containing layer" in the printed wiring board acts as 
a functional layer within the printed circuit board; and 

4. the specification explicitly teaches that connections can be 
made with the "at least one carbon containing layer" using 
holes lined with electrically conductive material. 

Applicants submit that these teachings place one of ordinary 
skill in the art in possession of all elements of the claimed 
inventions. In particular, the teachings that electrical 
connections can exist between electronic devices and the 
functional layer of a printed wiring board, and the teaching that 
the "at least one carbon containing layer" can act as a 
functional layer, inform one of ordinary skill of the limitation 
that "at least one electrical connection exists between the 
carbon containing layer and the electronic device." 

Identification of specific teachings 

1. introduction to term usage by those of ordinary skill in 
the art 

Several terms that are readily understood by one of ordinary 
skill in the art such as "functional layer," "ground plane" and 
"power plane" are used in the specification of the above 
referenced application. Before discussing the teachings in the 
specification that use these terms, applicants will review the 
structures that these terms are used to describe by those of 
ordinary skill in the art. 

One of ordinary skill in the art appreciates that printed 
wiring boards typically comprise a number of electrically 
conductive layers that are separated by layers of a dielectric 



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09/15/2003 20:29 FAX 626 577 8800 



CHRISTIE PARKER 4 



@008 



Appln NO. 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2003 

material and would refer to the electrically conductive layers as 
the "functional layers" of the printed wiring board, because they 
perform the "functions" of the printed wiring board. One of 
ordinary skill in the art would also appreciate that the 
"functions" performed by a printed wiring board can include 
establishing electrical connections between electronic devices 
and providing power and reference signals to electronic devices. 
The "functional layers" can perform the function of 
providing a power or reference signal to an electronic device by- 
acting as a power or ground plane in the printed wiring board. 
One of ordinary skill in the art knows that a power plane is 
usually connected to a power supply and provides power to 
electronic devices via additional connections. The ground plane 
is typically connected to a reference voltage and uses 
connections to provide a stable reference voltage to electronic 
devices. We now consider the teachings of the specification in 
light of the understood usage of these terms. 

2. Electrical connections can exist between electronic 
devices and the functional layer of the printed circuit board 

Applicants submit that the specification of the above 
referenced application explicitly teaches the fact, which would 
be otherwise readily known to one of ordinary skill in the art, 
that electronic connections can exist between the functional 
layers of a printed wiring board and electronic devices. The 
very first line of the specification states that "Multiple-layer 
printed circuit boards or printed wiring boards (PWBs) are used 
for mounting integrated circuits (ICs) and other components" (Pg. 
1, Lines 17 - 18). In addition to this statement, two U.S. 
Patents incorporated by reference into the specification (Pg. 2 
Lines 13-14) disclose the mounting and connection of electronic! 
devices such as integrated circuits onto a printed wiring board. 



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09/15/2003 20:29 FAX 626 577 8800 CHRISTIE PARKER 4 @009 



Appln NO. 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2003 

Specifically, Figure 3 of U.S. Patent 4,318,954 to Jensen shows 
an electronic device connected to the functional layers of a 
printed wiring board and Figure 1 of U.S. Patent 4,591,659 to 
Leibowitz shows the connection of electronic devices mounted in 
chip carriers to circuits on the functional layers of a printed 
wiring board. 

3. Printed wiring boards that include "at least one carbon 

containing layer- 
Applicants submit that FIG. 1 of the above referenced 
application is just one of the many disclosed embodiments of the 
claimed inventions that include "at least one carbon containing 
layer" (Pg. 5, lines 17 - 21) . 

4» Carbon containing layers as functional layers 

Applicants submit that the laminate 12 illustrated in FIG. 1 
is one example in the specification of where a carbon containing 
layer, either alone or in combination with other layers that are 
electrically connected to the carbon containing layer, forms a 
ground or power plane or acts as both the ground and power plane 
in a printed wiring board. The specification teaches (Pg. 5 lines 
18 - 20 and Pg. 6, lines 7-9): 

The PWB 10 includes a laminate 12 comprising a 
carbon containing layer 14 sandwiched between a first 
layer of metal or other electrically conductive 
material 16 and a second layer of metal or other 
electrically conductive material IB. 



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09/15/2003 20:29 FAX 826 577 8800 



CHRISTIE PARKER 4 



@010 



Appln No, 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2003 

The laminate 12 is electrically conductive, which 
enables the laminate to be used as a ground plane 
within the PWB, a power plane within a PWB or both a 
ground and power plane in the PWB where routing is used 
to electrically isolate portions of the laminate. 

in addition, a printed wiring board is illustrated in FIG. 
10, which includes two laminates 12 0 and 122 that act as a power 
and a ground plane (Pg. 22, lines 9 - 22). The specification 
explicitly teaches that the two laminates can be constructed 
similarly to the laminate 12 in FIG. 1 (Pg. 22, lines 18 - 19). 

5. Electrical connections with the carbon containing layer 

Applicants submit that the specification expressly teaches 
that electrical connections can be made with the "at least one 
carbon containing layer-" As mentioned above, FIG. 10 
illustrates a printed wiring. board that includes two electrically 
conductive laminates constructed using layers containing carbon 
that act as functional layers within the printed wiring board. 
The specification teaches (Pg- 23, lines 8-10 and Pg- 25, lines 
5 - 6) : 

The PWB 10' ' 1 ' also includes through holes 130 
lined with electrically conductive material that are 
used to establish electrical connections between the 
functional layers in the PWB. Where connections 
between the plated through holes and the first or 
second laminates are not desired, then an annulus of 
dielectric material 132 such as an epoxy resin with a 
dielectric constant less than 6-0 at 1 MHz can be used 
to ensure that an electrical connection does not exist 



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09/15/2003 20:30 FAX 626 577 8800 



CHRISTIE PARKER 4 



©Oil 



Appln NO. 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2003 

between the laminate and the electrically conductive 
lining of the through hole. 



if a through hole does not pass through one of the 
filled clearance holes in a laminate, then the lining 
of the through hole is in electrical contact with the 
laminate . 

Applicants submit that the use of the laminates including a 
layer containing carbon as a functional layer in a printed wiring 
board and the teaching of at least one technique for establishing 
an electrical connection between the laminates and other 
functional layers in the printed wiring board is an express 
teaching to one of ordinary skill in the art that electrical 
connections can be made either directly with an electronic device 
(i.e. using a plated through hole extending through the carbon 
containing layer and connecting to an electronic device) or 
indirectly (i.e. using a plated through hole extending through 
the carbon containing layer to create an electrical connection 
between the carbon containing layer and a circuit on another 
functional layer of the printed wiring board that is in turn 
electrically connected to an electronic device in a known 
fashion) . 

Conclusion with respect to general 35 U.S.C S112 rejection 

For the foregoing reasons, the specification clearly teaches 
the connection of electronic devices to circuits in a printed 
wiring board and that layers containing carbon can form part of 
the circuits in the printed wiring board. Therefore, there is an 
express teaching that "at least one connection exists between the 



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CHRISTIE PARKER 4 



@012 



Appln No. 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2 003 

carbon layer and the electronic device" and the rejection under 
35 U.S.C. §112 incorrect. 

Rejection of claim 70 under 35 U*S*C §112 

Applicants submit that throughout the specification the 
patterning of layers of metal with electric circuits is 
discussed. The term electric circuit is used interchangeably 
with the ^term_ci^cui those of ordinary skill in the 

art (see for example Pg. 7, lines 5-6). Therefore, patterning 
layers of electrically conducting material with circuit traces is 
both well known to those of ordinary skill in the art and 
described in the specification. 

In response to the assertion that the use of the term 
"circuit trace M is unclear, Applicants profess confusion as to 
what alternative interpretation one of ordinary skill in the art 
could take other than that the "trace on the layer of 
electrically conductive material" is in fact one of the "circuit 
traces" patterned on the layer of electrically conductive 
material. Therefore, applicants submit that a rejection of claim 
70 based on 35 U.S.C. §112 is incorrect. 

Anticipation and obviousness 

The Zweben et al. patent teaches that the layer containing 
carbon "must not interfere with the electrical properties or any 
other properties of the electronic components or • other type of 
component in which it is ultimately utilized as a heat transfer 
device." The q uoted passage highlights a key dist inc tion betwe en 
the-cl^imFd^inve al. patent. The claimed^ 

inventions .are .to - printed wiring^boards where_ j:he_ "at least one 
layer containing carbon" is part of ^a _circuit with in the printed 
wiring^ boarded, e . " at least one ^e lectrical connectio nexis t s 
between the carbon containing layer and the electronic device"), 



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Recehred from < 626 577 8800 > at 9/15/03 11:32:52 PM [Eastern Daylight Time] 



09/15/2003 20:30 FAX 626 577 8800 



CHRISTIE PARKER 4 



@013 



Appln NO. 10/020,506 

Amdt date September 15 , 2003 

Proposed Reply to Office action of July 15, 2003 

whereas the Zweben et al. patent describes the use of a carbon 
containing layer as a heat sink that is isolated from the 
circuits on the printed wiring board. Indeed, the Office action 
acknowledges that the Zweben et al. reference does not teach the 
newly added limitations in claim 69, which are: 

1. "at least one electrical connection exists between the 
carbon containing layer and the electronic device" ; and 

2. "wherein the electrical connection between the carbon 
containing layer and the electronic device includes a plated 
via extending through the carbon containing layer." 

Applicants respectfully submit that neither the Zweben et 
al, .patent nor any other cited reference teaches that "at least 
one electrical connection exists between the carbon containing 
layer and the electronic device" or the novel combinations 
claimed in the above referenced application. Therefore, all 
claims are patentable in light of the cited prior art references, 



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09/15/2003 20:30 FAX 626 577 8800 



CHRISTIE PARKER 4 



B014 



Appln No. 10/020,506 

Amdt date September 15, 2003 

Proposed Reply to Office action of July 15, 2 003 



Conclusion 



Applicants submit that the specification teaches a printed 
wiring board on which an electronic device is mounted, comprising 
at least one carbon containing layer and wherein at least one 
electrical connection exists between the carbon containing layer 
and the electronic device. Applicants also submit that the prior 
art does not teach a printed wiring board possessing these 
features and, therefore, replies t the withdrawal of the final 
rejection and the allowance of all currently pending claims. 



Respectfully submitted, 



CHRISTIE , PARKER & HALE, LLP 




Robert" A. Green 
Reg. No. 28,3 01 
626/795-9900 



DjB/djb 



RLM 1RV1069640.1>-09/15/03 5:47 PM 



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