Ex Parte Albrecht et al

Patent Trials and Appeals Board

Mar 21, 2019

10554274 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/554,274
31217 7590
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
09/13/2006
03/25/2019
FIRST NAMED INVENTOR
Hans-Jurgen Albrecht
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H06020/PCT/US 3094
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-JURGEN ALBRECHT,
KLAUS HEINRICH GEORG BARTL, WERNER KRUPPA,
KLAUS MULLER, MATHIAS NOWOTTNICK,
GUNNAR PETZOLD, HECTOR ANDREW STEEN,
KLAUS WILKE and KLAUS WITTKE
Appeal2017-005997
Application 10/554,274
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (W.C. Heraeus GMBH) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 3, 8, 9, 19,
and 26. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a lead-free soldering material. Claim 3 is
illustrative:
3. A lead free soldering material consisting
essentially of Sn (tin), 2 to 10 wt.% Ag, Bi, 1 to 3 wt.% Sb,
Appeal2017-005997
Application 10/554,274
0.5 to 3 wt.% Cu and 0.05 to 0.3 wt.% Ni, wherein the Sb:Bi
wt.% ratio is from 1:1.5-3.
Gonya
Sato
The References
us 5,393,489
US 6,517,602 B2
The Rejections
Feb.28, 1995
Feb. 11, 2003
Claims 3, 8, 9, 19, and 26 stand rejected under 35 U.S.C. § 103(a)
over Gonya in view of Sato and over Sato.
OPINION
We reverse the rejections.
Rejection over Gonya in view of Sato
Gonya discloses a lead-free, high solidus temperature, high service
temperature, high strength solder that flows at low enough temperature to
avoid damage to electronic materials, and wets and forms a chemically and
thermally stable intermetallic with metals typically used in electronics
fabrication such as Cu, Au, Ag, and Pd while avoiding wetting organic
materials such as substrates and solder masks (col. 3, 11. 27--42). An
exemplified solder contains about 93.5 to about 94.0 wt% Sn, about 2.5 to
about 3.0 wt% Ag, about 1.0 to about 2.0 wt% Bi, about 1.0 to about
2.0 wt% Sb, and about 1.0 wt% Cu (col. 4, 11. 8-13).
Sato discloses "a solder ball having high sphericity, high dimension
accuracy, narrow dimension distribution and smooth and clean surface"
(col. 3, 11. 8-10). An exemplified Sn solder ball contains 1.5-3.5 mass% Ag,
0.5-1.5 mass% Bi, 0.3---0.9 mass% Cu, and, to improve welding strength,
0.006---0.1 mass% ofat least one of Ni, P, Mn, Au, Pd, Pt, S, In, and Sb,
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Application 10/554,274
where Sb also functions to smooth the solder ball's surface (col. 5, 11. 59---62;
col. 7, 11. 9-11, 62---65).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to incorporate nickel in
the amount as taught by Sato in the alloy as taught by Gonya because Sato
teaches Ni improves a welding strength of a solder" (Ans. 3), and "[i]t would
have been obvious to one of ordinary skill in the art to select any portion of
the disclosed ranges including the instantly claimed ranges from the ranges
disclosed in the prior art reference" (id.) by optimization (Ans. 3--4).
The Examiner does not establish that Sato would have indicated to
one of ordinary skill in the art that Sato's at least one of Ni, P, Mn, Au, Pd,
Pt, S, In, and Sb would improve the welding strength of solders generally or
Gonya' s solder in particular, and would not negatively impact the above-
stated solder properties desired by Gonya. Thus, the Examiner has not
established that Sato would have provided one of ordinary skill in the art
with an apparent reason to modify Gonya's solder as proposed by the
Examiner.
Rejection over Sato
The Examiner finds that "Sato does not teach the exact same
proportions as recited in the instant claims" (Ans. 4), and concludes that "[i]t
would have been obvious to one of ordinary skill in the art to select any
portion of the disclosed ranges including the instantly claimed ranges from
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Application 10/554,274
the ranges disclosed in the prior art reference" (Ans. 5) by optimization and
routine investigation (id.).
Sato desires to achieve the above-stated solder ball properties whereas
the Appellant's desired solder properties are comparatively low melting
point and highest possible usage temperature (Spec. ,r 4). The Examiner
does not establish that optimizing Sato' s solder composition to achieve the
solder ball properties desired by Sato would produce the Appellant's solder
composition having components and their amounts for achieving solder
properties that differ from those desired by Sato.
Thus, the record indicates that the Examiner's rejection over Sato is
based upon impermissible hindsight in view of the Appellant's disclosure.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art.").
For the above reasons we reverse that rejections.
DECISION
The rejections of claims 3, 8, 9, 19, and 26 under 35 U.S.C. § 103(a)
over Gonya in view of Sato and over Sato are reversed.
The Examiner's decision is reversed.
REVERSED
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