Ex Parte Kawamura

Patent Trial and Appeal Board

Mar 1, 2016

11909349 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111909,349 06/03/2010 Noriaki Kawamura
22850 7590 03/03/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
315151USOPCT 4244
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
03/03/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIAKI KAWAMURA
Appeal 2014-005611
Application 11/909 ,349
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 and 4--8. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellant's claimed invention is directed to a metal substrate-metal
impregnated carbon composite structure wherein the metal impregnated
carbon composite is brazed and soldered onto an upper surface of the metal
substrate.
Claim 1 is illustrative and reproduced below:
1. A metal substrate-metal impregnated carbon composite structure
comprising a metal substrate and a metal impregnated carbon composite
brazed and soldered onto an upper surface of the metal substrate,
Appeal 2014-005611
Application 11/909,349
wherein the metal impregnated carbon composite has a thickness of
0.1 to 2 millimeters,
wherein a metal of the metal substrate is copper, aluminum, or alloys
of these, and
wherein the properties in any one direction of three axial directions of
the metal impregnated carbon composite are a thermal conductivity of 100
W/m· Kor more, a thermal expansion coefficient of 4 x 10-6 /degrees
centigrade to 15 x 1 o-6 I degrees centigrade, and a Young's modulus of 25
GPa or less.
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Kiyotaka (as translated) JP 2003-133492 May 9, 2003
The Examiner maintains the following grounds of rejection:
Claims 1, 4, and 6-8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kiyotaka. Claim 5 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kiyotaka.
We reverse the stated rejections for reasons substantially as argued by
Appellant in the Appeal Brief.
For each of the stated rejections, the Examiner bears the initial burden
of presenting a prima facie case establishing the non-patentability of the
rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Anticipation Rejection
In order for the Examiner to carry the burden of establishing a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required by the claim, is found
in a single prior art reference, either expressly or under the principles of
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Appeal 2014-005611
Application 11/909,349
inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
Here, the Examiner has not established that Kiyotaka describes a
structure corresponding to a metal substrate-metal impregnated carbon
composite structure comprising a substrate that is copper, aluminum, or
alloys of these metals, and a metal impregnated carbon composite that is
brazed and soldered onto an upper surface of the metal substrate having all
of the characteristics as required by Appellant's independent claim 1. Thus,
the Examiner has not established how the cited portions of Kiyotaka
describe a structure that includes elements/features that correspond to all of
the recited elements/features of independent claim 1 arranged as required by
claim 1, as Appellant argues (Br. 4--7).
In particular, the Examiner relies on a substrate of a metal carbon
complex as described in paragraphs 27 and 33 of Kiyotaka as corresponding
to the metal-impregnated carbon composite of Appellant's claim 1 and a
subsequently applied copper layer 9 as described in paragraph 27 of
Kiyotaka as corresponding to the metal substrate of claim 1 (Ans. 3--4).
As argued by Appellant, however, Kiyotaka discloses that the base
material carbon complex A and copper layer 9 of Kiyotaka are adhered to
each other via intervening layers, including a molybdenum layer 7 rather
than describing the metal impregnated composite (base material carbon
complex) as being brazed and soldered onto an upper surface of the metal
substrate (copper layer 9 of Kiyotaka) so as to correspond to all of the
recited elements/features of independent claim 1 arranged as required by
claim 1 (Br. 4; Kiyotaka i-fi-127, 33). In this regard, and for example, the
Examiner relies on the thickness of the base material A reported in
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Appeal 2014-005611
Application 11/909,349
paragraph 33 of Kiyotaka for a description of a thickness that satisfies the
claim 1 requirement for the thickness of the metal impregnated carbon
composite thickness.
Thus, the Examiner has not carried the burden to establish how each
and every element of the claimed invention, arranged as required by
Appellant's claim 1, are described in the cited and applied disclosures of
Kiyotaka.
It follows that we reverse the Examiner's anticipation rejection.
Obviousness Rejection
Dependent claim 5, as subject to the obviousness rejection maintained
by the Examiner, requires the features of independent claim 1. In the stated
obviousness rejection, the Examiner addresses the additional feature
required by dependent claim 5 without further specifying how Kiyotaka
would have suggested the features of independent claim 1, which are
included in claim 5 by virtue of its dependency on claim 1 (Ans. 5---6). For
reasons discussed above, the Examiner's separate rejection of dependent
claim 5 falls short because the Examiner has not articulated how the
obviousness position advocated for the additional feature added by claim 5
overcomes the deficiencies in the base anticipation rejection upon which the
obvious rejection of claim 5 is predicated.
Accordingly, we reverse the Examiner's obviousness rejection on this
appeal record.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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