Ex Parte Khaselev et al

Patent Trials and Appeals Board

Jun 24, 2019

13287820 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/287,820 11/02/2011
159237 7590 06/26/2019
MacDermid Performance Solutions - Patents
c/o Carmody Torrance Sandak & Hennessey LLP
195 Church Street
P.O. Box 1950
New Haven, CT 06509-1950
Oscar Khaselev
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.
31183-A2004-7023A 2511
EXAMINER
UTT,ETHANA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
mpspatents@carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSCAR KHASELEV, BAWA SINGH, BIN MO,
MICHAEL T. MARCZI, and MONNIR BOUREGHDA 1
Appeal2018-007518
Application 13/287,820
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 7, 9, 27-32, 34--40, and 42. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellant identifies the real party in interest as Alpha Metals, Inc. App.
Br. 1.
Appeal2018-007518
Application 13/287,820
STATEMENT OF THE CASE
Claim 7 is illustrative of Appellant's subject matter on appeal and is
set forth below:
7. A sheet of sintering film, comprising:
a substrate;
a release coating disposed on the substrate; and
a layer of a dry sintering material having a thickness of
about 5 to about 300 microns disposed on the release coating on
the substrate;
wherein the sintering material comprises, prior to drying:
(i) a metal powder having a dso range of about 0.001 to
about 10 micrometers, the metal powder comprising about 3 0 to
about 95 wt% of the sintering material;
(ii) a binder having a softening point between about 50
and about 170 °C, the binder comprising about 0.1 to about 5
wt% of the sintering material; and
(iii) a solvent in an amount sufficient to dissolve at least
the binder;
wherein the substrate is configured to be removed during
a lamination process; and
wherein the layer of sintering material is applied in
discrete shapes with respect to a surface of the substrate, and
the discrete shapes have geometries corresponding to
dimensions of a component to be attached using the layer of
sintering material.
App. Br. 14 (Claims Appendix).
The Examiner relies on the following prior art references as evidence
of unpatentability:
Wasulko
Lu
Garbar
us 5,049,434
US 2009/0162557 Al
WO 2004/005413 Al
Sept. 17, 1991
June 25, 2009
Jan. 15,2004
J. A. Brydson, Cellulose Plastics PLASTICS MATERIALS 7th ed., (1999).
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Appeal2018-007518
Application 13/287,820
THE REJECTION
Claims 7, 9, 27-32, 34--40, and 42 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Lu in view of Garbar, Brydson,
and Wasulko.
ANALYSIS
Appellant's primary argument is that Garbar is non-analogous art.
Appellant argues that the Examiner's position that Garbar is analogous art is
in error because the Examiner engaged in an improper analysis by
considering whether Garbar was "reasonably pertinent" to Lu. Appeal Br. 5;
see Final Act. 7-8. Appellant is correct that this is an improper analysis.
Two separate tests define the scope of analogous prior art: ( 1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed.
Cir. 1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
In response, the Examiner states:
.... the examiner notes the field of the invention for Lu's sheet
of sintering film is for bonding electronic devices, e.g. bonding
silicon integrated circuit chips ( e.g. i-fi1[0003], [0011 ]), which is
a similar application to that of the sheet of sintering film in the
instant specification ( e.g. p. 5, II. 7 - 27, of the specification as
filed 2 November 2011). Additionally, as noted in the
rejections, Garbar motivates providing a highly conductive
composition useful for expediting industrial scale production in
the environment described above, both of which are features
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Appeal2018-007518
Application 13/287,820
desired in the instant specification (e.g. p. 12, 1. 24, top. 13, 1.
2; p. 14, 11. 8-9). Therefore, Garbar is considered reasonably
pertinent.
Ans. 8.
In the Reply Brief, Appellant submits that the Examiner continues to
analyze whether Garbar is "reasonably pertinent" to Lu. Reply Br. 2. We
believe that the Examiner seems to make an effort to relate Lu and Garbar to
Appellant's Specification in supporting the position that Garbar is
"reasonably pertinent." In so doing, it appears that the Examiner's response
intermingles the two separate tests discussed above, and has erred in so
doing. The proper analysis is as follows.
As mentioned above, the first test is whether the art is from the same
field of endeavor, regardless of the problem addressed. This test for
analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention's subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention. See Wood, 599 F.2d at 1036 (confining the field of
endeavor to the scope explicitly specified in the background of the
invention); see also Deminski, 796 F.2d at 442 (determining that the cited
references were within the same field of endeavor where they "have
essentially the same function and structure"). In the instant case,
Appellant's Specification is directed to sintering technology using materials
for attachment of various components of an assembly. Spec. 1, 11. 14--16.
As Appellant points out in the record, Garbar is directed to conductive inks
that are used to create electrical circuits. Appeal Br. 6. Appellant states that
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Appeal2018-007518
Application 13/287,820
Garbar does not teach that the conductive inks are capable of attaching a
component to a substrate. Appeal Br. 6-7; see generally Garbar. As such,
we determine that it would not have been readily apparent to one of ordinary
skill in the art that Garbar's conductive inks may easily be used as sintering
materials for attaching a component to an assembly. Based on these findings,
we determine that Garbar is not from the same field of endeavor as
Appellant's claimed subject matter.
We next tum to the second test, the second test being that if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1380-1381 (Fed. Cir. 2007) (prior art disclosing springs as part of a
counterbalancing mechanism in a folding bed is reasonably pertinent to an
application describing a gas spring used as part of a lift assist assembly in a
claimed treadmill).
In the instant case, as Appellant argues, the claimed subject matter
and Garbar are directed to different problems. First, the problem solved by
the claims of the instant application is the creation of low temperature
sintering compositions that attach components to substrates. In contrast,
Garbar does not involve sintering compositions that attach one thing to
another, but is directed to conductive inks that are used to create electrical
circuits. Appeal Br. 6-7; Reply Br. 2-3. In the present case, we thus agree
that the Examiner has not established that Garbar is reasonably pertinent to
Appellant's particular problem of the creation of low temperature sintering
compositions that attach components to substrates.
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Appeal2018-007518
Application 13/287,820
In view of the above, we reverse the rejection.
The rejection is reversed.
DECISION
ORDER
REVERSED
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