Ex Parte LEVEY

Patent Trial and Appeal Board

Nov 28, 2018

13745852 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/745,852 01/20/2013 Peter R. LEVEY
53884 7590 11/30/2018
ROHM AND HAAS ELECTRONIC MATERIALS LLC
c/o E. I. du Pont de Nemours and Company
P. 0. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
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.
71938-US-NP 3893
EXAMINER
WEDDLE, ALEXANDER MARION
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER R. LEVEY
Appeal2018-001008
Application 13/745,852 1
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON,
and JANEE. INGLESE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 2, 3, 5, and 7-9. 2 We have jurisdiction under 35 U.S.C. § 6.
Appellant's invention relates generally to an improved flux method
for tin and tin alloys where the flux composition includes organic
compounds including one or more sulfonic acid groups, salts or anhydrides
thereof and inorganic acids. The flux composition is applied to the tin or tin
alloy in uniform amounts per unit area to inhibit tin and tin alloy oxidation
1 According to the Appeal Brief, the real party in interest is Dow Chemical
Company. See App. Br. 2.
2 Claims 4 and 6 have been canceled during the prosecution of the present
application. App. Br. 4.
Appeal2018-001008
Application 13/745,852
and improve surface properties. (Spec. 1.) Claim 9 illustrates the subject
matter on appeal and is reproduced from the Claims Appendix to the
principal Brief.
9. A method comprising:
a) providing a conductive substrate comprising tin or tin alloy;
b) providing a flux composition consisting of one or more
organic compounds chosen from aliphatic sulfonic acids, salts
or anhydrides thereof, sulfosalicylic acid, salts and isomers
thereof in amounts of 0.1-20 g/L and one or more inorganic
acids in amounts of 0.1-10 g/L, one or more surfactants and
water;
c) applying the flux composition to the tin or tin alloy in area
volumes of 0.5-10 ml/m2; and
d) homogenizing the flux composition on the tin or tin alloy.
(App. Br. 8 (Claims App.).)
Appellant (see generally App. Br.) requests review of the following
rejections:
I. Claims 5, 7, and 9 rejected under 35 U.S.C. § I03(a) as
unpatentable over Levey (US 2006/0191797 Al, publ. Aug.
31, 2006) and Hawkey (US 2009/0042382 Al, publ. Feb.
12, 2009).
II. Claims 2 and 3 rejected under 35 U.S.C. § I03(a) as
unpatentable over Levey and Hawkey further in view of
Stayner (US 4,113,525, iss. Sept. 12, 1978).
III. Claim 8 rejected under 35 U.S.C. § I03(a) as unpatentable
over Levey and Hawkey further in view of O 'Driscoll (US
6,409,850 Bl, iss. June 25, 2002).
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Appeal2018-001008
Application 13/745,852
OPINION
Rejections 1-1113
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine
that Appellant has identified reversible error in the Examiner's rejection of
independent claim 9. We add the following:
The complete statement of Rejections I-III appears in the Final Office
Action. (Final Act. 2-5.)
The dispositive issue on appeal is:
Did the Examiner err in determining that Levey teaches or suggests a
flux composition consisting of one or more organic compounds chosen from
aliphatic sulfonic acids, salts or anhydrides thereof, sulfosalicylic acid, salts
and isomers thereof in amounts of O .1-20 g/L and one or more inorganic
acids in amounts of O .1-10 g/L, one or more surfactants and water as
required by independent claim 9? 4
Independent claim 9 is directed to a method of applying a flux
composition to a tin or tin alloy, wherein the flux composition consists of
one or more organic compounds chosen from aliphatic sulfonic acids, salts
or anhydrides thereof, sulfosalicylic acid, salts and isomers, one or more
inorganic acids, one or more surfactants and water. The Examiner found
Levey teaches a method of applying a flux composition to tin or tin alloy
that differs from the claimed invention in that the flux composition
3 We limit our discussion to independent claim 9, which we select as
representative of the rejected claims.
4 A discussion of the Hawkey reference is unnecessary for disposition of this
appeal. The Examiner relied on Hawkey for teaching homogenizing the
flux. (Final Act. 4).
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Appeal2018-001008
Application 13/745,852
comprises elements excluded by the "consisting of' claim language. (Final
Act. 3.) The Examiner specifically states:
US '797 [Levey] fails to teach a flux compos1t10n
consisting of the recited ingredients. However, it is prima facie
obvious to add ingredients in any order or simultaneously. Thus,
it would have been obvious to a person of ordinary skill in the art
to provide a flux consisting of only the recited ingredients which
exclude a tin ion and the [sic] to add tin ions to the flux by
applying it to a substrate comprising tin or tin alloy with a
reasonable expectation of success.
(Final Act. 3.) (Emphasis omitted.)
The Examiner also found that the claimed "area volume" would have
been achieved by a person of ordinary skill through routine optimization of
the amount of flux applied as described by Levey. (Final Act. 3.)
Appellant argues Levey does not teach a flux composition consisting
of the recited ingredients including water, as required by independent claim
9. Appellant specifically argues Levey teaches a tin plating composition, not
the required flux composition having area volumes of0.5-10 ml/m2. (App.
Br. 4.) Appellant argues none of these sections of Levey cited by the
Examiner are for the thickness of a flux. (App. Br. 5.) Appellant argues the
Examiner has not provided a basis to optimize the area volume parameter for
the flux of Levey to meet the requirements of claim 9. (App. Br. 5.)
The Examiner has failed to provide an adequate explanation of why it
would have been obvious to modify Levey's flux composition to contain the
ingredients required by independent claim 9. While the Examiner
hypothesizes it would have been obvious to exclude a tin ion from Levey's
plating composition, the Examiner has failed to provide an adequate
rationale supported by evidence which establishes the obviousness of this
modification. The Examiner has failed to provide an explanation of the
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Appeal2018-001008
Application 13/745,852
properties that would result from the proposed modification that would have
supported the hypothesized obviousness.
We also agree with Appellant that Examiner has provided insufficient
reason or motivation to modify Levey to apply flux to a tin or tin alloy in
area volumes of 0.5-10 ml/m2 based on the thickness of tin or tin alloy
coatings or films disclosed by Levey. We agree with Appellant that Levey
discloses the thickness of the tin coatings and tin films, not a flux
composition. (Reply Br. 2.)
CONCLUSION
For the reasons stated above, we do not sustain appealed Rejections
I-III of claims 2, 3, 5, and 7-9.
REVERSED
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