Ex Parte Marczi et alDownload PDFPatent Trial and Appeal BoardApr 11, 201811873838 (P.T.A.B. Apr. 11, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111873,838 10/17/2007 Michael T. Marczi 34238 7590 04/13/2018 ARTHUR G. SCHAIER CARMODY TORRANCE SANDAK & HENNESSEY LLP 195 CHURCH STREET P.O. BOX 1950 NEW HAVEN, CT 06509-1950 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-A2004-7010A 1374 EXAMINER NGUYEN, PHUONG T ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 04/13/2018 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): patents@carmodylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL T. MARCZI, PAUL KOEP, MICHIEL A. DE MONCHY, MARTINUS N. FINKE, and BRIAN LEWIS Appeal2017-006477 Application 11/873,838 Technology Center 3700 Before MICHAEL L. HOELTER, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 1-16 and 38--42. Final Act. 2. Claims 17-21 have been withdrawn and claims 22-37 have been cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. Appeal2017-006477 Application 11/873,838 THE CLAIMED SUBJECT MATTER The disclosed subject matter is "directed to materials for use in interconnects, such as those found in electrical devices. More particularly, certain embodiments disclosed herein are directed to solders and methods of their use in the assembly of electrical devices such as, for example, printed circuit board, photovoltaic cells and solar panels." Spec. i-f 2. Method claims 1 and 9 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A method of providing an electrical connection between two or more electrical components in an electrical device, the method compnsmg: disposing a two-step solder on or between some portion of the two or more electrical components, the two-step solder comprising a low melt solder component disposed on a base solder component, the base solder component having a higher melting point than the low melt solder component; subjecting the low melt solder component to a first processing step of melting the low melt solder component of the two-step solder at an effective temperature to form a solder alloy or intermetallic from the low melt component and the base solder component, the solder allo[y] or intermetallic layer having a melting temperature higher than that of the low melt solder; and subjecting the solder alloy or intermetallic to a second processing step of soldering the solder alloy or intermetallic at an effective temperature to provide an electrical connection between the two or more electrical components. REFERENCES RELIED ON BY THE EXAMINER Ross Leicht Jin Ray Farooq us 3,411,952 us 5,551,627 US 6,319,617 Bl US 2002/0149113 Al US 2006/0060638 Al 2 Nov. 19, 1968 Sept. 3, 1996 Nov. 20, 2001 Oct. 17, 2002 Mar. 23, 2006 Appeal2017-006477 Application 11/873,838 THE REJECTIONS ON APPEAL Claims 1, 4, 7, 9, 12, and 15 are rejected under 35 U.S.C. § 102(b) as anticipated by Farooq. Claims 1, 4, 7, 9, 12, and 15 are rejected under 35 U.S.C. § 102(b) as anticipated by Ray. Claims 8, 16, and 40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Farooq or Ray, in view of Ross. Claims 2 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Farooq or Ray, in view of Jin. Claims 3, 5, 6, 11, 13, 14, 38, 39, 41, and 42 are rejected under 35 U.S.C. § 103(a) as unpatentable over Farooq or Ray, in view of Leicht. ANALYSIS The rejection of claims 1, 4, 7, 9, 12, and 15 as anticipated by F arooq Appellants argue claims 1, 4, and 7 together (Br. 5-7), claims 9 and 15 together (Br. 7-8), and claim 12 alone (Br. 8). We select claims 1, 9, and 12 for review, with the remaining claims standing or falling with their respectively selected claim. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 Independent method claim 1 includes the step of disposing "a two- step solder on or between" electrical components, with, more particularly, "the two-step solder comprising a low melt solder component disposed on a base solder component" (emphasis added). Appellants contend that Farooq does not disclose "a two-step solder" and also that "Farooq does not describe a low melt solder component disposed on a base solder component (see Fig. 1 and i-f[0019]), as the two solder components are held separately." Br. 6. 3 Appeal2017-006477 Application 11/873,838 Regarding Appellants' "disposed on" argument, it is noted that the Examiner specifically relied on Figure 4 of Farooq as disclosing this limitation, not Figure 1. Final Act. 3. Figure 4 of Farooq clearly illustrates the two solder components (25, 30) joined or abutting each other. 1 Hence, although the two solder components may have previously been held separately prior to assembly (see Fig. 1 ), there is no such separation depicted in Figure 4. According, Appellants' contention that the Examiner erred in relying on Farooq for disclosing this "disposed on" limitation is not persuasive. Regarding Appellants' other contention regarding a "two-step solder," Appellants contend "Farooq is a one-step process" and "[t]here is no teaching or suggestion in Farooq to use a two-step solder in a two-step process as described and claimed by Appellants." Br. 6. On this point, the Examiner (Final Act. 3--4 (citing Farooq i-f 27)) specifically correlates the recited "first processing step of melting the low melt solder ... to form a solder alloy" to Farooq's "step of melting the low melt solder component" 30 in a "preheated chamber ... such that a hybrid, uniform interconnect 60 is formed" (Farooq i-f 27). The Examiner also specifically correlates the recited "second processing step of soldering the solder alloy ... to provide an electrical connection between the" electrical components to Farooq's "step of soldering the solder alloy" 60 "within a furnace" for this same purpose. Final Act. 4; Farooq i-f 27. 1 Further, Paragraph 27 of Farooq specifically discusses allowing the two solders 25, 30 "to homogenize together such that a hybrid, uniform interconnect 60 is formed." 4 Appeal2017-006477 Application 11/873,838 Appellants seek to blur the line between the above processing steps by contending that Farooq's teaching of initially heating solder components 25 and 30 in a "preheated chamber" (thereby forming "hybrid, uniform interconnect 60") and then further heating the assembly "within a furnace" to secure the electrical components together (see, e.g., Farooq i-f 27), constitutes only a single processing step. See Br. 6. We are not persuaded these operations involving heating in a preheat chamber and then in a furnace constitute a single processing step as Appellants allege. In other words, Appellants do not explain how the Examiner erred in finding claim 1 anticipated because, as the Examiner explains, a claim is anticipated "if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Ans. 3 (quoting Verdagaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631(Fed. Cir. 1987)). Accordingly, and in view of the above, we do not find fault with the Examiner's finding that Farooq anticipates claim 1. Ans. 3. We sustain the Examiner's rejection of claims 1, 4, and 7. Claim 9 Independent claim 9 is similar to claim 1 above but is more specific regarding the electrical components being soldered together, reciting that the solder is "on or between the circuit board and the silicon-containing layer." Appellants contend that "Farooq only describes joining of materials such as components of an electronic structure" without disclosing that its solder provides an electrical connection between a "circuit board" and a "silicon- containing layer" as recited. Br. 7. The Examiner identifies such specific solder usage as "a statement of intended use," and further, the Examiner 5 Appeal2017-006477 Application 11/873,838 finds that "the Faroo[ q] reference is capable to perform [sic] the method" recited. Ans. 5. To be clear, Farooq is directed "to methods of attaching electronic components to each other" and provides examples including "mounting of integrated circuit chips to a ... printed circuit board" and the like. Farooq i-fi-12, 4. Farooq is clearly not limited to only the listed components stating, "there are a myriad of electronic components that require connection to other electronic components." Farooq i14. In view of such expansive teachings, Appellants do not explain how one skilled in the art would fail to understand Farooq as also applying to a connection between a "circuit board" and a "silicon-containing layer" as recited. Accordingly, we are not persuaded the Examiner erred in finding that Farooq discloses structures capable of performing the claimed method. Ans. 5. Further, Appellants' additional reliance on arguments previously expressed above with respect to claim 1 (see Br. 7) are again not persuasive of Examiner error. Consequently, and based on the record presented, we sustain the Examiner's rejection of claims 9 and 15 as being anticipated by Farooq. Claim 12 Claim 12 depends from claim 9 and additionally recites a solar cell assembly "comprising a backing layer coupled to the circuit board and a protective covering coupled to the silicon-containing layer." The Examiner equates the recited "backing layer" to the bottom surface of Farooq's circuit board 40, and the Examiner equates the recited "protective covering" to the top surface of Farooq's substrate 10. Final Act. 6. Appellants contend that these correlations are incorrect because "the bottom surface of the circuit board ... is not a backing layer, it is only a surface of the circuit board." Br. 6 Appeal2017-006477 Application 11/873,838 8. A similar argument is made by Appellants regarding the recited "protective covering" as well. Br. 8 (i.e., the top of the substrate "is not a protective covering, this is simply a top surface of the substrate"). Paragraph 7 of Appellants' Specification describes "coupling" a backing/protective layer to, respectively, a circuit board and a silicon- containing layer. Paragraph 8 of Appellants' Specification repeats this teaching, employing the word "disposing" regarding how the layers are joined to the circuit board and the solar cell. The Examiner, on the other hand, contends that "[b ]y broadly interpretation [sic]" the surface of the board/substrate itself is the recited backing/protective layer. Ans. 6. We are instructed that construing individual words of a claim without considering the context in which those words appear is simply not "reasonable." Instead, "[i]t is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the 'ordinary' and the 'customary' meaning of the terms in the claims." Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). In other words, the terms used in patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee, as it would have been understood by a person of ordinary skill in the field of the invention on reading the patent documents. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-5 (Fed. Cir. 2013) ("[A] term's ordinary meaning must be considered in the context of all the intrinsic evidence, including the claims, specification, and prosecution history."). Thus, a claim receives the meaning it would have to persons in the field of the invention, when read and understood in light of the entire specification 7 Appeal2017-006477 Application 11/873,838 and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312-1317 (Fed. Cir. 2005) (en bane). In view of these instructions, it is ascertained that the Examiner's broad interpretation ignores or gives little to no weight to Appellants' repeated discussion of the separate application of distinct layers to the surfaces of the board/cell. Accordingly, the Examiner's broad interpretation that the surfaces of the electrical components themselves constitute the backing/protective layer is neither reasonable nor consistent with Appellants' Specification as per the guidance provided above. Thus, we do not sustain the Examiner's rejection of claim 12. The rejection of claims 1, 4, 7, 9, 12, and 15 as anticipated by Ray The Examiner references Ray in a manner similar to the Examiner's reliance on Farooq above, and the Examiner provides similar analysis and reaches similar conclusions in view thereof. Final Act. 6-9; Ans. 7-10. Appellants likewise present similar arguments contesting the Examiner's reliance on Ray as previously presented with respect to the Examiner's reliance on F arooq. 2 Br. 9-11. Accordingly, for reasons similar to those set forth above, we likewise reach similar decisions, i.e., we sustain the Examiner's rejections of claims 1, 4, 7, 9, and 15 and reverse the Examiner's rejection of claim 12 as being anticipated by Ray. 2 Perhaps one variation is with respect to claim 9 where Appellants argue that Ray does not teach "solder disposed on or between" the recited components "because the solder ball and joiner solder of Ray are each disposed on a conductive pad." Br. 10. The illustration of a conductive pad intermediate the solder and the electrical component, as depicted in Ray's Figure 3, is not persuasive of Examiner error because Appellants fail to indicate how Ray does not disclose the limitation of "solder disposed on or between" the electrical components. 8 Appeal2017-006477 Application 11/873,838 The rejection of claims 8, 16, and 40 as unpatentable over Farooq or Ray, in view of Ross Appellants argue claims 8 and 16 together (Br. 11-12) and claim 40 alone (Br. 12-13). We select claims 8 and 40 for review, with claim 16 standing or falling with claim 8. Claim 8 Claim 8 depends from claim 1 and further recites the step of "disposing a sealant" prior to melting a solder component. The Examiner identifies nickel electrodes 23 and 24 in Ross and states, "the Ross reference is used as evident to discloses/suggests [sic] a sealant." Ans. 11; see also Final Act. 11. Appellants contend, "[ t ]here is no teaching or suggestion in Ross that these nickel electrodes that are chemical or vapor deposited on the P and N regions are a sealant." Br. 12; see also Ross 2:40-42. Appellants explain, "[b ]y definition, a sealant is a material used for sealing something so as to make it airtight or watertight." Br. 12. As indicated above, Ross teaches nickel electrodes 23 and 24 that can "be chemically or vapor deposited" onto the surface of the solar cell. Ross 2:40-42. Regarding application of a sealant, Appellants' Specification states "[t]he sealant 360 may also flow or be evaporated to laminate the layers of the electrical device." Spec. i-f 41. Appellants do not explain how Ross's disclosure of "chemically or vapor deposited" differs from Appellants' disclosure of being "evaporated" onto the component. Appellants also do not explain how Ross's deposit fails to operate as a sealant (i.e., make that region airtight or watertight). It is understood that Ross does not employ the term "sealant" (see Br. 12), but Appellants do not explain how Ross's chemical or vapor deposition fails to teach the above limitation of "disposing 9 Appeal2017-006477 Application 11/873,838 a sealant" as recited and defined. Accordingly, we are not persuaded the Examiner erred in relying on Ross for teaching this limitation. We sustain the Examiner's rejection of claims 8 and 16. Claim 40 Claim 40 depends from claim 1 and further recites that the two-step solder "is mixed with a zero CTE [coefficient of thermal expansion] material." Appellants' Specification states, "[a] zero CTE material refers to a material whose coefficient of thermal expansion is about zero at an assembly temperature." Spec. i-f 38. The Examiner relies on Ross's teaching regarding the stresses that can develop between soldered components due to differences in thermal expansion. Final Act. 10; Ans. 12 (both referencing Ross 2:70 to 3:23, 25--47). Ross seeks to minimize these stresses and provides examples of material that can be employed, one of which reduces such stresses to "nearly zero." Ross 3:41--47. Appellants contend, "there is no teaching or suggestion in Ross, alone or in combination with Farooq or Ray as to the claimed feature of mixing the two-step solder with a zero CTE material." Br. 13. Appellants do not explain how Ross fails to teach or suggest this limitation, only that "there is no teaching or suggestion in Ross." Br. 13. Appellants' contention is not persuasive that the Examiner erred in relying on Ross for disclosing this limitation. We sustain the Examiner's rejection of claim 40. The rejection of claims 2 and 10 as unpatentable over Farooq or Ray, in view of Jin Appellants argue claims 2 and 10 together. Br. 13-14. We select claim 2 for review, with claim 10 standing or falling with claim 2. 10 Appeal2017-006477 Application 11/873,838 Claim 2 depends from claim 1 and recites, "the second processing step comprises laser soldering." The Examiner relies on Jin for "using a laser for the purposes of attaching or modifying solder." Final Act. 11. Appellants contend that the heating source in Farooq is a furnace and the heating source in Ray is an oven, such that one skilled in the art, in view of either reference, would not employ laser soldering. Br. 13-14. This conclusion is reached "because [laser soldering] would not be believed to provide the conditions necessary for forming a hybrid, uniform interconnect." Br. 13. Jin teaches that solder "bonding is facilitated by any conventional techniques, including a soldering iron, laser heating, infrared heating, and ultrasonic bonding." Jin 5:20-23. Jin does not expressly address heating via a furnace or an oven, but Jin clearly encompasses heating via "conventional techniques," and it is not clear how heating via a furnace or an oven is not a "conventional technique." Thus, Jin is understood as expressing some degree of equivalency between bonding via "conventional techniques" (i.e., an oven or a furnace) and bonding via "laser heating." Consequently, in view of Jin's teaching, it is not clear why the Examiner might be in error in concluding that "laser heating" could be employed for heating/bonding in the same manner as Farooq teaches the use of a furnace or Ray teaches the use of an oven for heating/bonding. See Final Act. 11-12. In other words, we are not persuaded the Examiner erred in concluding, "the Jin reference is used as evident to discloses/ suggests [sic] the step: using a laser for the purposes of attaching or modifying solder." Ans. 13. 11 Appeal2017-006477 Application 11/873,838 The rejection of claims 3, 5, 6, 11, 13, 14, 38, 39, 41, and 42 as unpatentable over Farooq or Ray, in view of Leicht Appellants only assert that the above claims "are also believed to be allowable over the prior art of record" and as such, the rejection of these claims "as being unpatentable over Farooq or Ray and further in view of Leicht should be withdrawn." Br. 14. Appellants' contention is not persuasive of Examiner error. We sustain the rejection of claims 3, 5, 6, 11, 13, 14, 38, 39, 41, and 42. DECISION The Examiner's rejections of claims 1-11, 13-16, and 38--42 are affirmed. The Examiner's rejection of claim 12 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation