13727735 (P.T.A.B. Oct. 5, 2016)

Ex Parte Matsuda et al

Patent Trial and Appeal BoardOct 5, 2016

13727735 (P.T.A.B. Oct. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131727,735 12/27/2012 7055 7590 10/07/2016 GREENBLUM & BERNSTEIN, PLC 1950 ROLAND CLARKE PLACE RESTON, VA 20191 FIRST NAMED INVENTOR Mitsuyoshi MATSUDA 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. P43207 6710 EXAMINER LAM, CATHY FONG FONG ART UNIT PAPER NUMBER CSDC NOTIFICATION DATE DELIVERY MODE 10/07/2016 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSUYOSHI MATSUDA, KAZUHIRO YOSHIKAWA, and TAKAO FUJIMOTO Appeal2015-003693 Application 13/727,735 Technology Center 1700 Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request review under 35 U.S.C. Â§ 134(a) of a decision of the Primary Examiner to reject claims 1-17. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the real party in interest as Mitsui Mining & Smelting Co., Ltd. App. Br. 3. Appeal2015-003693 Application 13/727,735 BACKGROl.J1'-JD The subject matter on appeal relates to an electro-deposited copper- alloy foil, suitable for use in a printed wiring board. Spec.2 1. Claim 1 is illustrative and reproduced from the Claims Appendix of the Appeal Brief as follows: 1. An electro-deposited homogenous copper-alloy foil obtained from electrolyzing of an electrolytic solution, the electro-deposited homogenous copper-alloy foil is characterized in that tin content is 8% by mass to 25% by mass. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Luce et al. Morisaki Chiang et al. Sato et al. us 3,585,010 us 4,049,481 US 6,248,401 Bl US 6,652,962 Bl THE REJECTIONS June 15, 1971 ("Luce") Sept. 20, 1999 June 19, 2001 Nov. 25, 2003 ("Sato") The Examiner maintains the following rejections on appeal: 1. Claims 1-16 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement. 2 In this decision, we refer to the Specification dated December 27, 2012 ("Spec."), Final Office Action mailed June 27, 2014 ("Final Act."), Appeal Brief filed October 31, 2014 ("App. Br."), Examiner's Answer mailed December 15, 2014 ("Ans."), and Reply Brief filed February 10, 2015. 2 Appeal2015-003693 Application 13/727,735 2. Claims 1, 2, and 17 under 35 U.S.C. Â§ 102(b) as anticipated by Morisaki, or, in the alternative under 35 U.S.C. Â§ 103(a) as unpatentable over Morisaki. 3. Claims 3-16 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Morisaki, Luce, Chiang, and Sato. DISCUSSION Rejection 1 The Examiner determines that the Specification lacks written description support for the following claim recitations: "[a]n electro- deposited homogeneous copper-alloy foil" (claim 1 ); "a uniform alloy construction" (claims 13-16); and "a uniform alloy composition" (claims 13-16). Final Act 2. The Examiner finds that those claim recitations were not disclosed in the original Specification (Final Act. 2; Ans. 3), and takes the position that "uniform alloy construction" and "uniform alloy composition" are different from "homogenous copper-alloy foil" because "homogenous" suggests "a complete mixture similar to homogenized milk." Ans. 7. Appellants correctly note that the Specification as originally filed included a description of "uniform alloy construction" and "uniform alloy composition." App. Br. 10-11, citing Spec. i-fi-170, 72. As to "homogeneous," Appellants argue that the Examiner's requirement for ipsis verbis reference to the term "homogenous" is clear error. App. Br. 13. Appellants argue that a person of ordinary skill in the art would understand that a copper-alloy foil having a uniform composition or construction, as described in the Specification, has a uniform structure or composition 3 Appeal2015-003693 Application 13/727,735 throughout, and therefore is homogenous. App. Br. 12-13 (citing ivlerriam Webster definition of "homogenous" as "of uniform structure or composition throughout"); Reply Br. 5---6. In view of Appellants' proffered interpretation of "homogenous," we are persuaded by Appellants' argument that the Specification satisfies the written description requirement. Id. A preponderance of the evidence establishes that the Specification reasonably conveys to a person of ordinary skill in the art that the inventors had possession of the subject matter of claims 1-16, including "[a]n electro-deposited homogenous copper-alloy foil" at the time the Application was filed. Accordingly, we do not sustain the rejection. Rejections 2 & 3 Appellants present separate argument only for independent claims 1 and 17, based on a common limitation, and dependent claim 2. App. Br. 14-- 51. Appellants do not present distinct arguments for separate patentability of any other claims, or present substantive argument directed to any reference other than Morisaki. Therefore, we limit our discussion to claims 1, 2, and 17 and Morisaki. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012). Having considered the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify reversible error in either rejection. Accordingly, we affirm for the reasons set forth in the Final Action and the Answer. We add the following primarily for emphasis. Morisaki discloses electrodeposition of a binary alloy of zinc and tin onto the surface of copper foil. Morisaki Abstract, 2:63-3:5. The zinc-tin alloy diffuses completely into the surface of the copper foil and forms a thin 4 Appeal2015-003693 Application 13/727,735 layer of copper-zinc-tin alloy on the surface of the foil. Id. The Examiner finds that the tin content of the copper alloy layer is 3-15 mass %, which overlaps the range recited in claims 1 and 17. Final Act. 3, citing Morisaki 4:45--47. Appellants argue that Morisaki's copper alloy layer "corresponds to a diffusion alloy layer, which is not an electro-deposited homogenous copper-alloy." App. Br. 17. Further, Appellants argue that Morisaki's foil is similar in construction to the comparative examples of the Specification, such as discussed in Spec. i-f 72, "which lack the homogenously-composed alloy foil." App. Br. 17. Appellants similarly argue that the content of the respective metals and alloys in Morisaki' s foil "changes at least through the thickness direction (i.e., there are gradients of composition in the thickness direction)." Id. at 18. Appellants' argument lacks sufficient support to persuade us of reversible error in the rejection. Claims 1 and 17 are product-by-process claims, and the Examiner has made out a prima facie case that the claimed copper-alloy foil and Morisaki's copper-alloy foil appear to be the same; the burden thus shifts to Appellants to prove otherwise. In re Thorpe, 777 F .2d 695, 697 (Fed. Cir. 1985). Appellants provide attorney argument but no evidence, however, that the structure of Morisaki's foil lacks homogeneity. E.g., App. Br. 18-19. Further, Appellants do not explain how the comparative examples of the Specification are similar to Morisaki' s method; although Appellants repeatedly point to Spec. i-f 72, that paragraph does not explain how the comparative examples are made. E.g., App. Br. 17-18. Because of this lack of evidentiary support, we determine a preponderance of the evidence supports the Examiner's conclusion of anticipation by Morisaki. 5 Appeal2015-003693 Application 13/727,735 Appellants' argument for patentability of dependent claim 2 rests on the same basis as the argument discussed above, i.e., that "different processes of the present disclosure and [Morisaki] result in different structures." App. Br. 20. As discussed above, Appellants' argument lacks sufficient evidentiary support. Accordingly, we affirm the rejection of claim 2. CONCLUSION We reverse the rejection of claims 1-16 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement. We affirm the rejection of claims 1, 2, and 17 under 35 U.S.C. Â§ 102(b) as anticipated by Morisaki. We affirm the rejection of claims 3-16 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Morisaki, Luce, Chiang, and Sato. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6