Ex Parte NnebeDownload PDFPatent Trial and Appeal BoardDec 11, 201311626468 (P.T.A.B. Dec. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/626,468 01/24/2007 Ijeoma M. Nnebe YOR920060556US1 1277 30678 7590 12/11/2013 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER SLUTSKER, JULIA ART UNIT PAPER NUMBER 2891 MAIL DATE DELIVERY MODE 12/11/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IJEOMA M. NNEBE ___________ Appeal 2011-002798 Application 11/626,468 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002798 Application 11/626,468 2 STATEMENT OF THE CASE Appellant is appealing claims 2-18. Appeal Brief 2.1 We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to release film coatings for soft composite materials in microelectronics. Appeal Brief 2. Illustrative Claim2 13. Method of fabricating a release film for a soft composite material comprising applying a monolayer of closely packed self-assembled molecules to a least one side of a film wherein 1 Appellant appeals claims 2-21 (Appeal Brief 2), however claims 17-21 are not before us because they were subject to a restriction requirement (mailed March 25, 2009) and Appellant’s subsequent election of claims 17-21 (filed April 1, 2009). Claim 1 was cancelled (Appeal Brief 2). Notwithstanding Appellants’ arguments, this matter is not before us since we lack jurisdiction over petitionable matters. See, e.g., MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition….”). 2 See MPEP § 2111.04 regarding “wherein” clauses: Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. (MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012). Appeal 2011-002798 Application 11/626,468 3 the release film has a water contact angle of about 100 degrees or greater. Rejections on Appeal Claims 5, 7, 13, 14 and 16 stand rejected under 35 U.S.C. §102(e) as being anticipated by Whelan (U.S. Patent Application Publication Number 2006/0128142 A1; June 15, 2006). Answer 3. Claims 2-5, 9-11 and 13-16 stand rejected under 35 U.S.C. §102(b) as being anticipated by Liakos (Surface and Interface Analysis, 36, 2004, pages 347-354, “Comparative study of self-assembly of a range of Monofunc- tional aliphatic molecules on magnetron-sputtered aluminium”). Answer 4-6. Claims 13 and 7 stand rejected under 35 U.S.C. §102(b) as being anticipated by Pellerite (J. Phys. Chem. B, 107, 2003, pages 11726-11736, “Effects of Fluorination on Self-Assembled Monolayer Formation from Alkanephos-phonic Acids on Aluminum: Kinetics and Structure”). Answer 6. Claims 2-9, 12, 13 and 16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Frey (U.S. Patent Application Publication Number 2008/0150148 A1; June 26, 2008) and Pellerite. Answer 6-8.3 Issues Do Whelan, Liakos or Pellerite teach a method of fabricating a release film for a soft composite material “wherein the release film has a water 3 The Examiner does not indicate that claim 8 was rejected within the obviousness statement (Answer 7), however the Examiner addresses the merits of claim 8 within the body of the rejection (Answer 8). Appeal 2011-002798 Application 11/626,468 4 contact angle of about 100 degrees or greater” as recited in independent claim 13? Do Frey and Pellerite, either alone or together, disclose a method of fabricating a release film for a soft composite material “wherein the release film has a water contact angle of about 100 degrees or greater” as recited in independent claim 13? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellant’s Appeal Brief. However, we highlight and address specific findings and arguments for emphasis as follows. Appellant argues that claim 13 recites in the body of the claim and not exclusively in the preamble, the employment of a release film having a water contact angle of about 100 degrees. Appeal Brief 7. Appellant argues that Whelan’s double damascene structure actually teaches away from release films because it does not correspond to a film. Id. Appellant contends that the Examiner’s assertion that any substrate can be considered to correspond to a film and that any self-assembled monolayer can be considered to be suitable to transfer soft composite material as claimed is not an accurate portrayal of the claimed invention. Id. Appellant argues that “a release film that retains material from the soft composite material can result in minor changes of the composition of the preform with potentially major changes in the properties of the soft composite material, such a viscosity and thermal Appeal 2011-002798 Application 11/626,468 5 conductivity” and therefore Whelan fails to disclose a suitable release film because “Whelan is a sacrificial layer that is removed by thermal anneal.” Id. The Examiner finds, “In the absence of the specific definition of the term ‘release film,’ examiner relies on the broadest reasonable interpretation of this term. And since Whelan discloses that the SAM film is releasable ([0009]), it is [sic] anticipates the limitation ‘a release film’ recited in claims 13 and 16.” Answer 9. The Examiner also finds, “In response to appellant's argument that the references fail to show certain features of applicant's invention, it is noted that the features upon which appellant relies (i.e., suitable to quantitatively transfer a soft -composite material, to transfer the thermal paste, or to assemble a chip) are not recited in the rejected claim(s).” Id. Appellant further argues that Liakos teaches away from the claimed invention because a SAM [self-assembled monolayers] having functionalities that would react with a heat paste is not suitable for release films because the heat paste cannot be transferred quantitatively if it is covalently linked to the SAM. Appeal Brief 9. The Examiner finds, “Liakos discloses a monolayer of closely packed self-assembled molecules (SAM). Also, as evidenced by Whelan, a SAM film is capable to be a releasable film (Whelan, [0009]). The appellant's arguments that the SAM film of Liakos is not suitable to transfer a heat paste are not convincing because the features upon which appellant relies are not recited in the rejected claim(s).” Answer 9-10. Appellant argues that Pellerite fails to teach the claimed invention because Pellerite is silent in regard to the suitability of SAMs for Appeal 2011-002798 Application 11/626,468 6 transferring a substance such as a heat paste. Appeal Brief 10. The Examiner also finds that Pellerite discloses the invention as claimed because Pellerite discloses a monolayer of closely packed self-assembled molecules [SAM]. Answer 10. We do not find Appellant’s arguments to be persuasive in regard to the Whelan, Liakos and Pellerite anticipation rejections because the arguments are not commensurate with the scope of the claims. During examination of a patent application, a claim is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted), it is improper to read into the claims limitations from examples given in the Specification. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). Each of the references (Whelan, Liakos and Pellerite) discloses the invention as it is claimed in claim 13. See Answer 3- 6. Although, Appellant cited to his Specification (paragraphs [0004], [0014] for example) for support to narrowing the scope of the claimed release film limitation however both citations are dubious and fail to set forth a definitive definition of a release film. Therefore we sustain the Examiner’s anticipation rejections of independent claim 13, as well as the dependent claims not separately argued. Appellant argues that Frey and Pellerite, even if combined, fail to suggest a release film. Appeal Brief 11. Appellant further argues that Frey Appeal 2011-002798 Application 11/626,468 7 cannot be reasonably considered to correspond to a release film for transferring a soft composite material as claimed. Id. However, the Examiner finds: Frey in view of Pellerite discloses the step limitations of claim 13, i.e. applying a monolayer of closely packed self- assembled molecules (Frey, Fig.lC, numeral 131; [0027]) to at least one side of a film (Frey, Fig.lC, numeral 105, 110), wherein the release film having a water contact angle of about 100 degree of higher (Pellerite, pager 11728, Tables 1 and 2). And as evidenced by Whelan, a SAM film is capable to be a releasable film (Whelan, [0009]). Answer 11. We do not find Appellant’s arguments to be persuasive because we observe that Appellant attacks the cited references in isolation. See Appeal Brief 10-11. Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” (Emphasis added) (citations omitted)). Therefore we sustain the Examiner’s obviousness rejection of independent claim 13, as well as, the dependent claims not separately argued. Appeal 2011-002798 Application 11/626,468 8 DECISIONS The Examiner’s anticipation rejections of claims 2-5, 7, 9-11 and 13-16 are affirmed. The Examiner’s obviousness rejection of claims 2-9, 12, 13 and 16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). 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