Ex Parte Ohsawa et al

Board of Patent Appeals and Interferences

Jun 23, 2004

09710314 (B.P.A.I. Jun. 23, 2004)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENJI OHSAWA and TOMOSHI OHDE
____________
Appeal No. 2003-2138
Application No. 09/710,314
____________
ON BRIEF
____________
Before BARRETT, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 6-10 ,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2003-2138
Application No. 09/710,314
2
Appellants’ invention relates to a method for making a semiconductor device
using a nickel film for stopping etching. An understanding of the invention can be
derived from a reading of exemplary claim 6, which is reproduced below.
6. A method for making a film circuit comprising:
a step of forming wiring films on a nickel film for stopping etching as
an underlying layer by plating using a mask film, the mask being
selectively formed on a front surface of a metal substrate;
a step of forming a base comprising an insulating resin and having
electrode-forming holes on the front surface of the metal substrate such
that at least parts of the wiring films are partly exposed; and
a step of etching at least the region of the metal substrate, in which
the wiring films are formed, from the back surface until the nickel film for
stopping etching is exposed.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Fukutomi et al. (Fukutomi) 5,976,912 Nov. 2, 1999
Claims 6-10 stand rejected under 35 U.S.C. § 102 as being anticipated by
Fukutomi.
Appeal No. 2003-2138
Application No. 09/710,314
3
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejection, we make reference to the examiner's
answer (Paper No. 11, mailed Mar. 27, 2003) for the examiner's reasoning in support of
the rejection, and to appellants’ brief (Paper No. 10, filed Feb. 10, 2003) for appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellants argue that in contrast to the claimed invention, the process of
Fukutomi involves the plating of a nickel layer on a copper foil and then a mask and
wiring film is applied, while the claimed invention requires a mask film selectively formed
on the front of a metal substrate, followed by depositing a nickel film underlayer and a
wiring film. Appellants additionally argue that a base is not formed on the front surface
of the metal substrate, but instead the base is formed after the metal substrate has
been removed. (See brief at page 3.) We agree with appellants. As pointed out
Appeal No. 2003-2138
Application No. 09/710,314
4
by our reviewing court, we must first determine the scope of the claim. "[T]he name of
the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998). Therefore, we look to the limitations set forth in independent claim 6.
From our review of the teachings of Fukutomi, we find that the specific sequence of
steps is not expressly taught by any one embodiment of Fukutomi as would be required
by Section 102.
To the extent that the rejection may be based on the principles of inherency -
since Fukutomi does not expressly describe that which is claimed -- we note that our
reviewing court has set out clear standards for a showing of inherency, which have not
been attained in the instant case. To establish inherency, the extrinsic evidence "must
make clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary
skill." In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted). We are persuaded by appellants that the Section 102 rejection of
each claim on appeal is in error. We thus do not sustain the rejection of claims 6-10
under 35 U.S.C. § 102 as being anticipated by Fukutomi.
Appeal No. 2003-2138
Application No. 09/710,314
5
CONCLUSION
To summarize, the decision of the examiner to reject claims 6-10 under 35
U.S.C. § 102 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JLD/vsh
Appeal No. 2003-2138
Application No. 09/710,314
6
David R. Metzger, Esq.
Sonnenschein Nath & Rosenthal
P O Box #061080
Wacker Drive Station Sears Tower
Chicago, IL 60606-1080