USHIO DENKI KABUSHIKI KAISHADownload PDFPatent Trials and Appeals BoardMar 22, 20212020001020 (P.T.A.B. Mar. 22, 2021) 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. 14/655,046 06/23/2015 Kenichi HIROSE 009400-20 7745 78198 7590 03/22/2021 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 EXAMINER MARKOFF, ALEXANDER ART UNIT PAPER NUMBER 1711 NOTIFICATION DATE DELIVERY MODE 03/22/2021 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): info@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENICHI HIROSE, HIROKI HORIBE, TOMOYUKI HABU, and SHINICHI ENDO Appeal 2020-001020 Application 14/655,046 Technology Center 1700 Before BEVERLY A. FRANKLIN, MAHSHID D. SAADAT, and DONNA M. PRAISS, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, and 4–19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ushio Denki Kabushiki Kaisha (Ushio, Inc.). Appeal Br. 2. Appeal 2020-001020 Application 14/655,046 2 CLAIMED SUBJECT MATTER The claims are directed to “a desmearing method and a desmearing device, which are applied to a wiring substrate material including a laminated body of insulation layers, which are made from resin containing a filler, and a conductive layer.” Spec. ¶ 1. Claim 1 illustrates the claimed subject matter and is reproduced below: 1. A desmearing method for a wiring substrate material that includes a laminated body of an insulating layer made from resin containing a filler and a conductive layer, said wiring substrate material having a through hole that penetrates through said insulation layer, said desmearing method comprising, in this order: an ultraviolet irradiation treatment step of irradiating the wiring substrate material with an ultraviolet beam with a wavelength equal to or less than 220 nm in an atmosphere thereby removing a smear, which is derived from an organic substance, from the wiring substrate material; and a physical vibration treatment step of applying physical vibrations to the wiring substrate material which has undergone the ultraviolet irradiation treatment step thereby removing a smear, which is derived from an inorganic substance, from the wiring substrate material. Appeal Br. 8 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kazunori JP H08-180757 A July 12, 1996 Maeda ’700 JP 2005-294700 A Oct. 20, 2005 Maeda ’194 US 2012/0018194 A1 Jan. 26, 2012 Appeal 2020-001020 Application 14/655,046 3 REJECTIONS Claims 1, 2, 4–8, and 11–182 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Maeda ’194 and Maeda ’700.3 Final Act. 4–6. Claims 9, 10, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Maeda ’194, Maeda ’700, and Kazunori.4 Final Act. 6–7. ISSUE ON APPEAL Appellant’s arguments in the Appeal Brief present the following dispositive issue: Whether the Examiner erred in finding the combination of Maeda ’194 and Maeda ’700 teaches or suggests the following limitations recited in independent claims 1 and 13: an ultraviolet irradiation treatment step of irradiating the wiring substrate material with an ultraviolet beam with a wavelength equal to or less than 220 nm in an atmosphere thereby removing a smear, which is derived from an organic substance, from the wiring substrate material; and a physical vibration treatment step of applying physical vibrations to the wiring substrate material which has undergone the ultraviolet irradiation treatment step thereby removing a smear, which is derived from an inorganic substance, from the wiring substrate material. See Appeal Br. 4–6 (emphases added). 2 The Examiner indicated that “[t]he rejection of claim 20 has been withdrawn in view of cancellation of the claim by the after-final amendment filed 03/11/2019, which has been entered.” Ans. 6. 3 The Examiner refers to Maeda ’700 as JP 2005-294700. Final Act. 4. 4 The Examiner refers to Kazunori as JP 08-180757. Final Act. 6. Appeal 2020-001020 Application 14/655,046 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions in the Appeal Brief and the Reply Brief that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief. As discussed below, we are persuaded by Appellant’s contentions of Examiner error. For the “physical vibration treatment” limitation at issue, the Examiner relies on the disclosure in Maeda ’194 of applying an “etching solution or plasma cleaning and also comprising application of alkaline and high pressure water/ultrasonic cleaning.” Final Act. 4 (citing Maeda ’194 Abstract, ¶¶ 1, 9–24, 33–41, 45–48). The Examiner specifically maps the recited physical vibration treatment to the disclosure of “high pressure water/ultrasonic cleaning” of Maeda ’194. Id. The Examiner further finds Maeda ’700 discloses “that application of the ultraviolet irradiation with the wavelength as claimed in the atmosphere comprising oxygen is more effective than the plasma treatment.” Final Act. 5 (citing Maeda ’700 ¶ 17). According to the Examiner, combining Maeda ’700 with Maeda ’194 would have been obvious to one of ordinary skill “in order to improve efficiency of the treatment since JP 2005-294700 teaches that the ultraviolet irradiation step is more effective than the plasma treatment.” Id. Appellant contends the Examiner erred in finding the proposed combination teaches or suggests the disputed claim limitation because First, ¶0016 of JP ‘700 explicitly indicates that a wet blasting step can remove all of a smear, and therefore no additional treatment to remove a smear would be necessary. Thus, one of ordinary skill in the art, upon reading ¶0016 of JP ‘700, would readily understand that such wet blasting is the Appeal 2020-001020 Application 14/655,046 5 only desmearing step that is taught or suggested by JP ‘700. Accordingly, the UV irradiation treatment of JP ‘700 is not a desmearing step, and therefore would not be obvious to combine into the desmearing process of Maeda. Appeal Br. 4. Appellant also contends: Second, although ¶0017 of JP ‘700 does indicate that the above UV irradiation treatment may be more effective than plasma treatment, this assertion is only made with regard to modifying the surface of the inner wall of the through hole, i.e., when imparting the hydrophilicity to the inner wall of the through hole. That is, JP ‘700 does not teach or suggest that a UV irradiation treatment is more effective than a plasma treatment in the context of a desmearing process, such as the desmearing process of Maeda. Thus, from reading ¶0017 of JP ‘700, one of ordinary skill in the art would understand that such a UV irradiation treatment is better than the plasma treatment only when modifying the surface of an object (such as a through hole). Appeal Br. 5. Based on these challenges to the reference teachings, Appellant argues “because JP ‘700’s UV irradiation treatment is, in fact, a surface modification treatment (i.e., a hydrophilicity imparting treatment), it is not analogous to Maeda’s desmearing plasma treatment, and thus one of ordinary skill in the art would not be motivated to substitute Maeda’s desmearing plasma treatment with JP ‘700’s UV irradiation surface modification treatment.” Id. In response, the Examiner explains that Maeda ’194 applies potassium permanganate solution or oxygen plasma for desmearing, which would be enhanced using Maeda ’700’s UV irradiation instead of plasma treatment to improve the treatment efficiency. Ans. 6–7. The Examiner also finds substituting Maeda ‘’194’s plasma step with the ultraviolet irradiation process of Maeda ’700 would have been obvious “in order to improve efficiency of the treatment since JP 2005-294700 teaches that the ultraviolet Appeal 2020-001020 Application 14/655,046 6 irradiation step is more effective than the plasma treatment.” See Ans. 7. With respect to the purpose of using UV treatment in Maeda ’700, the Examiner makes similar findings and conclusions stated above, such as substituting the oxygen plasma step of Maeda ‘194 with the ultraviolet irradiation step of Maeda ’700 would improve efficiency of the treatment since Maeda ’700 teaches that “the ultraviolet irradiation step is more effective than the plasma treatment in the treatments using active oxygen.” Ans. 7–8. Based on our review of the references, we are persuaded by Appellant’s arguments. We specifically find, in paragraph 17, Maeda ’700 discloses that by using a short wavelength ultraviolet ray treatment, “a functional group showing hydrophilicity, such as a hydroxyl group, . . . is generated on both surfaces of the polyimide resin film 1 and the outermost surface of the inner peripheral surface of the through hole H.” See Maeda ’700 ¶ 17; Fig. 1. As argued by Appellant (Appeal Br. 5), the disclosed UV irradiation is used to modify the surface properties of the resin, and not to remove a smear from the surface of the resin layer. In fact, Maeda ’700 uses a wet blasting treatment for removing the scrap pieces or the smear. See Maeda ’700 ¶ 16; see also Appeal Br. 4. Therefore, Maeda ’700, at best, discloses using a UV irradiation step for treating and modifying the resin surface, but provides no teaching that the UV irradiation contributes to removing a smear from the resin substrate. We also agree with Appellant (see Appeal Br. 5; Reply Br. 2) that one of ordinary skill in the art would not substitute Maeda ’700’s UV irradiation step, which is disclosed for altering the resin surface, for the oxygen plasma desmearing process of Maeda ’194. As Appellant states, the Examiner’s proposed modification to substitute different processes that achieve different Appeal 2020-001020 Application 14/655,046 7 results is not based on any reference teaching and, as stated by Appellant, is based on hindsight. See Appeal Br. 5. In view of the above analysis, we are persuaded by Appellant’s contentions that combining the references, even if properly combined, does not teach or suggest the disputed limitations. Therefore, on the record before us, we are constrained to conclude the Examiner erred in rejecting claim 1, as well as independent claim 13 that recites similar limitations, as obvious. DECISION For the reasons stated above, we do not sustain the obviousness rejection of independent claims 1 and 13, as well as claims 2, 4–8, 11, 12, and 14–18 dependent therefrom, over Maeda ’194 and Maeda ’700. The Examiner has not relied upon the additional Kazunori reference to teach or suggest the above-identified limitation in rejecting claims 9, 10, and 19. See Final Act. 6–7. Accordingly, for reasons similar to those above for independent claims 1 and 13, we do not sustain the rejection of the remaining claims. Appeal 2020-001020 Application 14/655,046 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–8, 11–18 103 (a) Maeda ’194, Maeda ’700 1, 2, 4–8, 11–18 9, 10, 19 103 (a) Maeda ’194, Maeda ’700, Kazunori 9, 10, 19 Overall Outcome 1, 2, 4–19 REVERSED Copy with citationCopy as parenthetical citation