USHIO DENKI KABUSHIKI KAISHA

Patent Trials and Appeals Board

Mar 22, 2021

2020001020 (P.T.A.B. Mar. 22, 2021)

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

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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.

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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
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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
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Application 14/655,046
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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