Yang, Rui et al.

Patent Trials and Appeals Board

Aug 21, 2019

14391459 - (D) (P.T.A.B. Aug. 21, 2019)

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.
14/391,459 10/09/2014 Rui Yang 68097US005 4603
32692 7590 08/21/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUI YANG, HUI LUO, and CARL E. FISHER
____________

Appeal 2019-000857
Application 14/391,459
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, BRIAN D. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–14, and 16–20. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.

1 This Decision includes citations to the following documents:
Specification filed October 9, 2014 (“Spec.”); Final Office Action mailed
December 21, 2017 (“Final Act.”); Appeal Brief filed May 18, 2018
(“Appeal Br.”); Examiner’s Answer mailed September 14, 2018 (“Ans.”);
and Reply Brief filed November 9, 2018 (“Reply Br.”).
2 Appellant/Applicant is 3M INNOVATIVE PROPERTIES COMPANY,
which, along with 3M Company, is identified in the Appeal Brief as the real
party in interest. (Appeal Br. 2.)
Appeal 2019-000857
Application 14/391,459

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THE INVENTION
Appellant states the invention relates to thermally conductive
substrate articles. (Spec. 1, ll. 3–4.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. An article comprising:
a flexible thermally conductive polymeric layer comprising an
epoxy resin and a long-strand polymeric nonwoven material
embedded in the epoxy resin, wherein the polymeric nonwoven
material is heat stable at about 280°C, and wherein the polymeric
nonwoven material is a chemically etched polymeric nonwoven
material having a density less than about 7g/m2.
(Appeal Br. (Claims Appendix) 8.)

REJECTION
The Examiner rejected claims 1, 3–14, and 16–20 under 35 U.S.C.
§ 103 as obvious over Kanakarajan et al. (US 2009/0142567 A1; published
June 4, 2009, hereinafter “Kanakarajan”), Fujimori (JP 2006-200066 A,
published August 3, 2006, citations to English translation of record), Burch
(US 5,024,858, issued June 18, 1991), with evidentiary support from Xin-
Gui Li et al. (Thermal Degradation of Kevlar Fiber by High-Resolution
Thermogravimetry, 71 J. APPL. POLY. SCI. 565–71 (1999)). (Final Act. 2–6;
Ans. 3–7.)
We limit our discussion to independent claim 1, which is sufficient for
disposition of this appeal.

Appeal 2019-000857
Application 14/391,459

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ISSUE
The Examiner found, inter alia, that Kanakarajan discloses a circuit
board including a non-woven fabric embedded in an epoxy resin and
Fujimori discloses a nonwoven fabric with a basis weight overlapping the
claims, but Kanakarajan and Fujimori are silent with regard to chemical
etching. (Final Act. 2–4.) The Examiner found that Burch discloses
chemical etching nonwoven fabrics for circuit boards in order to form
conducting or semiconducting metallic sites. (Id. at 4, citing Burch, col. 1,
ll. 10–20 and 58–69; col. 2, ll. 1–10; col. 3, ll. 20–25.) The Examiner
determined it would have been obvious to have etched the non-woven fabric
of Kanakarajan and Fujimori “in order to provide regions of electrical
conductivity (or semi-conductivity) having improved adhesion (Burch: col.
1, lines 10–20 and 58–69; col. 2, lines 1–10; col. 6, lines 43–45).” (Id.) The
Examiner determined “[t]aking the three references as a whole, one of
ordinary skill would recognize that the process of Burch may be leveraged to
create the conductive and semiconductive portions innate to a circuit board
with greater adhesion of the circuit pattern to the board (Burch: col. 6, lines
43–45).” (Id.)
Appellant argues, inter alia, that one of ordinary skill in the art would
have no reason to etch the fabric in Kanakarajan, which is embedded in the
dielectric layer of the composite sheet disclosed therein, because there would
be no contact between the circuit pattern and the fabric, and thus, no greater
adhesion of the circuit pattern to the board. (Appeal Br. 3–5.) Appellant
contends Burch is directed to providing metalized polymers useful as
electrical conductors or semiconductors and there is no disclosure that a
metalized polymer could be useful in a circuit board. As such, Appellant
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Application 14/391,459

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contends the Examiner does not have valid rational underpinning and has
relied on impermissible hindsight. (Id. at 3–5.)
Accordingly, the dispositive issue with respect to this rejection:
Has Appellant identified a reversible error in the Examiner’s
determination that it would have been obvious to have etched the fabric
layer of Kanakarajan in view of Burch?

DISCUSSION
We are persuaded by Appellant’s arguments that the Examiner’s
reasoning lacks sufficient rational underpinnings to support the rejection of
claim 1. In particular, as Appellant points out, Kanakarajan discloses the
metal is laminated on a major surface of the dielectric layer and not
necessarily in direct contact with the non-woven embedded in the dielectric
layer. (Appeal Br. 5, citing Kanakarajan ¶¶ 2, 8, and 158.) Indeed, in
describing the method of making the composite sheets, Kanakarajan
discloses that the base non-woven fabric is impregnated with a polymer
matrix by coating the polymer matrix onto a non-woven fabric or the
polymer matrix can be cast to form a film that is laminated to a non-woven
sheet. (Kanakarajan ¶¶ 6, 25.) Thus, Kanakarajan discloses the non-woven
fabric is embedded in the polymer matrix, rather than at the surface of the
polymer matrix.
In the Answer, the Examiner stated because the improved adhesion in
Burch “is directly tied to having etched fibers, one of ordinary skill would
need to have attached the metal portions to the etched fibers in order to
obtain the improved adhesion.” (Ans. 9.) However, given the disclosure in
Kanakarajan that the non-woven fabric is embedded in the polymer matrix in
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order to produce printed circuit boards, we agree with Appellant, the
Examiner’s rationale that Burch’s disclosure with respect to producing
metallized polymers for semiconductors “may be leveraged” is not
sufficiently explained to support the rejection of claim 1.
That is, Kanakarajan discloses a composite sheet with both a polymer
matrix and non-woven fabric, whereas Burch discloses only metallized
polymers. In this regard, we observe that Burch discloses that “due to the
bonding of [the] metal to polymer, the metal penetrates uniformly into the
polymer matrix,” where “[t]he penetration generates superior adhesion of
metal to polymer.” (Burch, col. 6, ll. 27–45.) We also observe Kanakarajan
discloses the composite sheets can firmly adhere to metal without using an
adhesive. (Kanakarajan ¶ 158.) As a result of these differing disclosures,
the Examiner has not provided a sufficient reason to support the position that
one of ordinary skill in the art would have incorporated the etching of the
non-woven fabric in Burch into the non-woven fabric of the composite sheet
of Kanakarajan.
Thus, the Examiner’s reasoning is not based on sufficient rational
underpinnings. “‘[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

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Application 14/391,459

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DECISION
We reverse the Examiner’s decision rejecting claims 1, 3–14, and 16–
20.

REVERSED