Ex Parte 6402013 et al

Board of Patent Appeals and Interferences

Oct 30, 2009

90006724 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SENJU METAL INDUSTRY CO., LTD. and TDK
CORPORATION,
Patent Owners and Appellants
____________

Appeal 2009-012506
Reexamination Control 90/006,724
Patent 6,402,013 B21
Technology Center 3900
____________

Decided: October 30, 2009
____________

Before CAROL A. SPIEGEL, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘013 Patent”) issued to
Hisayuki Abe, Toshihiko Taguchi, Yuji Kawamata, and Akiko Iwano on
June 11, 2002 from Application 09/726,588 filed on December 1, 2000.
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Senju Metal Industry Co., Ltd. and TDK Corporation, joint owners of
the ‘013 Patent under reexamination, appeal under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claims 1-7, 9-11, 13-23, 25-27, 29-31, 33-43,
46, 47, and 50 on various grounds (Appeal Brief filed March 2, 2009,
hereinafter “App. Br.”; Examiner’s Answer mailed April 2, 2009, hereinafter
“Ans.,” 3; Final Office Action mailed May 15, 2008).2 We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.3

STATEMENT OF THE CASE
The ‘013 Patent states that the invention relates to a soldering flux for
soldering components (e.g., electronic components) (col. 1, ll. 5-8).
Claim 1 on appeal reads as follows:
1. A soldering flux [comprising] consisting essentially of
0.1-70 mass percent of an organic acid selected from rosins and
carboxylic acid anhydrides,
0.1-10 mass percent of a thixotropic agent, wherein said
thixotropic agent is hardened castor oil,
5-40 mass percent of a volatile organic solvent
conventionally used in a soldering flux, and
a total of 10-95 mass percent of a thermosetting resin and
a curing agent, wherein during soldering of a [component, the
flux exhibits a function of securing the component by the

2 See Patent Assignment Abstract of Title, Reel 011690, Frame 0709, which
was entered into the record of this proceeding as “Title Report” on August
19, 2003.
3 Oral arguments were heard on October 14, 2009, a written transcript of
which will be entered into the record in due course.
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thermosetting resin] first member to a second member with
solder at a soldering temperature between 200-270°C, the first
member is secured to the second member by soldering and by
curing of the thermosetting resin, and soldering and curing of
the thermosetting resin of the soldering flux are carried out
simultaneously.
(Claims App’x, App. Br. 23; bracketed and underlined texts indicate
deletions and insertions, respectively, relative to the original patent claim.)

The Examiner relied upon the following as evidence of
unpatentability (Ans. 3-19):
Taguchi 5,176,759 Jan. 5, 1993
Takemoto 5,211,763 May 18, 1993
Casson 5,261,593 Nov. 16, 1993
Jenkinson 5,272,007 Dec. 21, 1993
Schneider 5,297,721 Mar. 29, 1994
Schwiebert 5,539,153 July 23, 1996
Diep-Quang 5,904,782 May 18, 1999
Hotchkiss 5,909,634 June 1, 1999
Gilleo 6,265,776 B1 July 24, 2001
Kihata4 JP 59-85394 A May 17, 1984
Saito5 JP 8-90282 A April 9, 1996
Patentees’ admitted prior art as discussed in the ‘013 Patent at column
6, lines 54-56.
Appellants rely on the following evidence in support of their position:
“DECLARATION UNDER 37 CFR 1.132” of Yuji Kawamata (App.
Br., Evidence App’x, Ex. 1, hereinafter “Kawamata Decl.”).
The Examiner rejected the claims as follows (Ans. 4-19):

4 The Examiner relied on the English language translation filed on July 24,
2003 (Ans. 13, n. 1; App. Br., Evidence App’x, Ex. 2).
5 The Examiner relied on a machine-generated English language translation,
which appears to have been entered into the record on March 1, 2007 (Ans.
13, n. 2).
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I. Claims 1-7, 9-11, 13-23, 25-27, 29-31, 33-43, 46, 47, and
50 under 35 U.S.C. § 112, ¶ 2, as indefinite;
II. Claims 43 and 46 under 35 U.S.C. § 305 as
impermissibly enlarging the scope of the claims of the
‘013 Patent under reexamination;
III. Claims 1, 2, 4-7, 9-11, 13-20, 23, 25-27, 29-31, 33-40,
and 43 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Diep-Quang and Gilleo;
IV. Claims 21, 22, 41, 42, and 46 under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of Diep-
Quang, Gilleo, and either Schneider or Takemoto;
V. Claim 47 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Diep-Quang, Gilleo, and
Schwiebert;
VI. Claim 50 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Diep-Quang, Gilleo,
Schwiebert, and either Schneider or Takemoto;
VII. Claims 1-7, 9-11, 13-15, 17-19, 21-23, 25-27, 29-31, 33-
35, 37-39, 41, and 42 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kihata,
Saito, Gilleo, Patentees’ admitted prior art, Jenkinson,
and Taguchi;
VIII. Claims 16, 20, 36, 40, 43, and 46 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of
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Kihata, Saito, Gilleo, Patentees’ prior art admissions,
Jenkinson, Taguchi, Hotchkiss, and Casson; and
IX. Claims 47 and 50 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kihata,
Saito, Gilleo, Patentees’ admitted prior art, Jenkinson,
Taguchi, Hotchkiss, Casson, and Schwiebert.

ISSUES
I. Indefiniteness
A. Claims 1-7, 9-11, 13-23, 25-27, 29-31, 33-43, 46, 47, and 50
The Examiner held that the recitation “volatile organic solvent
conventionally used in a soldering flux” (e.g., claim 1; underlining omitted)
renders the claims indefinite because the ‘013 Patent Specification does not
contain this language, let alone any disclosure that would enlighten one
skilled in the relevant art as to what solvents are covered by the recitation
(Ans. 4-5, 20-22).
Appellants, on the other hand, contend that the Kawamata Declaration
establishes that one skilled in the relevant art would understand the term
“volatile” to mean “evaporating rapidly or passing off readily in the form of
a vapor and that the solvents in the instant Abe [‘013] [P]atent fall under this
definition” (App. Br. 9). According to Appellants, “[o]ne skilled in the art
of preparing soldering fluxes would understand what solvents are
conventionally used in soldering flux” (id. at 10).

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Thus, the issue is:
Have Appellants shown reversible error in the Examiner’s conclusion
that one skilled in the relevant art would not be able to ascertain the scope of
the claim terms “volatile organic solvent conventionally used in a soldering
flux,” as recited in, e.g., claim 1?

B. Claims 27, 43, and 47
The Examiner held that claims 27, 43, and 47 were indefinite on
various grounds (Ans. 5-6). Without arguing the merits of the rejection,
Appellants assert that the Examiner refused entry of corrective amendments
(App. Br. 10-11).
As pointed out by the Examiner (Ans. 22), Appellants’ arguments are
limited to petitionable matters. Thus, we summarily affirm the Examiner’s
rejection of claims 27, 43, and 47 on these grounds.

II. Impermissible Enlargement
The Examiner held that claims 43 and 46 impermissibly enlarge the
scope of the ‘013 Patent claims (Ans. 6). Without arguing the merits of the
rejection, Appellants assert that the Examiner refused entry of corrective
amendments (App. Br. 11-12).
As pointed out by the Examiner (Ans. 23), Appellants’ argument is
limited to a petitionable matter. Thus, we summarily affirm the Examiner’s
rejection of claims 43 and 46 on this ground.

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III-VI. Obviousness Based on Diep-Quang as a Principal Reference
The Examiner found, inter alia, that Diep-Quang describes a
soldering flux including a non-reactive diluent (i.e., solvent) such as furfuryl
alcohol, which has a boiling point of 170°C (Ans. 7). The Examiner
reasoned that because Diep-Quang’s furfuryl alcohol has a boiling point
lower than that of ethylene glycol, which has a boiling of 197.6°C and is
disclosed as a suitable “volatile organic solvent conventionally used in a
soldering flux” (claim 1; underlining omitted), Diep-Quang describes this
claim limitation (Ans. 7-8).
Appellants counter that Diep-Quang specifically teaches that the prior
art compositions are free from volatile organic compounds or solvents (App.
Br. 13). Additionally, Appellants assert that the Kawamata Declaration
includes evidence of unexpected results over Kihata and that such evidence
“overcomes the obviousness rejections” (App. Br. 15-16).
Thus, the issues are:
Have Appellants shown reversible error in the Examiner’s finding that
Diep-Quang describes “a volatile organic solvent conventionally used in a
soldering flux” (underlining omitted), as recited in claim 1?
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion as to claim 1 by demonstrating unexpected results
over the applied prior art?

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VII-IX. Obviousness Based on Kihata as a Principal Reference
The Examiner reasoned that the teachings of Kihata, Saito, Gilleo, the
admitted prior art, Jenkinson, and Taguchi support a prima facie case of
obviousness (Ans. 13-16).
Appellants do not dispute the Examiner’s prima facie case. Rather,
Appellants contend that the Kawamata Declaration includes evidence of
unexpected results, which rebuts the Examiner’s obviousness conclusion
(App. Br. 19-21).
Thus, the sole issue is:
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion as to claim 1 by demonstrating unexpected results?

FINDINGS OF FACT (“FF”)
1. The language “volatile organic solvent conventionally used in a
soldering flux” does not appear in the ‘013 Patent Specification.
2. The ‘013 Patent Specification does not reasonably apprise one
skilled in the relevant art as to the extent of volatilities covered
by the term “volatile,” although non-limiting examples of
solvents, which are not explicitly identified as “volatile,” are
listed (col. 6, ll. 41-48).
3. The ‘013 Patent Specification states that ethylene glycol is one
of the solvents suitable for the invention (col. 6, l. 48).
4. It is undisputed that ethylene glycol has a boiling point of about
197°C (Ans. 7; App. Br. 9-21).
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5. Diep-Quang describes a “VOC-free” [i.e., volatile organic
compound or solvent-free] soldering flux consisting essentially
of an activating agent, an epoxy curing agent, and a thixotropic
agent blended in a mixture of a reactive epoxy resin and a non-
volatile liquid epoxy diluent (col. 2, ll. 54-64).
6. Diep-Quang discloses that furfuryl alcohol is a suitable epoxy
diluent (col. 3, ll. 25-30).
7. Diep-Quang indicates that furfuryl alcohol is not a “volatile”
organic compound or solvent as that term would normally be
understood by one skilled in the relevant art.
8. It is undisputed that furfuryl alcohol has a boiling point of about
170°C (Ans. 7; App. Br. 9-21).
9. Kawamata declares (Kawamata Decl., ¶ 5):
I consider the term “volatile” in the field of the subject
patent as meaning “evaporating rapidly” or “passing off
readily in the form of vapor.” I consider those organic
solvents described in the Abe patent as falling under this
definition without further explanation in the
specification.
10. While the Kawamata Declaration states that the claimed
invention provided superior properties compared to Kihata’s
Examples 1 and 2, it does not include any details of a
meaningful comparison (i.e., side-by-side experimental
evidence) between the claimed invention and the closest prior
art holding all variables constant except for the novel features
of the claimed invention (Kawamata Decl., ¶¶ 9 and 13-16).
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11. The Kawamata Declaration (including the portions thereof upon
which Appellants rely) did not include any comparison in the
form of experiments between the claimed invention against
Diep-Quang, wherein the actual difference (i.e., the recited
carboxylic acid anhydride versus the polyfunctional carboxylic
acid activating agent described in Diep-Quang) is shown to
impart unexpected results (Kawamata Decl., ¶¶ 9 and 13-16).
12. Nor does the Kawamata Declaration direct us to any
comparative experiments demonstrating any unexpected result
in using the recited “volatile organic solvent,” such as ethylene
glycol, versus a “non-volatile liquid epoxy diluent,” such as
furfuryl alcohol described in Diep-Quang.

PRINCIPLES OF LAW
To prevail in an appeal to this Board, Appellants must show reversible
error in the Examiner’s rejections. Cf. In re Kahn, 441 F.3d 977, 985-986
(Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994). “[T]he inventor’s lexicography governs.”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). But when a
claim recites a term of degree, the specification must contain some standard
for measuring the degree. Seattle Box Co., Inc. v. Indus. Crating & Packing,
Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . . Therefore, we look to the specification
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to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007).
This longstanding principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the
opportunity and responsibility to remove any ambiguity in claim term
meaning by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d at 322. “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” ICON Health, 496 F.3d at 1379.
“[R]esults must be shown to be unexpected compared with the closest
prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).

ANALYSIS
I. A. Indefiniteness
As to Rejection I. A, Appellants have not offered any argument in
support of the separate patentability of any claim. Accordingly, we confine
our discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
We discern no error in the Examiner’s cogent reasoning in support of
the indefiniteness rejection. While Diep-Quang may have used the term
“volatile organic compound” in the conventional sense to exclude a
compound with a relatively high boiling point (e.g., furfuryl alcohol with a
boiling point of about 170°C) (FF 5-8), Appellants failed to demonstrate that
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Patentees intended to do the same. Indeed, the claim term “volatile organic
solvent” does not even appear in the Specification (FF 1). Despite this
deficiency, Appellants’ position is that ethylene glycol, which has a boiling
point of about 197°C (a significantly higher boiling point than that of
furfuryl alcohol, a non-volatile organic solvent), is encompassed by the
terms “volatile organic solvent conventionally used in a soldering flux”
(claim 1; FF 3, 4, and 9). Thus, Appellants plainly use the term “volatile
organic solvent” in a manner contrary to the ordinary meaning of the term.
We realize that the use of terms contrary to their ordinary meanings,
in and of itself, does not render a claim indefinite, for Patentees are free to
act as their own lexicographers. Phillips, 415 F.3d at 1316. In this case,
however, the ‘013 Patent Specification does not reasonably apprise the full
scope of what Patentees mean by “volatile organic solvent conventionally
used in a soldering flux,” although non-limiting examples of solvents
suitable for the invention are listed (FF 2).
The circular reasoning offered in Kawamata’s testimony does not
rescue claim 1. Kawamata declares that the claim term “volatile” means
“evaporating rapidly” or “passing off readily in the form of vapor” (FF 9).
These proffered definitions, however, recite terms of degree (“rapidly” and
“readily”) on which the ‘013 Patent Specification is utterly silent. Seattle
Box, 731 F.2d at 826. Hence, one skilled in the relevant art would not be
able to ascertain whether an organic solvent with a boiling point of, e.g.,
200°C would be covered by the disputed claim terms.
For these reasons, we affirm the Examiner’s rejection on this ground.

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III-VI. Obviousness Based on Diep-Quang as a Principal Reference
Appellants have not offered any argument in support of the separate
patentability of any claim. Furthermore, Appellants have relied on the same
arguments for each of the Rejections III-VI. Accordingly, we confine our
discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner reasoned that because Diep-Quang’s furfuryl alcohol
diluent has a boiling point lower than a solvent that Appellants consider as
suitable for the invention, Diep-Quang’s furfuryl alcohol is in fact a “volatile
organic solvent” as that term is used in claim 1 (Ans. 7-8). We agree.
Appellants have acknowledged that ethylene glycol, which has a
boiling of about 170°C, is a “volatile organic solvent” (FF 3 and 9). Under
these circumstances, one skilled in the relevant art would have reasonably
understood that any organic solvent previously used in the soldering flux art
with a boiling point comparable to or lower than ethylene glycol can be
considered a “volatile organic solvent” as that term is used herein. Diep-
Quang’s furfuryl alcohol is precisely such an organic solvent (FF 8). While
Diep-Quang considers furfuryl alcohol to be a non-volatile solvent in the
conventional sense (FF 7), that does not preclude a conclusion that
Appellants’ claim terms as used in the present proceeding encompass
furfuryl alcohol. Phillips, 415 F.3d at 1316.
Appellants’ reliance on the Kawamata Declaration as demonstrating
unexpected results over Diep-Quang is misplaced (App. Br. 14-15). On this
matter, we are in complete agreement with the Examiner’s view concerning
the insufficiency of the proffered evidence (Ans. 26-31). In particular,
Appellants have failed to direct us to any meaningful experimental evidence
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demonstrating that the actual differences between the claimed subject matter
and Diep-Quang give rise to unexpected results (FF 10-12).
For these reasons, we uphold the Examiner’s rejections based on
Diep-Quang as a principal reference.

VII-IX. Obviousness Based on Kihata as a Principal Reference
Appellants have not offered any argument in support of the separate
patentability of any claim. Furthermore, Appellants have relied on the same
arguments for each of the Rejections VII-IX. Accordingly, we confine our
discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ contention that the Kawamata Declaration establishes
unexpected results over Kihata is without merit (App. Br. 18-21). While
Kawamata states that the claimed invention provides superior results
compared to Kihata’s Examples 1 and 2, Appellants failed to direct us to any
meaningful side-by-side comparison in which the inventive experiment was
identical to Kihata Examples 1 and 2 except for the novel features of the
claimed invention (FF 10). Thus, no reasonable conclusions can be drawn
as to whether any showing of unexpected results has been made, let alone a
showing commensurate in scope with the degree of patent protection
desired.
Accordingly, we affirm these rejections.

CONCLUSION
On this record, Appellants have failed to show reversible error in the
Examiner’s
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conclusion that one skilled in the relevant art would not be able to
ascertain the scope of the claim terms “volatile organic solvent
conventionally used in a soldering flux”;
conclusion that claims 27, 43, and 47 are indefinite;
conclusion that claims 43 and 46 impermissible enlarge the scope of
the original ‘013 Patent claims;
finding that Diep-Quang describes “a volatile organic solvent
conventionally used in a soldering flux,” as recited in claim 1;
obviousness conclusion as to claim 1 over Diep-Quang as a principal
prior art reference; and
obviousness conclusion as to claim 1 over Kihata as a principal prior
art reference.

DECISION
The Examiner’s decision to reject
I. Claims 1-7, 9-11, 13-23, 25-27, 29-31, 33-43, 46, 47, and
50 under 35 U.S.C. § 112, ¶ 2, as indefinite;
II. Claims 43 and 46 under 35 U.S.C. § 305 as
impermissibly enlarging the scope of the claims of the
‘013 Patent under reexamination;
III. Claims 1, 2, 4-7, 9-11, 13-20, 23, 25-27, 29-31, 33-40,
and 43 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Diep-Quang and Gilleo;
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IV. Claims 21, 22, 41, 42, and 46 under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of Diep-
Quang, Gilleo, and either Schneider or Takemoto;
V. Claim 47 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Diep-Quang, Gilleo, and
Schwiebert;
VI. Claim 50 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Diep-Quang, Gilleo,
Schwiebert, and either Schneider or Takemoto;
VII. Claims 1-7, 9-11, 13-15, 17-19, 21-23, 25-27, 29-31, 33-
35, 37-39, 41, and 42 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kihata,
Saito, Gilleo, Patentees’ admitted prior art, Jenkinson,
and Taguchi;
VIII. Claims 16, 20, 36, 40, 43, and 46 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of
Kihata, Saito, Gilleo, Patentees’ prior art admissions,
Jenkinson, Taguchi, Hotchkiss, and Casson; and
IX. Claims 47 and 50 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kihata,
Saito, Gilleo, Patentees’ admitted prior art, Jenkinson,
Taguchi, Hotchkiss, Casson, and Schwiebert
is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
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AFFIRMED

bim

FOR PATENT OWNER:

BINGHAM MCCUTCHEN, LLP
THREE EMBARCADERO CENTER
SAN FRANCISCO, CA 94111-4067