Ex Parte Amla et al

Patent Trial and Appeal Board

Dec 28, 2015

11634471 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/634,471 12/06/2006 TarunAmla
20306 7590 12/29/2015
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05-896-A 5116
EXAMINER
LAM, CATHY FONG FONG
ART UNIT PAPER NUMBER
CSDC
MAILDATE DELIVERY MODE
12/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T ARUN AMLA,
PEGGY M. CONN, and JEFF KAMLA
Appeal2014-004212
Application 11/634,471
Technology Center 1700
Before BRADLEY R. GARRIS, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 16-18 and 20-24 of Application
11/634,471under35 U.S.C. § 103(a) as obvious and also rejected claim 24
under 35 U.S.C. § 112, i-f 1 as lacking written description support. Non-Final
Act. (May 6, 2013). Appellants 1 seek reversal of these rejections. Because
this is at least the second rejection for these claims, see Final Act. (May 22,
2012), we have jurisdiction. 35 U.S.C. §§ 6(b), 134.
For the reasons set forth below, we AFFIRM.
1 Isola USA Corp. is identified as the real party in interest. App. Br. 1.
Appeal2014-004212
Application 11/634,471
BACKGROUND
The '4 71 Application describes resin coated low profile copper sheets
and laminates made from them. Spec. i-f 1. Such sheets and laminates are
useful in high-speed and high-frequency printed circuit boards. Id.
Claim 16 is the '471 Application's only independent claim and is
reproduced below from the Claims Appendix to the Appeal Brief:
16. A laminate comprising:
one or more resin sheets[, 2] each resin sheet including a
resin impregnated fiber core; and
at least one resin coated low profile copper sheet
laminated together with the one or more resin sheets, the resin
coated low profile copper sheet including a partially cured sheet
of low dielectric loss resin and the layer of low profile copper
formed by depositing copper on a surface of the partially cured
low dielectric loss resin sheet such that the deposited copper
has a surface roughness of from about 0.5 to about 3.5 microns,
the laminate further including a resin gap dividing a resin sheet
from the layer of low profile copper wherein the one or more
resin sheets are at least partially cured.
App. Br. 11.
2 If prosecution of the '4 71 Application continues, Appellants should
consider whether an amendment to correct this apparent grammatical error is
appropriate.
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Application 11/634,471
REJECTIONS
On appeal, the Examiner maintains3 the following rejections:
1. Claim 24 is rejected under 35 U.S.C. § 112, i-f 1 as lacking support
in the '471 Application's written description. Non-Final Act. 3;
Ans. 3.
2. Claims 16-18 and 20-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination ofKanzaki,4 Haas, 5and Ando. 6
Non-Final Act. 6; Ans. 3.
DISCUSSION
Rejection 1. The Examiner rejected claim 24 as lacking support in
the '471 Application's Specification. Non-Final Act. 3. In particular, the
Examiner found that "[ t ]here is no support in the original specification
corresponding to the subject matter in claim 24 .... In fact, in paragraph
[0024], it states that they are the same resins." Id.
Claim 24 is reproduced below from the Claims Appendix:
24. The laminate of claim 16 wherein the resin of the at least
one resin sheet and the resin of the resin coated copper are
different resins.
App. Br. 11.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
3 The Examiner has withdrawn a second obviousness rejection of claims 16-
18, 20, 21, and 23. Ans. 5-6.
4 US 6,417,459 Bl, issued July 9, 2002.
5 US 6,245,696 Bl, issued June 12, 2001.
6 US 5,382,333, issued January 17, 1995.
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Application 11/634,471
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
In arguing for reversal of this rejection, Appellants also point to if 24
of the Specification. Paragraph 24 is reproduced below:
The resins useful for manufacturing the prepregs
discussed above is [sic, are] generally the same resins that is
[sic, are] useful as the low dielectric loss material that is applied
to or to which a low profile copper layer is applied. One
example of a useful class of resins is thermosetting resin
compositions comprising at least one elastomer; at least one
ester; and at least one flame retardant. Two specific examples
of low dielectric loss resin systems are discussed below.
Spec. if 24 (emphasis added).
Appellants argue that a person of ordinary skill in the art would have
understood at the time of the invention that if 24 teaches that the resin used
to manufacture the prepregs may or may not be the same resin that is applied
to the copper foil. App. Br. 6. The Examiner responds that if 24 "does not
clearly state that the resin on the copper foil is different from the resin in the
prepreg." Ans. 6.
After reviewing the '4 71 Application's Specification, we find that the
subject matter of claim 24 is supported by Appellants' Specification. Not
only does if 24 teach that the resins may or may not be the same, we also
note that if 5 6 reads:
The resins used in this invention for making the prepregs
or C-staged resin sheets and for making the resin coated low
profile copper sheet may include optional fillers. The use of
fillers allows for the tailoring of dielectric properties of the
resulting copper clad laminate. Moreover, fillers can be used in
one resin system and not the other and still be useful in
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Appeal2014-004212
Application 11/634,471
controlling dielectric properties of the resulting copper clad
laminate.
Spec.i-f 56 (emphasis added).
In view of the foregoing, we find that the '471 Application's
Specification establishes that Appellants, at the time of filing,
contemplated-i.e., had possession of---embodiments of the invention that
used two different resin systems as required by claim 24. Thus, we reverse
the rejection of claim 24 under 35 U.S.C. § 112, i12.
Rejection 2. The Examiner rejected claims 16-18 and 20-24 as
obvious over the combination ofKanzaki, Haas, and Ando. Non-Final
Act. 6.
Appellants present separate arguments for reversal of this rejection
with respect to claims 16, 18, and 20. We shall address these claims in tum.
The remaining dependent claims---claims 17 and 21-24---stand or fall with
independent claim 16. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claims 16, 17, and 21-24. Appellants argue that the rejection of
claim 16 should be reversed because none of the cited references discloses
lamination of a resin coated copper material to a resin sheet that includes a
resin impregnated fiber core. App. Br. 8.
In rejecting claim 16, the Examiner found that Kanzaki describes a
printed circuit board comprising a prepreg, two adhesive players, and two
copper foil layers. Non-Final Act. 7. The Examiner further found that
Kanzaki's prepreg comprises a woven glass cloth and a fluororesin. Id. The
Examiner found that Kanzaki describes formation of an uncured or B-stage
adhesive layer on both sides of the prepreg. Id.; see Kanzaki col. 6, 11. 18-
28. As the Examiner found, Ans. 2, Kanzaki describes formation of copper
foil layers on the adhesive-coated prepreg. The Examiner took the position
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Application 11/634,471
that the uncured adhesive layer corresponds to the claimed partially cured
sheet of low dielectric loss resin recited in claim 16. Non-Final Act. 7;
Ans. 3. In response to Appellants' argument, the Examiner explained:
Kanzaki does not teach the b-staged resin is coated onto the
copper foils, but instead the b-staged resin coated onto the
surfaces of the prepreg . . . . Examiner takes the position that
the final product (or structure) would be the same regardless of
whether the adhesive is formed onto the prepreg first or formed
onto the copper foil first.
Ans. 7.
We agree with the Examiner that claim 16 is a product-by-process
claim. We also agree with the Examiner that the structure that is the subject
matter of claim 16 is described or suggested by the combination of Kanzaki,
Haas, and Ando. Thus, claim 16 is unpatentable over the combination of
these references. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the
product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process."). 7
Appellants argue that the properties of the structure that is the subject
matter of claim 16 are distinct from the properties of the structure described
or suggested by the combination of cited references. See Reply Br. 4--5
(citing Spec. i-f 13). The properties that form the basis for Appellants'
arguments, however, are not recited in any of the claims at issue. Nor do
7 We note, but need not rely upon, the process and product described in
Example 1 of Haas. In example 1, Haas describes lamination of a copper
foil coated with a B-stage resin onto a prepreg. See Haas col. 7, line 47---col.
8, line 4. Because we have affirmed the Examiner's rejection under
35 U.S.C. § 103(a), we need not decide whether this disclosure in Haas
might warrant a rejection under 35 U.S.C. § 102(b).
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Appellants explain how these properties are the result of a structural
difference between the subject matter of claim 16 and the structure
suggested by the combination of cited references. Thus, we are not
persuaded by Appellants' argument.
In view of the foregoing, we affirm the rejection of claims 16, 17, and
21-24 as unpatentable over the combination of Kanzaki, Haas, and Ando.
Claim 18. Appellants argue that claim 18 is independently patentable
over the cited prior art because the Examiner has not provided any factual
basis for the rejection of claim 18. App. Br. 9.
We are not persuaded by Appellants' arguments. In both the Non-
Final Action and the Answer, the Examiner found that Haas describes a
prepreg comprised of a B-stage resin or a C-stage resin. See Non-Final
Act. 8 (citing Haas col. 3, 11. 36-41); Ans. 7. We do not discern error in this
finding. Both Haas and Kanzaki describe the use of a prepreg in a printed
circuit board. Thus, the Examiner correctly concluded that the use of Haas's
prepreg in Kanzaki' s apparatus amounts to substitution of a known
equivalent structure to achieve a predictable result. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
In view of the foregoing, we affirm the rejection of claim 18.
Claim 20. Appellants also argue that dependent claim 20 is
independently patentable over the cited prior art. App. Br. 9. In particular,
Appellants argue that "claim 20 is directed to a laminate that further includes
a resin layer located between the resin sheet and at least one resin coated low
profile copper sheet." Id. Appellants argue that none of the references
discloses such a structure. Id. We are not persuaded by this argument.
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Appellants' argument focuses on the disclosure in Endo. Id. This
argument, however, does not address the Examiner's reason for finding that
the limitation set forth in claim 20 would have been obvious to a person of
ordinary skill in the art. In the Non-Final Action, the Examiner concluded
that the subject matter in claim 20 would have been obvious to a person of
ordinary skill in the art because Haas teaches that having multiple resin
layers allows a person of skill in the art to create a desired resin thickness to
accommodate different circuit topography. Non-Final Act. 8 (citing Haas
col. 4, 11. 19-21). Because Appellants' argument does not address the basis
of the Examiner's reasoning, we also affirm the rejection of claim 20.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claim 24 as
lacking written description support. We, however, affirm the rejection of
claims 16-18 and 22-24 as obvious over the combination of Kanzaki, Haas,
and Ando. Thus, we affirm the rejection of all of the pending claims in the
'4 71 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
tc
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