Ex Parte Berryman

Board of Patent Appeals and Interferences

Jun 30, 2009

10694888 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WALTER HENRY BERRYMAN
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Appeal 2009-002060
Application 10/694,888
Technology Center 1700
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Decided:1 June 30, 2009
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Before PETER F. KRATZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided
Date shown on this page of the decision. The time period does not run
from the Mail Date (paper delivery) or Notification Date (electronic
delivery).
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Application 10/694,888

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Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-4, 6, 7, and 9-12, all of the pending claims. 2 We have jurisdiction
under 35 U.S.C. § 6.
Appellant’s invention relates to a process for manufacturing a thick
film circuit on a titanium or titanium-alloy substrate. (Spec. 2). Claim 1 is
illustrative:
1. A process for manufacturing a thick-film circuit having at least
one element on a titanium or titanium-alloy substrate to substantially
prevent formation of a bent substrate comprising the steps of:
applying a glassy dielectric layer upon at least one surface of said
substrate, the composition and layer thickness of which are selected
according to its temperature coefficients and Young’s modulus to
substantially prevent bending of the substrate after it has cooled to
ambient temperature;
firing said glassy dielectric layer in an oxidizing atmosphere; and
forming at least one element of said thick-film circuit upon said
dielectric layer; wherein the composition and layer thickness of the at
least one element is selected according to its temperature coefficient
and Young’s modulus to substantially prevent bending of the substrate
after it has cooled to ambient temperature.

Appellant appeals the Examiner's rejections as set forth below:
Claims 1, 2, 4, and 9-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmerman, DE383598 A1, published May 23, 1990.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Zimmerma, and Sreeram, U.S. Patent No.
6,551,720 B2, issued April 22, 2003.

2 An oral hearing was held for this appeal on May 13, 2009.
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Application 10/694,888

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Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Zimmerman and Lindson, U.S. Patent No.
2,959,503, issued November 8, 1960.3
The dispositive issue before us is whether the Examiner has
established that Zimmerman describes or suggests applying a glassy
dielectric layer upon at least one surface of said substrate, wherein the
composition and layer thickness are selected according to its temperature
coefficients and Young's modulus to substantially prevent bending of the
substrate after it has cooled to ambient temperature, as recited in claim 1.
We answer this question in the negative. Therefore, WE REVERSE.4
The Examiner bears the initial burden of presenting a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). In order to establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is
described or suggested by the prior art or would have been obvious based
on the knowledge of those of ordinary skill in the art. In re Fine, 837
F.2d 1071, 1074 (Fed. Cir. 1988). “[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.” In re Kahn, 441 F.3d 977, 988

3 The Examiner has inadvertently included cancel claim 8 in this rejection.
(See Ans. 4, Final Rejection, mailed October 25, 2006, page 2, and App.
Br. 2).
4 We select independent claim 1 as representative of the rejected subject
matter. Separately rejected claims 3 and 6 depend from independent
claim 1.
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(Fed. Cir. 2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007)).
The Examiner found that Zimmerman teaches a method for
producing electronic circuits for thick-films in sensors in conjunction with
a strain-gauge built onto the substrate. The Examiner acknowledged that
Zimmerman fails to specifically recite controlling bending by controlling
processing, parameters of thickness and coefficient of expansion. (Ans. 3).
The Examiner asserts that Zimmerman does disclose the processing
parameters to achieve the desired result which is all that is necessary to
meet the recited claimed limitations. The Examiner also found that
Zimmerman depicts in the drawings a final product that does not suffer
from distortion/bending or warping. The Examiner further found that the
specification does not recite or even hint at the distortion/bending or
warping phenomenum. (Ans. 3). The Examiner relied upon Sreeram for
describing a titanium substrate coated with a lead-based glaze. The
Examiner relied upon Lindson for describing coating the reverse side of a
titanium substrate with a glass-ceramic composition to prevent oxidation of
the titanium. (Ans. 4-5).
We agree with Appellant that the Examiner has not established a
prima facie case of obviousness. Appellant contends that the Examiner has
not established that Zimmerman describes or suggests applying a glassy
dielectric layer upon at least one surface of said substrate, wherein the
composition and layer thickness are selected according to its temperature
coefficients and Young's modulus to substantially prevent bending of the
substrate after it has cooled to ambient temperature, as recited in claim 1.
(App. Br. 7-8). The Examiner has not pointed to specific portions of
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Zimmerman that discuss the parameters of thickness and coefficient of
expansion and their effect on the resulting product. The Examiner has not
identified objective evidence that a person of ordinary skill in the art would
have been motivated by the disclosure of Zimmerman to arrive at the
claimed invention or how a person of ordinary skill in the art would go
about substantially preventing bending of a substrate after it has cooled to
ambient temperature as required by claim 1. The Examiner did not rely
upon Sreeram or Lindson for describing the parameters of thickness and
coefficient of expansion of a substrate.
For the foregoing reasons and those presented in Appellant’s Briefs,
the rejections of claims 1-4, 6, 7, and 9-12 under 35 U.S.C. § 103(a) are
reversed.

ORDER
The Examiner's decision rejecting claims 1-4, 6, 7, and 9-12 is
reversed.

REVERSED

PL Initial:
sld

Appeal 2009-002060
Application 10/694,888

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