Ex Parte Blattler et al

Patent Trial and Appeal Board

Sep 20, 2017

13161544 (P.T.A.B. Sep. 20, 2017)

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.
13/161,544 06/16/2011 Hans-Peter Blattler BLAT3001/TJM/TL 5667
23364 7590 09/22/2017
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
VORTMAN, ANATOLY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-PETER BLATTLER, PETER STRAUB,
and JOSE RAMOS
Appeal 2016-0020861
Application 13/161,544
Technology Center 2800
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
SCOTT B. HOWARD, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1—13, 15—26 and 28. App. Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.3
1 The above-entitled matter came on for hearing on Tuesday, August 15,
2017 at the U.S. Patent and Trademark Office, 600 Dulany Street,
Alexandria, Virginia. A transcript will be made a part of the Record.
2 The Appeal Brief identifies Schurter AG, as the real party in interest. App.
Br. 2.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed August 24, 2015, “App. Br.”), the Reply
Appeal 2016-002086
Application 13/161,544
STATEMENT OF THE CASE
The claims relate to a fuse element, formed by multilayer technology,
for use in an electronic circuit on a printed circuit board. See Abstract.
INVENTION
Claims 1 and 28 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 1, which is reproduced
below
1. A fuse element for use in electric and/or electronic
circuits constructed by multilayer technology, comprising a
printed circuit board substrate material, coated with a metal or
metal alloy defining a fuse and being formed by
photolithographic and/or printing image-producing techniques
and ensuing etching or engraving processes, wherein the printed
circuit board substrate material, on which the fuse is provided,
comprises at least a high-temperature-stable, electrically
insulating material.
Ganci
Bender, et al.,
References
US 3,248,680 Apr. 26, 1966
US 7,385,475 B2 June 10, 2008
Brief (filed December 4, 2015, “Reply Br.”), the Examiner’s Answer
(mailed October 6, 2015, “Ans.”), the Final Action (mailed April 10, 2015,
“Final Act.”), and the Specification (filed July 25, 2014, “Spec.”) for their
respective details.
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Appeal 2016-002086
Application 13/161,544
ANALYSIS
I: The Rejection4
Claims 1—13, 15—26, and 28 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Bender, or in the alternative, under 35 U.S.C. § 103(a) as
obvious over Bender taken alone or with Ganci. Final Act. 5—10.
Because the legal standard for anticipation differs from that for
obviousness, we disambiguate the Examiner’s rejection into a first rejection
of Claims 1—13, 15—26, and 28 as anticipated by Bender and a second
rejection of Claims 1—13, 15—26, and 28 as obvious over Bender and/or
Ganci. We analyze the claims in groups as argued by Appellants.
II: Anticipation by Bender
Independent Claims 1 and 28
Independent Claims 1 and 28 stand rejected over the embodiment of
Bender, Figures 21 and 22. Final Act. 5.
A printed circuit board substrate material,
coated with a metal or metal alloy.
Claim 1 recites, inter alia, “a printed circuit board substrate material,
coated with a metal or metal alloy defining a fuse and being formed by
4 The objections by the Examiner to the Specification (see Final Act. 2—3),
and to Claims 26 and 28 (see id. at 4), are not within our jurisdiction because
these are petitionable issues and are not appealable issues. The proper
procedure under MPEP § 1002.02(c)(4) is to file a petition with the
Technology Center Director under 37 C.F.R. §1.113(a) regarding any
objections made by the Examiner (“Petition may be taken to the Director in
the case of objections or requirements not involved in the rejection of any
claim.”).
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Appeal 2016-002086
Application 13/161,544
photolithographic and/or printing image-producing techniques.” (emphasis
added).
Appellants argue a coating is not produced independently, but its
formation depends upon a substrate. App. Br. 12. Appellants argue Bender
discloses an independently-formed, “free standing” fuse element which is an
electroformed copper foil that is formed independently of, and then
sandwiched between, the upper and lower insulating layers. Id.
The Examiner concludes the term “coated” is very broad, merely
meaning to cover with a thin layer of a material. Ans. 5. The Examiner
finds Bender’s fuse meets the definition of “coat” because it is a thin layer of
foil covering the insulating substrate. Id. The Examiner finds Bender
discloses the foil of the fuse element layer may be electrodeposited on the
intermediate insulating layer, rendering the insulator “coated” with a foil
fuse element layer. Id.
Bender discloses a fuse 300, “a low resistance fuse of a layered
construction that is illustrated in Fig 21.” Specifically, Bender discloses:
in an exemplary embodiment, the fuse 300 is constructed
essentially from five layers including a foil fuse element layer
302 sandwiched between upper and lower intermediate
insulating layers 303, 304 which, in turn, are sandwiched
between upper and lower outer insulation layers 122,124.
Bender, col. 22,11. 39-44.
Bender discloses that other embodiments may comprise an
electrodeposited layer. However, with respect to the embodiment of Fig. 21,
Bender discloses:
Separate and independent formation of the fuse element
layer 302 allows for a number of advantages, such as greater
accuracy in the control and position of the fuse element layer
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Appeal 2016-002086
Application 13/161,544
with respect to the other layers when the fuse 300 is
constructed. In comparison to etching processes of previously
described embodiments, independent formation of the fuse
element layer 302 permits greater control over the shape of the
fuse element layer on the edges thereof.
Bender, col. 22,1. 62 — col. 23,1. 2.
Bender does not anticipate independent Claims 1 and 28 because, on
this record, the Examiner has not established that Bender discloses, in a
single embodiment (Fig. 21), the contested claimed “coated” feature: “a
printed circuit board substrate material, coated with a metal or metal alloy
defining a fuse . . . .” (Claim 1; see also commensurate language recited in
claim 28) (emphasis added).
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an] artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must “clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection ... it
has no place in the making of a 102, anticipation rejection.” Arkley, 455
F.2d at 587-88.
; see also Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008) (holding that for a finding of anticipation, the reference
must also “disclos[] within the four comers of the document not only all of
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Application 13/161,544
the limitations claimed but also all of the limitations arranged or combined
in the same way as recited in the claim.”).
Additionally, because Bender fails to anticipate the independent
claims, Bender also fails to anticipate the dependent claims.
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Application 13/161,544
III: Obviousness over Bender and/or Ganci
Claims 1 and 28
Claims 1 and 28 recite, inter alia, “a printed circuit board substrate
material, coated with a metal or metal alloy defining a fuse and being
formed by photolithographic and/or printing image-producing techniques.”
The Examiner does not distinguish findings that Bender anticipates
Claims 1 and 28 from findings that Bender renders the claims obvious. See
Final Act. 5—10. Appellants’ responsive arguments are, therefore, also not
clearly disambiguated.
We found the Examiner combined teachings from a multiple number
of Bender’s embodiments. Therefore, a prima facie case of anticipation
could not be made out. Arkley, 455 F.2d, at 587. However, the teachings of
various embodiments of a single (or multiple) reference(s) may be validly
combined to make a prima facie case of obviousness.
The Examiner finds Bender discloses the foil of the fuse element layer
may be electrodeposited on the intermediate insulating layer, rendering the
insulator “coated” with a foil fuse element layer. Ans. 5.
Appellants argue Bender discloses an independently-formed, “free
standing” fuse element which is an electroformed copper foil that is formed
independently of, and then sandwiched between, the upper and lower
insulating layers. Id. Appellants contend Bender “teaches away” from an
electro-deposited coating. App. Br. 12. We agree, because Bender
extensively criticizes an electro-deposited layer. See Bender, col. 22,1. 62 —
col. 23,1. 2 (quoted above). A “teaching away” requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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Application 13/161,544
Therefore, based upon a preponderance of the evidence, we are
persuaded the Examiner erred regarding the § 103 rejection over Bender
taken alone, and the alternative §103 rejection over the combination of
Bender and Ganci.
Because we do not sustain the § 103 rejections of the independent
claims, we do not sustain the § 103 rejections of the dependent claims.
DECISION
The rejection of Claims 1—13, 15—26, and 28 under 35 U.S.C. § 102 is
REVERSED.
The alternative rejections of Claims 1—13, 15—26, and 28 under 35
U.S.C. § 103 (over Bender alone or over Bender and Ganci) are each
REVERSED.
REVERSED
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