Ex Parte Block et al

Patent Trial and Appeal Board

Jun 30, 2016

12159809 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/159,809 09/29/2008
26161 7590 07/05/2016
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Christian Block
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.
14219-21lUS1
P2006.0003US
CONFIRMATION NO.
2584
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN BLOCK, PA VOL DUDESEK,
THOMAS FEICHTINGER,
CHRISTIAN HOFFMAN, and
GUENTER PUDMICH
Appeal2014-009886
Application 12/159,809
Technology Center 1700
Before PETER F. KRATZ, BEYERL YA. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-14, 26, and 28-30. 1 We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a monolithic sintered
component with a multi-layer structure comprising a functional ceramic
layer, a specified tension layer and including electrically conductive
structures. The tension layer is made from a dielectric recrystallized
material. According to Appellants, "[t]he properties of the tension layer are
1 See the Notice of Appeal filed November 1, 2013.
Appeal2014-009886
Application 12/159,809
specifically defined by the crystal structure of the material used" and the
recrystallized dielectric material structure provides for minimal lateral
shrinkage and a precise lateral structure that is marked by reproducible
component characteristics (Spec. 8, 11. 20---21; see Spec. 3, 1. 10 - 4, 1. 8; 17,
1. 19 - 18, 1. 8).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A monolithic sintered component with monolithic
multi-layer structure, comprising:
a functional layer comprising a functional ceramic,
a tension layer comprising a dielectric material directly
adjacent to the functional layer in the multi-layer structure, the
tension layer including a plurality of crystalline domains
disposed in a matrix, the matrix including a recrystallized
material,
a first metallization plane and a second metallization
plane, the functional layer being between the first metallization
plane and the second metallization plane,
electrically conductive structures, which form a
component function together with the functional layer, in the
first and second metallization planes, and
wherein the functional ceramic has a sintering
temperature which lies above a phase-change temperature of
the dielectric material.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Dawes
Prabhu
Jardine
Wajima
Mori ya
Sugimoto
us 5,153,152
us 5,216,207
us 5,750,272
US 2002/0135274 Al
US 2002/0189742 Al
US 2005/0214517 Al
2
Oct 6, 1992
June 1, 1993
May 12, 1998
Sept. 26, 2002
Dec. 19, 2002
Sept. 29, 2005
Appeal2014-009886
Application 12/159,809
The Examiner maintains the following grounds of rejection:
1. Claims 1-3, 5-8, 10, 11, 13, 28, and 29 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wajima in view ofMoriya and
Dawes.
2. Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wajima in view of Mori ya, Dawes, and Sugimoto.
3. Claims 9 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wajima in view of Moriya, Dawes, and Jardine.
4. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wajima in view of Moriya, Dawes, and Prabhu.
5. Claims 1, 3, 12, 14, 26, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moriya in view of Dawes and Prabhu.
6. Claims 9 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moriya in view of Dawes, Prabhu, and Jardine.
We reverse the stated rejections.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Concerning Rejections 1 and 5 and as argued by Appellants, the
Examiner has not established that any of the applied references, alone or in
combination, teach or suggest a sintered component with a monolithic multi-
layer structure having a tension layer that includes "a plurality of crystalline
domains disposed in a matrix, the matrix including a recrystallized
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Appeal2014-009886
Application 12/159,809
material," as required by claim 1 as part of the sintered component tension
layer (App. Br. 4---6; Reply Br. 1-3).
In this regard, the Examiner has determined that neither Wajima nor
Moriya discloses a tension layer including a recrystallized material (Final
Act. i-fi-1 4, 33). In addition and while the Examiner refers to a glass ceramic
material said to be disclosed by Dawes as a recrystallized material (Ans. 2),
the Examiner has not pointed to any particular disclosure of Dawes that
teaches or suggests a tension layer comprising a recrystallized glass ceramic
material, as argued by Appellants (Reply Br. 2-3; App. Br. 5-8).2 Nor has
the Examiner established that Prabhu describes such a feature, as Prabhu is
relied upon by the Examiner in Rejection 5.
Thus, the Examiner's reliance on a combination of references as
applied by the Examiner in Rejections 1 and 5 to underpin all of the stated
obviousness rejections is ill-founded.
Moreover, the Examiner has not furnished an adequate explanation as
to why one of ordinary skill in the art would have modified Wajima or
Mori ya based on the disparate teachings of the several applied references in
a manner that would have resulted in a component structure satisfying all of
2 The Examiner generally refers to U.S. Patent No. 4,554,197, which
reference is referred to in the Background disclosure of Dawes (Final Act. i1
6; Dawes, col. 1, 1. 24). However, the Examiner does not list U.S. Patent
No. 4,554,197 as a prior art reference disclosure that is being relied upon in
the statement of the rejection and/or provide a specific citation to any
portion of the reference (Final Act. i12). Therefore, we do not consider U.S.
Patent No. 4,554,197 to be part of the evidence in support of the Examiner's
rejection. Cf In re Hoch, 428 F.2d 1341, 1342 n.3(CCPA1970) ("Where a
reference is relied on to support a rejection, whether or not in a 'minor
capacity,' there would appear to be no excuse for not positively including
the reference in the statement of rejection.").
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Appeal2014-009886
Application 12/159,809
the limitations of Appellants' claim 1 for reasons argued by Appellants
(App. Br. 6-9).
Nor has the Examiner convincingly explained how any of the other
prior art references, as aggregated and conclusively applied in rejecting
certain dependent claims in Rejections 2--4, and 6, make up for the
deficiency in the base Rejections 1 and 5 in supplying an adequate teaching
and/or suggestion that would have led an ordinarily skilled artisan to arrive
at the claimed subject matter from the collections of the disparate teachings
of the applied prior art.
In this regard, "rejections 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" being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on§ 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCP A 1967).
On this record, we reverse the Examiner's obviousness rejections of
the appealed claims.
REVERSED
5