Ex Parte Boday et al

Patent Trial and Appeal Board

Mar 27, 2018

12718213 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121718,213 03/05/2010
30206 7590 03/29/2018
IBM CORPORATION
ROCHESTER IP LAW DEPT. 917
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
FIRST NAMED INVENTOR
Dylan Joseph Boday
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.
ROC920090085US 1 4422
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DYLAN JOSEPH BODAY and
JOSEPH KUCZYNSKI
Appeal2017-005485
Application 12/718,213
Technology Center 1700
Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 26-28. 3 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to the Specification filed March 5, 2010
("Spec."), the Final Office Action entered January 6, 2016 ("Final Act."),
the Advisory Action entered April 1, 2016 ("Adv. Act."), the Appeal Brief
filed June 4, 2016 ("Br."), and the Examiner's Answer entered
September 23, 2016 ("Ans.").
2 Appellants identify the real party in interest as International Business
Machines Corporation. Br. 3.
3 Claims 29--31 were canceled in an Amendment After Final filed March 10,
2016.
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Application 12/718,213
The subject matter of the claims on appeal relates to coated glass fiber
substrates used in making printed circuit boards (PCBs ). Spec. i-f 1.
According to Appellants' Specification, one problem experienced with
printed circuit boards is conductive anodic filaments (CAP). Spec. i-f 5.
Silano ls always exist on the surface of the glass fiber and thus, there is
always a pathway to formation of CAP. Id. i-f 6. A silane coupling agent is
often used in printed circuit boards to join a varnish coating (e.g., an epoxy-
based resin) to a substrate (e.g., glass cloth) to define a laminate or
laminated structure. Id. i-f 2. The surface silanols on the glass fiber are
reacted when silane coupling agents are used to couple, or bond, the glass
cloth substrate to the laminate varnish. Id. i-f 7. The alkoxy groups of the
silicon of the silane coupling agent hydrolyze to silanols, either through the
addition of water or from residual water on the surface of the substrate. Id.
Subsequently, the silanols react with hydroxyl groups on the surface of the
substrate to form a siloxane bond (Si-0-Si) and eliminate water. Id.
Unfortunately, more surface silanols are created by the silane coupling
agents, which leads to CAP formation. Id. at 7-8.
According to the Specification, to reduce the presence of surface
silanols on Appellants' glass fiber substrate, a silane composition, which
reacts with the surface silanols, is applied to the surface of the substrate
having the silane coupling agent applied thereto to form the hydrophobic
silane coating. Id. at i-f 19. The surface presented by the hydrophobic silane
coating/substrate is hydrophobic and essentially silanol-free. Id.
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Application 12/718,213
Claim 26, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal.
26. An enhanced substrate for preventing conductive anodic
filament (CAP) growth in a printed circuit board (PCB),
compnsmg:
a substrate comprising a sheet of woven glass fibers;
a hydrophobic silane coating a monolayer thick is an
intermixed layer of a silane composition and a silane coupling
agent applied to the substrate, wherein the hydrophobic silane
coating presents a surface that is hydrophobic and essentially
silanol-free thereby preventing a path for CAP formation,
wherein the hydrophobic silane coating is formed by applying
the silane composition to the surface of the substrate having the
silane coupling agent applied thereto, and wherein the silane
composition includes a silane selected from a group consisting
of chlorotrimethylsilane, hexamethyldisilazane, perfluorooctyl-
1H,1 H,2H,2H-dimethylchlorosilane, and (3 ,3 ,3-
trifluoropropyl)dimethyl-chlorosilane; and combinations
thereof; and
a varnish coating on the surface presented by the
hydrophobic silane coating, wherein the silane coupling agent
couples the varnish coating to the substrate, and wherein the
silane coupling agent includes an organofunctional group to bind
to the varnish coating and a hydrolyzable group to bind to the
surface of the substrate.
Br. 38 (Claims App.).
DISCUSSION
The Examiner maintains the rejection of claims 26-28 under
35 U.S.C. § 103(a) as unpatentable over Ikoma et al. 4 (JP 05-239771,
4 We refer to the machine translation of record of Ikoma as cited by the
Examiner. See, e.g., Ans. 4---6.
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Appeal2017-005485
Application 12/718,213
published September 17, 1993) ("Ikoma") in view of Ogawa et al. 5 (JP 09-
012343, published January 14, 1997) ("Ogawa"), further in view Huignard
et al. (US 2008/0241523 Al, published October 2, 2008) ("Huignard"),
Hashimoto et al. (US 2004/0113523 Al, published June 17, 2004)
("Hashimoto), Wu et al. (US 6,208,014 B 1, issued March 27, 2001)
("Wu"). 6
Appellants argue the claims as a group. See Br. 10-37. We select
independent claim 26 as representative, and dependent claims 27 and 28 will
stand or fall with claim 26. See 37 C.F.R. § 41.37 (c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellants'
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Final Office Action and the Answer. We add the following.
The Examiner finds that Ikoma discloses treating a glass fiber cloth,
i.e., a woven glass fiber substrate, in a wet state with a silane coupling agent,
such as N - fJ - (N-vinylbenzylaminoethyl) - y-
aminopropyltrimethoxysilane, to improve adhesion of a synthetic resin to the
glass cloth. Ans. 4; Ikoma, Abstract. The Examiner finds that Ikoma
teaches immersing cleaned glass fiber cloth in water (preferably 1 to 10%
5 We refer to the translation of record of Ogawa as cited by the Examiner.
See, e.g., Ans. 12-14.
6 Given the cancellation Claims 29-31 in the Amendment After Final filed
March 10, 2016, the Examiner withdrew the claim objection, the rejections
under 35 U.S.C. § 112 (pre-AIA), first and second paragraphs, and the
rejection under 35 U.S.C. § 103(a) of claims 29-31. Ans. 3.
4
Appeal2017-005485
Application 12/718,213
owt), and then subsequently immersing the resultant cloth in a solution of
the silane coupling agent diluted with an organic solvent to apply the silane
coupling agent to the surface of the glass fiber cloth, wherein silanol groups
are produced with the water and uniformly condensed with the glass surface
(i.e., bonded to the surface). Ans. 4; Ikoma, Abstract, i-f 9. Ikoma teaches
that the treated glass fiber fabric is then impregnated with an epoxy resin
varnish (i.e., coated with varnish) of Epikote 5045 (manufactured by Yuka
Shell), where the silanol groups on the surface of glass strongly adheres the
resin to the cloth. Ans. 5; Ikoma i-f 15.
The Examiner recognizes that Ikoma does not teach or suggest
intermixing the silane coupling agent with a silane composition to produce a
hydrophobic silane coating that is essentially silanol-free. Ans. 8-10. To
cure this deficiency, the Examiner finds that Huignard discloses a glass
substrate with a hydrophobic surface structure consisting of a silicon-
containing sub-layer and an outer layer comprising a hydrophobic agent
which is grafted onto the sub-layer (i.e., intermixed layer as a monolayer
thick with the grafted surface or reacted with the silicon-containing
sublayer). Ans. 6; Huignard, Abstract. Huignard discloses that the silicon-
containing sublayer can include a silicon precursor, such as
tetraethyoxysilane ("TEOS") (i.e., a silane coupling agent). Huignard i-f 47.
Additionally, the Examiner finds that Wu discloses producing low dielectric
constant silica films on substrates suitable for use in the production of
integrated circuits. Ans. 8; Wu, Abstract. Wu discloses that one material
with a low dielectric constant is nanoporous silica, which is typically treated
with a silane precursor, such as TEOS. Wu 1 :27-30. Wu further teaches
that the presence of the polar silanols can contribute negatively to the
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Application 12/718,213
dielectric constant and dielectric loss. Wu 1:61---64. To render the internal
pore surfaces of nanoporous silica less polarizable and less hydrophilic, Wu
teaches reacting the surface containing silanols with a capping agent, such as
hexamethyldisilazane (HMDZ), which is introduced into the pores of the
film and allowed to react with the surface silanol groups to cap the silanols
by forming trimethylsilyl groups, rendering the pore surfaces of the film
hydrophobic. Wu 2:4--14.
Based on Huignard's and Wu's teachings, the Examiner finds that one
of ordinary skill in the art would have been led to use a hydrophobic agent
(i.e., a capping agent), such as HMDZ as disclosed in Wu, to modify
Ikoma's surface containing silanol groups, produced by Ikoma's silane
coupling agent, in order to produce a hydrophobic film for Ikoma's printed
circuit boards. Ans. 7-8, 9-10.
Appellants argue that claim 26 's hydrophobic coating is a mono layer
thick, which is defined as "one molecule thick." Br. 12 (citing Oxford
English Dictionary). Appellants contend that the cited art, alone or in
combination, fails to disclose or reasonably suggest a hydrophobic silane
coating that is a monolayer thick. Id.
Appellants' argument is not persuasive of reversible error. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Therefore, we look to
the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). Although Appellants contend that the
definition from Oxford's English Dictionary of "monolayer" is a
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Application 12/718,213
"conventional" definition of the term, as the Examiner persuasively explains,
this is only one of many definitions of a "monolayer." Ans. 17 (citing the
Dictionary of Materials and Testing (2nd ed., 2000), *270, defining
"mono layer" as "1) a single layer of atoms on the surface, 2) a single
laminate form upon which other laminates are constructed"). Ans. 17.
Appellants do not direct us to sufficient evidence in the Specification to
establish that "mono layer" in the context of their Specification is limited to
"a layer that is one molecule thick." See Br. 11-12. Accordingly, we
decline to narrowly construe the term "monolayer" as limited to a coating
that is a monolayer thick.
As the Examiner finds, the combination of cited references, for
example, Ikoma as modified by Huignard and Wu, as set forth on pages 4--
10 of the Answer entered September 23, 2016, teach or suggest a
hydrophobic silane coating, a monolayer thick, that is an intermixed layer of
a silane composition and a silane coupling agent. The Examiner's findings
are supported by a preponderance of the evidence. Huignard, Abstract,
i-fi-f 19-32, 47; Wu, Abstract, 1: 10-15, 24--30, 1:46-2:11.
Appellants argue that claim 26 requires "applying the silane
composition to the surface of the substrate having the silane coupling agent
applied thereto," and this two-stage application is critical to render
claim 26's silane coating hydrophobic and "essentially silanol-free." Br. 19.
Appellants further argue that Ikoma does not teach or suggest limiting
silanol formation and moisture after the silane coupling agent has been
applied to the glass fiber cloth. Id. at 18.
Appellants' arguments are not persuasive of reversible error.
Claim 26 is directed to a product-an enhanced substrate. The recitation
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Application 12/718,213
that "the hydrophobic silane coating is formed by applying the silane
composition to the surface of the substrate having the silane coupling agent
applied thereto," is a process limitation, and not further limiting of
claim 26 's product.
As Appellants aptly point out, claim 26 's silane composition reacts
with the residual silanols left after the silane coupling agent is applied to the
woven glass substrate, rendering the surface of the silane coating
hydrophobic. Br. 19; Spec. i-f 19. The Examiner finds that Huignard and
Wu, not Ikoma, teaches applying a silane composition, for example,
hexamethyldisilazane (HMDZ), to the silane coupling agent, for example,
tetraethoxysilane (TEOS), to render the surface hydrophobic. Ans. 6-10. A
preponderance of the evidence supports the Examiner's findings. Huignard,
Abstract, i-fi-119--32, 47; Wu, Abstract, 1:10-15, 24--30, 1:46-2:11. In fact,
Appellants admit that HMDZ, disclosed by Wu, is one of the silanes in the
Markush group recited in claim 26. Br. 24.
Appellants argue that Ogawa's method, like the methods of the other
cited references, does not involve a post-treatment application of a "silane
composition" as in claim 26 in conjunction with an already-applied silane
coupling agent. Br. 32. Appellants further argue that Ogawa's method
prevents the occurrence of CAP in entirely different ways than the claimed
invention. Id.
Appellants' argument is not persuasive of reversible error. Appellants
are attacking Ogawa individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981 ). As discussed above, Huignard and Wu teach applying a silane
composition, such as the silane compositions recited in claim 26' s Markush
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Application 12/718,213
group, to a glass substrate in conjunction with an already-applied silane
coupling agent, to render the substrate's surface hydrophobic and prevent a
path for CAP formation. Ans. 6-10; Huignard, Abstract, i-fi-f 19-32, 47; Wu,
Abstract, 1: 10-15, 24--30, 1:46-2:11.
In sum, upon consideration of each of Appellants' contentions, we
find that the preponderance of evidence supports the Examiner's conclusion
that the subject matter of claims 26-28 would have been obvious over
Ikoma, Huignard, Wu, Hashimoto, and Ogawa. Accordingly, we sustain the
rejection of those claims.
DECISION
For the above reasons, the rejection of claims 26-28 is affirmed.
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
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