Ex Parte Boday et al

Patent Trials and Appeals Board

Apr 25, 2019

14156635 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/156,635
104161 7590
Matthew J. Bussan
1048 Dove Way
Cary, IL 60013-6092
FILING DATE FIRST NAMED INVENTOR
01/16/2014 Dylan J. Boday
04/26/2019
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.
ROC920130124US 1 4552
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
04/26/2019 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 DYLAN J. BODAY, JOSEPH KUCZYNSKI,
JASON T. WERTZ, and JING ZHANG
Appeal2018-004771
Application 14/156,635
Technology Center 1700
Before JEFFREY B. ROBERTSON, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 29-33, 35, 38, and 40. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We REVERSE.
1 This Decision includes citations to the following documents:
Specification filed January 16, 2014 ("Spec."); Final Office Action dated
June 30, 2017 ("Final Act."); Appeal Brief filed November 21, 2017
("Appeal Br."); Examiner's Answer dated February 14, 2018 ("Ans."); and
Reply Brief filed April 3, 2018 ("Reply Br.").
2 Appellant identifies the Applicant, Internal Business Machines
Corporation as the real party in interest. (Appeal Br. 3.)
Appeal2018-004771
Application 14/156,635
THE INVENTION
Appellant states that the invention relates to the field of corrosion
protection, and in particular, to a polymer conformal coating composition
containing metal nanoparticles providing corrosion protection for metal
surfaces against corrosion caused by environmental sulfur components.
(Spec. ,r 1.)
Claim 29 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
29. A method for producing an apparatus, comprising the
steps of:
providing an electronic component mounted on a
substrate and electrically connected by metal conductors;
applying a conformal coating composition in an at least
partially uncured state over the electronic component and the
substrate, wherein the conformal coating composition
comprises a polymer and metal nanoparticles blended with the
polymer, wherein the metal nanoparticles have an average
diameter within the range of 5 nm to 200 nm, and wherein the
concentration of the metal nanoparticles in the conformal
coating composition is approximately 5 wt% of the conformal
coating and provides a level of electrical conduction sufficiently
below the electric conducting percolation threshold to avoid
shorting of the electronic component and the substrate; and
curing the conformal coating composition applied over
the electronic component and the substrate to produce a
conformal coating that overlies the metal conductors.
(Appeal Br. 22 (Claims Appendix).)
REJECTION
The Examiner rejected claims 29-33, 35, 38, and 40 under 35 U.S.C.
§ 103 as obvious over Hara et al. (US 7,501,183 B2, issued March 10, 2009,
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Appeal2018-004771
Application 14/156,635
"Hara"), Boday et al. (US 2011/0189381 Al, published on August 4, 2011,
"Boday"), and Horikoshi et al. (US 2005/0059772 Al, published on March
17, 2005, "Horikoshi"). (Final Act. 3-5; Ans. 3---6.)
We limit our discussion to claim 29, which is sufficient for disposition
of this Appeal.
ISSUE
The Examiner found, inter alia, that Hara discloses a silicone rubber
composition for sealing and encapsulating electric and electronic devices,
the silicone rubber composition including 0.5-90% by weight of a metal
powder. (Final Act. 3.) The Examiner found that Hara fails to disclose a
conformal coating applied to an electronic component as recited in the
claims, and that Hara fails to teach that the metal powder is nanosized. (Id.)
The Examiner found that Boday discloses a conformal coating applied to an
electronic component in order to prevent sulfur contamination thereof, such
that it would have been obvious to have employed the silicone rubber
composition as conformal coating to an electronic component to protect
against sulfur contamination. (Id.) The Examiner found that Horikoshi
discloses an organopolysiloxane composition for protection of electronic
components from short circuiting and to provide insulation resistance, where
the composition contains a metal powder that is nanosized. (Id. at 3--4.) The
Examiner determined that it would have been obvious to have modified Hara
in combination with Boday to include nanosized particles with the
expectation of achieving similar success by sulfiding of gas to prevent
corrosion. (Id. at 4.)
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Appeal2018-004771
Application 14/156,635
Appellant argues that Horikoshi, which is the only cited art disclosing
metal nanoparticles, teaches away from including amounts of metal
nanoparticles recited in claim 29 because Horikoshi discloses that prior art
organopolysiloxane compositions with high loadings of metal powder result
in local agglomeration of metal particles creating risks of short-circuiting
between electrodes and reducing insulation resistance. (Appeal Br. 12-13,
16-1 7.) Appellant contends that one of ordinary skill in the art would not
have looked to Hara, which is not directed to the use of metal nanoparticles,
for direction as to the appropriate loading levels for metal nanoparticles. (Id.
at 18-20.)
The dispositive issue is: Has Appellant identified reversible error in
the Examiner's position that it would have been obvious to use the metal
nanoparticles as disclosed in Horikoshi, in the amounts recited in Hara
including the amounts of metal nanoparticles recited in claim 29?
DISCUSSION
We are persuaded by Appellant's argument that Horikoshi teaches
away from amounts of metal nanoparticles recited in claim 29. We
emphasize that the Examiner's rationale in determining that it would have
been obvious to utilize metal powder having the sizes recited in claim 29 in
the combination of Hara in view of Boday is to "achiev[ e] similar success"
as disclosed in Horikoshi. (Final Act. 3--4.) We understand the "similar
success" to be the prevention of short circuiting and providing insulation
resistance identified by the Examiner as the advantage of Horikoshi. (Id.)
As pointed out by Appellant, Horikoshi identifies that it is the amount
of metal powder that creates the risk of short circuiting and providing
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Appeal2018-004771
Application 14/156,635
insulation resistance as a result of agglomeration of the metal particles.
(Horikoshi ,r 5 ( expressly referring to the amounts of 0.5 to 90% by weight
in U.S. Application 10/252,595, which is the application leading to Hara.))
Thus, Horikoshi emphasizes the importance of the amounts of the particles
present in the composition relative to the amounts disclosed in Hara.
In contrast to the "approximately 5 wt%" of metal nanoparticles
recited in independent claim 29 ( and independent claim 40), Horikoshi
discloses that the metal powder should be added in an amount of from
0.01 % to less than 0.5 % by weight of the composition. (Horikoshi ,r 15.)
Accordingly, we agree with Appellant that one of ordinary skill in the art, in
considering the prior art as a whole, would not have implemented the
nanosized metal particles disclosed in Horikoshi in amounts recited in claim
29 to "achiev[ e] similar success" in preventing short circuiting and
providing insulation resistance as articulated by the Examiner, particularly
where Horikoshi expressly criticizes the amounts of metal powder utilized in
the primary reference Hara in achieving such results.
As to the Examiner's position in the Answer that Hara discloses that
larger amounts of metal powder can be used as long as the volume resistivity
is above a threshold of lxl09 ohms-cm (Ans. 7-8 (citing Hara, col. 2, 11. 19-
30)), we agree with Appellant that Hara's disclosure in this regard is
insufficient to support the Examiner's position. (Reply Br. 3--4.) In
particular, Hara discloses the addition of finely divided silica to bind to the
surface of the metal particles to "prevent metal particles from binding
together," where the amounts of finely divided silica to be added is 0.5 to 30
parts by weight of crystalline, fused, or fumed silica per 100 parts by weight
of the organopolysiloxane. (Hara, col. 5, 11. 17-37.) However, we observe
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Application 14/156,635
that Horikoshi also discloses the addition of finely divided silica to the
compositions including copper powder having a particle size of 1.0 µm
(1000 nm) and exemplifies crystalline silica in the examples as well as the
comparative examples in amounts of 60 parts by weight (twice the highest
amount recommended by Hara). (Horikoshi ,r,r 33, 38-53.) In this regard,
Comparative Example 2, which is loaded with 1.0 wt. % metal powder
allowed short circuiting. (Horikoshi ,r,r 46, 50, 52.) Thus, we agree with
Appellant, that it is unclear whether the teaching in Hara of adding finely
divided silica relied on by the Examiner in dismissing the contended
teaching away (Ans. 8), would be sufficient to "achiev[e] similar success" in
preventing short circuiting and providing insulation resistance when applied
to nanosized metal particles in the amount recited in independent claim 29.
As to the Examiner's position questioning how Appellant can argue
that having more than 0.5 wt% of powder would be detrimental, when it is
not detrimental for the instant invention (Ans. 7), we agree with Appellant
that it is inappropriate for the Examiner to rely on Appellant's Specification
in order to support this position. (Reply Br. 4.)
As a result, we reverse the Examiner's rejection of independent claim
29, as well as claims 30-33, 35, and 38, dependent therefrom, and
independent claim 40.
DECISION
We reverse the Examiner's decision rejecting claims 29-33, 35, 38,
and 40.
REVERSED
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