Ex Parte Chang et al

Patent Trial and Appeal Board

Sep 14, 2017

13438099 (P.T.A.B. Sep. 14, 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.
13/438,099 04/03/2012 Meng Hao Chang LIPOP139US 2489
23623 7590 09/18/2017
AMIN, TUROCY & WATSON, LLP
127 Public Square
57 th Floor, Key Tower
CLEVELAND, OH 44114
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
hmckee@thepatentattomeys.com
rveri@thepatentattorneys.com
docket @ thepatentattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MENG HAO CHANG, CHIEN HUI LEE,
and J. KING CHEN1
Appeal 2016-007961
Application 13/438,099
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM,
and MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1, 2, and 4—8 as unpatentable
over Lin (US 2011/0114371 Al, May 19, 2011) in view ofNonaka
(US 2009/0095517 Al, Apr. 16, 2009) and of claim 9 as unpatentable over
these references in combination with Kita (US 2008/0289860 Al,
Nov. 27, 2008). We have jurisdiction under 35 U.S.C. § 6.
1 AISA Electronic Material Co. LTD is identified as the real party in interest.
Reply Br. 2.
Appeal 2016-007961
Application 13/438,099
We REVERSE.
Appellants claim a thin metal substrate having high thermal
conductivity comprising a copper foil layer and a thermal conductive
adhesive layer with an insulating polymer layer disposed therebetween,
wherein the thermal conductive adhesive layer comprises a thermal
conductive powder made of, for example, aluminum oxide (sole independent
claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A thin metal substrate having high thermal conductivity,
comprising:
a copper foil layer;
a thermal conductive adhesive layer comprising a resin and a
thermal conductive powder dispersed in the resin, wherein the
thermal conductive powder has an average particle diameter of 5-
20 um, and the thermal conductive powder is made of at least one
selected from the group consisting of silicon carbide, boron nitride,
aluminum oxide and aluminum nitride; and
an insulating polymer layer disposed between the copper foil layer
and the thermal conductive adhesive layer.
In rejecting claim 1, the Examiner finds that Lin discloses a substrate
comprising a copper foil layer and an adhesive layer with an insulating
polymer layer disposed therebetween but that Lin’s adhesive layer does not
include a thermal conductive powder as claimed (Final Action 3—4).
Regarding this deficiency, the Examiner finds that Nonaka discloses a
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Appeal 2016-007961
Application 13/438,099
substrate comprising an adhesive layer containing conductive filler such as
aluminum oxide {id. at 4) and concludes that it would have been obvious to
replace the adhesive layer of Lin with Nonaka’s adhesive layer containing
aluminum oxide {id. at 5) (i.e., thereby satisfying the claim 1 limitation
wherein the thermal conductive powder is made of aluminum oxide). The
Examiner recognizes that Nonaka teaches providing the adhesive layer with
fillers which are electrically conductive, rather than thermally conductive as
claimed, but urges that Nonaka’s electrically conductive filler of aluminum
oxide would be thermally conductive as required by claim 1 (Ans. 6—7).
Appellants argue, inter alia, that aluminum oxide (i.e., alumina) is an
electric insulating material as taught by Nonaka in paragraph [0189] and
accordingly that Nonaka’s paragraph [0099] disclosure of electrically
conductive fillers cannot be considered to include aluminum oxide (App. Br.
4).
Appellants’ argument has convincing merit. In paragraph [0099],
Nonaka discloses that, “[a]s an electrically conductive filler (conductive
particles) used in the pressure-sensitive adhesive layer of the present
invention, those conventionally known may be used . . . such as nickel, iron,
chromium, cobalt, aluminum, antimony, molybdenum, copper, silver,
platinum, gold, an alloy or an oxide thereof.” As indicated above, the
Examiner regards this disclosure of electrically conductive fillers to include
aluminum oxide. However, Nonaka’s paragraph [0189] expressly teaches
forming a base insulating layer from an electric insulating material and that
“[s]pecific examples of the electric insulating material include ... a ceramic
material such as alumina.” In light of this express teaching, one having
ordinary skill in this art would recognize that the paragraph [0099]
disclosure of electrically conductive fillers does not include
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Appeal 2016-007961
Application 13/438,099
alumina/aluminum oxide (i.e., because it is electrically insulative rather than
conductive).
We observe that the Response to Argument section of the Examiner’s
Answer does not address Appellants’ argument regarding paragraph [0189]
of Nonaka. Under these circumstances, the Examiner has failed to provide
the record with persuasive support for the proposition that Nonaka would
have suggested an adhesive layer containing electrically conductive filler in
the form of alumina/aluminum oxide. For this reason alone, we do not
sustain the Examiner’s § 103 rejections of claims 1, 2, and 4—9.
The decision of the Examiner is reversed.
REVERSED
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