10410434 (B.P.A.I. Jan. 3, 2012)

Ex Parte Fujii et al

Board of Patent Appeals and InterferencesJan 3, 2012

10410434 (B.P.A.I. Jan. 3, 2012)

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. 10/410,434 04/10/2003 Kentaro Fujii SON-2641 3514 23353 7590 01/03/2012 RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON, DC 20036 EXAMINER NORRIS, JEREMY C ART UNIT PAPER NUMBER 2835 MAIL DATE DELIVERY MODE 01/03/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KENTARO FUJII, YOSHIO WATANABE, and TORU TAKEBE ___________ Appeal 2009-014976 Application 10/410,434 Technology Center 2800 ____________ Before GREGORY J. GONSALVES, JEFFREY S. SMITH, and JASON V. MORGAN, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014976 Application 10/410,434 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8, 18-20, 22, and 23. (App. Br. 3.) Claims 9-17 and 21 were withdrawn. (Id.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary independent claim 1 under appeal reads as follows: 1. A multi-layer printed circuit board comprising: a first substrate having a conductive pattern formed on a first face thereof and a non-penetrated connection hole formed on a second face for exposing said conductive pattern to outside said first substrate; a second substrate having a conductive pattern formed on a first face thereof opposed to the second face of said first substrate, and a conductive bump formed integrally on the conductive pattern; and an insulating layer formed between and adhering said first substrate and said second substrate, wherein, said first substrate and said second substrate are integrated by engaging said bump of said second substrate with said connection hole of said first substrate, and by intervening a conductive cement between said bump and said conductive pattern which is exposed to said outside from said connection hole, wherein said conductive cement comprises conductive colloidal particles dispersed with a dispersant in said conductive cement, and wherein a quantity of the dispersant is approximately 6% by weight with respect to the conductive colloidal particles’ 94% by weight after drying. Rejections on Appeal The Examiner rejected claims 1-8, 18-20, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Frankeny (U.S. 5,279,711; Jan. 18, 1994), Appeal 2009-014976 Application 10/410,434 3 Shohji (U.S. 6,569,262 B1; May 27, 2003), and Katoh (U.S. 6,554,180 B1; Apr. 29, 2003). (Ans. 4-6.) The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Frankeny, Shohji, Katoh, and Ito (U.S. 5,907,007; May 25, 1999). (Ans. 7.) Appellants’ Contentions Appellants contend that the Examiner erred in rejecting independent claims 1 and 22 because the combination of Frankeny, Shohji, and Katoh does not teach or suggest “a conductive cement with conductive colloidal particles.” (App. Br. 9-10.) In addition, Appellants contend that the Examiner erred in rejecting independent claim 22 for the additional reason that the prior art combination does not teach or suggest a “resin.” (Id. at 10.) Appellants contend that the Examiner erred in rejecting dependent claim 23 because the combination of Frankeny, Shohij, Katoh, and Ito does not teach or suggest “an acrylic resin dispersant for the colloidal particles.” (Id.) ISSUES Did the Examiner err in finding that that the combination of Frankeny, Shohji and Katoh teaches or suggests “a conductive cement [that] comprises conductive colloidal particles,” as recited in independent claims 1 and 22? Did the Examiner err in finding that the prior art combination teaches or suggests a “resin,” as recited in independent claim 22? Did the Examiner err in finding that Ito teaches or suggests that “the resin is an acrylic resin,” as recited in dependent claim 23? Appeal 2009-014976 Application 10/410,434 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief) that the Examiner has erred. We disagree with Appellants’ conclusion. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 3-11) in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. But we highlight and address specific findings and arguments regarding the claimed limitations of “a conductive cement [that] comprises conductive colloidal particles” and a “resin.” Appellants contend that the Examiner erred in rejecting independent claims 1 and 22 because the combination of Frankeny, Shohji and Katoh does not teach or suggest “a conductive cement [that] comprises conductive colloidal particles.” (App. Br. 8-9.) To support this contention, Appellants argue that “there is nothing in Frankeny that suggests using the conductive colloidal particles of Shohji.” (Id. at 9.) As explained by the Examiner, however, Frankeny teaches that joining metallurgy may include solder and therefore, one of ordinary skill in the art would have sought a suitable solder material for use in Frankeny’s sealing method such as the solder paste containing conductive colloidal properties as taught by Shoji and Katoh. (Ans. 5, 8.) The Examiner further explains that the claim term “conductive cement” encompasses solder paste because solder paste acts as a cement as it “hardens and bonds two materials together.” (Id. at 10.) Accordingly, we find that the Examiner, giving the claim its broadest reasonable meaning consistent with the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Appeal 2009-014976 Application 10/410,434 5 Cir. 1997), properly relies on the solder paste as taught by the combination of Frankeny, Shoji, and Katoh as the claimed “conductive cement [that] comprises conductive colloidal particles.” Appellants also contend that the Examiner further erred in rejecting claim 22 because Shohji does not teach use of the claimed “resin” because it instead teaches using a rosin. (App. Br. 10.) As explained by the Examiner, however, a rosin is a type of resin and therefore, the rosin of Shohji qualifies as the claimed resin. (Ans. 10.) Appellants also contend that the Examiner erred in finding that “one of skill in this art would have turned to Ito for a teaching of an acrylic resin dispersant for the colloidal particles of claim 23.” (App. Br. 10.) As explained by the Examiner, however, one would be motivated to use the dispersant of Ito to provide greater cracking resistance and therefore, “to make the device more reliable.” (Ans. 11.) Accordingly, for these reasons and the reasons expressed in the Examiner’s Answer, we sustain the Examiner’s rejections of independent claims 1 and 22 and dependent claim 23. We also sustain the rejections of the claims that depend from claim 1 (i.e., claims 2-8 and 18-20) because Appellants did not set forth any separate patentability arguments for those claims in their Appeal Brief. (See App. Br. 7-11.)1 1 We note that Appellants raised several arguments in their Reply Brief that were not mentioned in their Appeal Brief. For example, Appellants assert in their Reply Brief that Kotah and Shohji fail to disclose a dispersant in a conductive cement that is “approximately 6% by weight with respect to the conductive colloidal particles’ 94% by weight after drying.” (Reply Br. 4 (emphasis omitted).) Appellants also assert for the first time in their Reply Brief that the prior art references do not teach or disclose certain claim Appeal 2009-014976 Application 10/410,434 6 DECISION The Examiner’s rejection of claims 1-8, 18-20, and 22-23 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)(1)(iv). AFFIRMED babc limitations from dependent claims 4-6 and 19. (Id. at 5-8.) Because Appellants could have made these arguments in their Appeal Brief and did not do so, the arguments are considered to be waived and will not be considered. See, e.g., Ex Parte Nakashima, 93 USPQ2d 1834, 1836-38 (BPAI 2010); Ex Parte Borden, 93 USPQ2d 1473, 1473-77 (BPAI 2010) (informative).