Ex Parte Gallo et al

Board of Patent Appeals and Interferences

Nov 8, 2010

10546088 (B.P.A.I. Nov. 8, 2010)

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.
10/546,088 07/25/2006 Anthony A. Gallo 3833-052493 7069
28289 7590 11/09/2010
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EXAMINER
MCCULLEY, MEGAN CASSANDRA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
11/09/2010 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 ANTHONY A. GALLO,
MARK T. DIMKE,
and TANWEER AHSAN
____________

Appeal 2010-009564
Application 10/546,088
Technology Center 1700
___________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-009564
Application 10/546,088

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 94, 97, and 982 under 35 U.S.C. § 103(a) as being
unpatentable over Miyake (US Patent Publication 2001/0037003 A1, issued
November 2001) in view of Martin (US 3,931,109, issued January 1976).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 94 reads as follows:
94. A method of reducing gate leakage in an electrical
or electronic device comprising encapsulating the device with a
molding composition comprising an epoxy resin, a crosslinking
agent for the epoxy resin and a catalyst comprising ethyl
triphenyl phosphonium acid acetate and a tertiary amine.

Appellants do not set forth separate, substantive arguments for any
particular claim on appeal. Accordingly, all of the appealed claims stand or
fall together with claim 94.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.

2 All other claims have been canceled in the amendment filed September 30,
2009 (after the Final Action), which was entered by the Examiner on
October 9, 2009 (see also, App. Br. 3).
Appeal 2010-009564
Application 10/546,088

3
Appellants argue that the preamble recites a necessary limitation of
the claim, “reducing gate leakage”, that is not taught in the applied prior art.
(App. Br. 7-9; Reply Br. 7-9). This argument is unavailing.
As correctly explained by the Examiner, an artisan would have used
Martin’s EtPPOAc catalyst as a known functional equivalent to the EtPPO-
borate catalyst required by Miyake, based on a reasonable expectation of
success, because the catalyst of Martin belongs to the same genus and is
different only by an anion from the catalyst of Miyake (Ans. para. bridging
6-7; see also Ans. 11). We further note that claim 94 recites “a catalyst
comprising” and thus does not preclude the use of both known phosphonium
catalysts from being used in combination with the tertiary amine catalyst
claimed3. Thus, we find that the desired reduction in gate leakage would
have naturally flowed from following the suggestion of the applied prior art
to encapsulate a semiconductor device with an epoxy resin molding
composition which includes the claimed EtPPOAc catalyst in combination
with the well known tertiary amine catalyst, referred to as DBU by both the
Examiner and Appellants, that is also taught in Miyake. Ex parte Obiaya,
227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017 (Fed. Cir. 1986)
(holding that the recognition of another advantage flowing naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the difference would otherwise be obvious).

3 “It is prima facie obvious to combine two compositions each of which is
taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose.” In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Thus, the use of multiple
catalysts, each known to be useful for the same purpose, would have
likewise been prima facie obvious.

Appeal 2010-009564
Application 10/546,088

4
Appellants also contend that Martin is nonanalogous art (App. Br. 9-
10; Reply Br. 9-12). We do not agree. As pointed out by the Examiner,
both references are from the same field of endeavor of epoxy and phenolic
resin coating compositions for substrates (Ans. 6-8). Furthermore,
Appellants have not provided any persuasive technical reasoning or evidence
that the artisan would not have appreciated the functionally equivalent
EtPPO-borate epoxy resin catalyst, as taught in Martin, would also
predictably function as a catalyst for the epoxy resin coatings of Miyake.
Appellants also argue that the Declaration filed November 6, 2008,
demonstrates unexpected results (App. Br. 10-12; Reply Br. 12-14).
However, we are in complete agreement with the Examiner’s cogent
analysis of the Declaration evidence (Ans. 8-10), including that the proffered
evidence is not commensurate in scope with the claims and does not
compare the invention to the closest prior art, which would include the
EtTPPO-borate catalyst of Miyake (id.). Under these circumstances,
Appellants have not shown reversible error in the Examiner’s determination
that the Appellants’ Declaration evidence fails to overcome the prima facie
case of obviousness.
Appellants’ contentions that impermissible hindsight has been used
and that the intended purpose of Miyake would have been destroyed by the
use of the EtPPOAc (App. Br. 12-15; Reply Br. 14-17) are also unavailing
for the reasons articulated by the Examiner. (Ans. 10, 11). Additionally,
since the language used in claim 94 is open-ended (i.e., “a catalyst
comprising”), it encompasses the use of any number of the well known
epoxy resin coating catalysts, including EtPPOAc, EtPPO-borate, and DBU.
Moreover, the argument that the intended purpose of Miyake would have
Appeal 2010-009564
Application 10/546,088

5
been destroyed is based on the incorrect premise that Miyake’s catalysts are
limited to the catalysts exemplified by Miyake. We find no teaching or
suggestion in Miyake that the catalyst must be limited to the EtPPO-borate
catalyst, or to the EtPPO-borate in combination with the explicitly
mentioned “other known catalysts” that include DBU. To the contrary,
Miyake broadly teaches that other known catalysts may be used in
combination with the EtPPO-borate, provided that “the characteristics of the
latent catalyst of this invention are not deteriorated” (para. [0051]). No
evidence has been proffered by Appellants that the inclusion of the known
EtPPOAc catalyst of Martin would have deteriorated the latent catalyst of
Miyake.
For the reasons stated above and in the Answer, we sustain the § 103
rejection of all appealed claims as being unpatentable over Miyake in view
of Martin.
The decision of the Examiner 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).
AFFIRMED

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