10858344 (B.P.A.I. Mar. 28, 2012)

Ex Parte Hendricks et al

Board of Patent Appeals and InterferencesMar 28, 2012

10858344 (B.P.A.I. Mar. 28, 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. 10/858,344 06/01/2004 Cathy Hendricks 03-882 5174 20306 7590 03/29/2012 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER RUDDOCK, ULA CORINNA ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 03/29/2012 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 CATHY HENDRICKS, KATHY KELLY, and MARTIN CHOATE ____________ Appeal 2010-008298 Application 10/858,344 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 15-23. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claims 15 and 23 are representative of the subject matter on appeal and are set forth below: Appeal 2010-008298 Application 10/858,344 2 15. A copper-clad laminate comprising a resin core having a first surface and a second surface, and a copper foil joined to at least one surface of the core, wherein the copper foil has a tensile strength of less than 47 ksi measured at 20 ºC, and wherein the core has a thickness of 4 mils or less and the copper foil is selected from 1 oz copper foil or 0.5 oz copper foil. 23. A copper-clad laminate comprising a prepreg core having a first surface and a second surface, and a copper foil joined to at least one surface of the prepreg core, wherein the copper foil has a tensile strength of less than 47 ksi measured at 20 °C, wherein the prepreg core has a thickness of 4 mils or less, and wherein the copper foil is 0.5 oz copper foil. The prior art relied upon by the Examiner in rejecting the claims on appeal is: DiFranco 5,215,645 Jun. 01, 1993 Clouser 5,454,926 Oct. 03, 1995 Yuhas 5,464,658 Nov. 07, 1995 THE REJECTION 1. Claims 15-23 stand rejected for obviousness over Clouser in view of DiFranco and Yuhas. ANALYSIS The Examiner relies upon Clouser for teaching a copper foil having a tensile strength at 23°C in excess of about 60 ksi, and having a weight of about 1/8 to14 oz per square foot. Ans. 3. The Examiner admits that Clouser fails to disclose; (1) copper foils having a tensile strength less than 47 ksi at 20°C ; (2) the use of a FR4 thermosetting resin; and (3) laminates having a total thickness of 4 mils or less or 8 mils or less. Ans. 3-4. Appeal 2010-008298 Application 10/858,344 3 The Examiner relies upon DiFranco for disclosing copper foils having a tensile strength less than 47 ksi at room temperature. The Examiner states that it would have been obvious to have modified Clouser with the teachings of DiFranco on the basis that one of ordinary skill in the art would have used the DiFranco copper foil in order to create a copper foil that has the "desired ductility". Ans. 4. The Examiner relies upon Yuhas for the reasons expressed on page 4 of the Answer. Appellants argue, inter alia, that Clouser teaches away from copper foils having a tensile strength less than 60 ksi (e.g., the type disclosed in DiFranco). Appellants explain that Clouser teaches that a problem sought to be solved by Clouser is that it has not been possible to produce low-profile copper foils with high ultimate tensile strength and high elevated temperature elongations. Clouser, col. 1, ll. 50-53. Br. 4. Clouser resolves this problem by a copper electrodeposition process that produces low profile copper foils with tensile strengths in excess of 60 ksi. Appellants argue that thus Clouser teaches way from laminates including low profile copper sheets with tensile strengths less than 60 ksi. Br. 4. In response, the Examiner does not directly address these specific arguments by Appellants regarding these specific teachings of Clouser, other than to state that what matters is what the combination of disclosures taken as a whole would have suggested to one skilled in the art. Ans. 5. However, we are persuaded of error in the Examiner‘s rejection based upon Appellants’ argument that Clouser teaches away from the claimed invention. A reference that teaches away cannot serve to create a prima facie case of obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference may be said to teach away “when a person of ordinary skill, Appeal 2010-008298 Application 10/858,344 4 upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Id. “The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.” Id. In the instant case, Appellants have convincingly established that the degree of teaching away is such to support unobviousness because Clouser suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. Clouser’s invention is directed to forming and using copper foils with a tensile strength at 23°C of at least 60 ksi, which is completely outside Appellants’ range of a tensile strength at 20°C less than 47 ksi for the copper foil. See e.g., Clouser, col. 2, ll. 33-37. Indeed, Clouser’s disclosure would have directed one skilled in the art to make and use copper foils with higher tensile strengths than the copper foil claimed and used by Appellants. Accordingly, it appears that Clouser teaches away from using a lower tensile strength copper foil such as taught by DiFranco. In view of the above, we reverse the rejection. CONCLUSIONS OF LAW AND DECISION Rejection 1 is reversed. REVERSED ssl