Ex Parte KATO et al

Patent Trial and Appeal Board

Mar 30, 2015

12366707 (P.T.A.B. Mar. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKAHIKO KATO, TAKASHI NAITO, YUICHI SAWAI,
HARUO AKAHOSHI, and SHINJI YAMADA,
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Appeal 2013-005208
Application 12/366,707
Technology Center 2800
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Before CHUNG K. PAK, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 4–6, and 13–17.
1
We have
jurisdiction pursuant to 35 U.S.C. § 6.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced from the Appeal Brief below:

1
According to Appellants, claims 7–12 have been withdrawn from
consideration. (App. Br. 2).
Appeal 2013-005208
Application 12/366,707

2

1. An electronic component comprising a wiring that contacts a glass
member or a glass ceramics member, wherein the wiring is formed
of a binary alloy made of two elements, Cu and Al, and contains
3.0 to 15.0 % by weight of Al, wherein the wiring is formed on a
substrate and the wiring is directly covered with the glass member
or the glass ceramics member.

The Examiner maintains the following grounds of rejection:
2

Claims 1, 5, and 14 stand rejected under 35 U.S.C. §103(a) over
Kurihara (US 4,761,325, issued Aug. 2, 1988) in view of Suwa (US
4,025,336, issued May 24, 1977).
Claim 4 stands rejected under 35 U.S.C. §103(a) over Kurihara in
view of Suwa and Pryor (US 4,712,161, issued Dec. 8, 1987).
Claim 6 stands rejected under 35 U.S.C. §103(a) over Kurihara in
view of Suwa, Pryor, and Yamanaka (US Patent Application 2008/0024063
A1, published Jan. 31, 2008).
Claims 13 and 16 stand rejected under 35 U.S.C. §103(a) over
Kurihara in view of Suwa and the characterization of Applicants Admitted
Prior Art (hereinafter “AAPA”), as set forth in the Final Office Action
mailed January 5, 2012.
Claim 15 stands rejected under 35 U.S.C. §103(a) over Kurihara in
view of Suwa, AAPA, and Pryor.
Claim 17 stands rejected under 35 U.S.C. §103(a) over Kurihara in
view of Suwa, AAPA, and Yamanaka.

2
The complete statement of the appealed rejections appears in the January
5, 2012 Final Action.
Appeal 2013-005208
Application 12/366,707

3
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combination of Kurihara and Suwa would have led one
skilled in the art to wiring formed of a binary alloy made of two elements,
Cu and Al, as required by the subject matter of independent claim 1?
3

After review of the arguments presented by Appellants in the Brief
and the responses presented by the Examiner in the Final Office Action and
the Answer, we reverse the appealed rejections. We add the following.
Appellants correctly argue the Examiner has not established a prima
facie case of obviousness with respect to the subject matter recited in
independent claim 1 because Kurihara fails to disclose that the wiring is
formed of a binary alloy made of two elements of Cu and Al, and contains
not more than 3.0 to 15.0% weight of Al. Appellants correctly argue Suwa
does not remedy the above-noted deficiency of Kurihara because Suwa
discloses an alloy containing aluminum, copper, and iron silicide, which is
not a binary alloy made of two elements, Cu and Al. (App. Br. 7–9; Suwa,
col. 2, ll. 36–43).
On this record, the Examiner has not shown that the broadest
reasonable interpretation of “binary alloy” is “an alloy formed of two
primary metals, which may have trace metals included therein.” (Ans. 3).
Even if the Examiner’s construction of “binary alloy” is correct in that it
“may have trace metals included therein,” the Examiner has not established
that “trace metals” allows for the inclusion of 2 to 10% by weight of the iron
silicide as described by Suwa. (Suwa, col. 3, ll. 27–32).

3
We limit our discussion to independent claim 1, the sole independent claim
on appeal. We also limit our discussion to Kurihara and Suwa. The
additional references cited in rejecting the dependent claims do not address
the dispositive issue.
Appeal 2013-005208
Application 12/366,707

4
Since we reverse for the lack of the presentation of a prima facie case
of obviousness by the Examiner, we need not reach the issue of the
sufficiency of the evidence regarding unexpected results. See In re Geiger,
815 F.2d 686, 688 (Fed. Cir. 1987).

CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED