09759018 (B.P.A.I. Oct. 29, 2009)

Ex Parte Kline

Board of Patent Appeals and InterferencesOct 29, 2009

09759018 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ERIC VANCE KLINE ____________ Appeal 2009-003893 Application 09/759,018 Technology Center 2800 ____________ Decided: October 29, 2009 ____________ Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and JEFFREY B. ROBERTSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 4-13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, but designate our affirmance as including new grounds of rejection under 37 CFR § 41.50(b). STATEMENT OF THE CASE The invention relates to a composition for containing metal ions in an electronic device. The electronic device has an integrated circuit with the inventive composition. The composition may be “contained within” a scratch coat, an encapsulant, an underfill, an organic package, a printed Appeal 2009-003893 Application 09/759,018 2 circuit board or a conformal coating (Spec. 3:10; 3:13; 3:15; 3:16; 3:20; 3:21). Claim 4 is illustrative: 4. An electronic device having an integrated circuit with a composition for containing metal ions, said composition comprising: a matrix material; a polymer which serves as an insoluble and immobile particle phase in said matrix material; and a chelating agent which is bonded to said insoluble and immobile particle phase. The Examiner relies upon the following prior art references in the rejections of the appealed claims: Berger 4,030,948 Jun. 21, 1977 Ikeda 5,973,930 Oct. 26, 1999 Raiser 6,700,209 Mar. 2, 2004 The Examiner rejected: a) claims 4 and 5 under 35 U.S.C.§ 102(b) as being anticipated by Berger; b) claims 4-101 under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Berger and Raiser; and 1 While the Examiner did not include claim 10 in the statement of the rejection, claim 10 was addressed in the body of the rejection (Ans. 8). Appellant agrees that claims 4-13 are on appeal (App. Br. 2). Accordingly the Examiner’s oversight was harmless error. Appeal 2009-003893 Application 09/759,018 3 c) dependent claims 11-13 under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Berger, Raiser, and Ikeda. Appellant focuses his remarks on claim 4 for each of the first and second grounds of rejection. Appellant only separately argue with any reasonable specificity dependent claims 9 and 12. Therefore, we will mainly focus on independent claim 4 to decide the issue in the first and second grounds of rejection on appeal, but will separately address dependent claim 9, as well as dependent claim 12 in the third ground of rejection. 37 C.F.R. § 41.37(c)(1)(vii)(2006). The § 102 Rejection ISSUE ON APPEAL Has the Appellant shown that the Examiner reversibly erred in rejecting the claims because: (a) Berger does not disclose a “polymer which serves as an insoluble and immobile particle phase in [a] matrix material” as recited in claim 4; and (b) Berger does not disclose “a chelating agent which is bonded to said . . . phase” as recited in claim 4? This issue turns on the broadest reasonable interpretation of the above noted claim language. PRINCIPLES OF LAW Claim Construction During examination of a patent application, a claim is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although claims are to be interpreted in light of the specification, limitations from the specification are Appeal 2009-003893 Application 09/759,018 4 not to be read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). An applicant seeking a narrower construction must either show why the broader construction is unreasonable or amend the claim to expressly state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997). It is well established that the transitional term "including”, which is synonymous with “comprising”, is inclusive or open-ended and does not exclude any additional, unrecited elements. See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Anticipation “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). However, the law of anticipation does not require that the reference “teach” what the subject patent (or application) teaches. Assuming that a reference is properly “prior art,” it is only necessary that the claims, as construed, “read on” something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or “fully met” by it. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). FINDINGS OF FACTS (FF) Findings of fact throughout this decision are supported by a preponderance of the evidence. Appeal 2009-003893 Application 09/759,018 5 Appellant’s Specification contains no explicit definition of “matrix”, “phase”, or “bonded”. Indeed, Appellant’s Specification never uses the word “matrix”, nor do any of the original claims (see generally Spec.). Appellant’s Specification does not describe any examples of “the polymer which serves as an insoluble and immobile particle phase”, nor does it describe any specific examples of the “bonding” of the chelating agent to the “phase” (see generally Spec.). Indeed, the Specification only depicts chelating agent 120 spaced apart from the exemplified particle 110 to which 120 is “bonded” (Spec. 6: 9-12; Fig. 1). The plain meaning of the word “matrix” encompasses “something from which something else originates, develops, or takes form” and “material in which something is enclosed or embedded”.2 The plain meaning of the word “phase” encompasses “an aspect or part under consideration”3 or “any of the major aspects in which a thing of varying forms and conditions manifests itself”4. The plain meaning of the word (verb) “bond” encompasses “to cause to adhere firmly”, “to embed in a matrix” and “to hold together or solidify by or as if by means of a bond or binder”.5 2 “matrix” Merriam-Webster’s Collegiate Dictionary, Tenth Edition, Merriam-Webster, Incorporated, 1999, p. 717. 3 "phase" Merriam-Webster’s Collegiate Dictionary, Tenth Edition, Merriam- Webster, Incorporated, 1999, p. 717. 4 “phase” The Random House College Dictionary, Random house, Inc., 1973, p. 995. 5“bond” Merriam-Webster’s Collegiate Dictionary, Tenth Edition. Merriam- Webster, Incorporated, 1999, p. 130. Appeal 2009-003893 Application 09/759,018 6 Berger describes a “conformal protective coating material” (col. 3, ll. 46-60). The material may be “modified with chelating materials admixed therewith or chemically bonded thereto” (col. 4, ll. 6-9). Berger then describes a block copolymer composition for use as the conformal coating comprising structural units 1, 2, and optionally 3 (col. 5, ll. 2-48). The structural unit 1 of the block copolymer of Berger may reasonably be viewed as a “matrix material”, and structural unit 2 of the block copolymer of Berger may reasonably be viewed as a “polymer which serves as an insoluble and immobile phase”. One of ordinary skill in the art would have immediately appreciated that the carboxyl groups depicted on structural unit 2 of Berger are a chelating agent6. ANALYSIS Appellant’s disagreement with the Examiner’s rejection focuses on the alleged deficiencies of Berger as set out in the issue above. Implicit in our review of the Examiner’s anticipation analysis is that the claim must first have been correctly construed to define the scope and meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). In particular, the Appellant and the Examiner disagree on the interpretation of each of the limitations of “a matrix material”, “a polymer which serves as an insoluble and immobile particle phase” and “a chelating agent which is bonded to said . . . phase” (emphasis added) as recited in claim 4. 6 Cotton et al, Advanced Inorganic Chemistry, John Wiley & Sons, Inc., 1999, pp. 486-488. Appeal 2009-003893 Application 09/759,018 7 Appellant argues that the Examiner is “misunderstanding” the Berger reference as well as his invention (Reply Br. 2). Appellant conceded “[t]he Examiner has shown a matrix material” in Berger (Reply Br. 3) but has not shown a polymer serving as a phase and a chelating agent bonded thereto (id.) The Examiner argues for a broader reading such that the “silicone containing polyimide” composition of Berger relied upon does “read on” the claimed “matrix” as well as the “polymer phase”, and such that the diamine portion of Berger’s composition relied upon does “read on” the claimed “chelating agent” (Ans. 3, 4). Appellant has the burden of showing that the Examiner’s interpretation of the disputed terms is unreasonable. We find no basis in the claim language or in the disclosure in the Specification on which to read the disputed language in the narrow sense urged by Appellant as a limitation into claim 4. The Specification contains no explicit definitions of any of the terms in dispute, or any examples of the “polymer which serving as an . . . immobile phase” (see FF). While Appellant urges that “an example of a matrix material . . . is . . . a conventional encapsulant” (App. Br. 4), it is also well established that claims are not limited to examples in the Specification. Accordingly, we find no basis in the claim language or in the disclosure in the Specification on which to read limitations on the “matrix”, “polymer . . .phase” and “bonded” into claim 4. The plain meaning of these terms encompasses the composition of Berger, especially in light of the Specification’s failure to describe a) any specific examples of the polymer phase, b) how such a phase co-exists with the “matrix material”, and c) how the chelating agent is bonded to the phase. Appeal 2009-003893 Application 09/759,018 8 The “matrix material” reads on the structural unit 1 of the block copolymer of Berger, and “the polymer which serves as an insoluble and immobile phase” reads on structural unit 2 of the block copolymer of Berger. Appellant indeed concedes that “polyimide can only be soluble within polyimide” (App. Br. 6) and thus contrary to Appellant’s conclusion, it is reasonable to view polyimide as “serving as an insoluble and immobile particle phase” in the composition of Berger. Appellant has also not cited any evidence or technical reasoning as to why the diamine portion of the block copolymer would not function as a chelating agent. In any event, as even Appellant’s concede (App. Br. 7), Berger describes that the material may contain a chelating agent “bonded thereto” (see FF). Furthermore, the “chelating agent which is bonded to said. . . phase” also reads on the carboxyl groups depicted in structural unit 2 (see FF). Appellant’s contention that even if the elements in Berger are “all bonded permanently together” that is an “incomplete” statement which “misses the point” of claim 4 (Reply Br. 3) is not persuasive of any error. Appellant’s claim language does not in any way distinguish over the elements of Berger all permanently bonded together (e.g., reacted together). While the Examiner's claim construction is broad, the literal language of claim 4 is also broad. We cannot say that the Examiner's construction is unreasonable. Furthermore, as discussed above, the use of the carboxyl groups of Berger as the chelating agent and/or the use of a chelating agent bonded thereto as described in Berger (col. 4, ll. 6-9) also are encompassed by the language of claim 4. Appeal 2009-003893 Application 09/759,018 9 Conclusion Therefore, for the foregoing reasons and those stated in the Answer, we sustain the § 102 rejection advanced by the Examiner in this appeal. The § 103 Rejections Principles of Law “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). “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). “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Additional Findings of Fact Appellant describes that their inventive composition may be “contained within” any one of seven “conventional host elements”, made of “any conventional material used in semiconductor manufacturing for protecting semiconductor devices (Spec. 10:19 to Spec. 11:2; emphasis added). These conventional materials include a scratch coat, an encapsulant, an underfill, a package, a printed circuit board, and a conformal coating (id). Appeal 2009-003893 Application 09/759,018 10 Raiser describes an integrated circuit package that exemplifies the use of an encapsulant and an underfill (col. 2, ll. 25-32). Berger describes a “conformal protective coating” (e.g., col. 1, ll. 8- 9), which also is “resistant to scratching” (see col. 4, l. 65). One of ordinary skill in the art would have appreciated that Berger’s protective coating would have been useful as any of the conventional protective coatings used in semiconductor manufacturing. Analysis Appellant contends that the combination of Berger and Raiser is “deficient for the same reasons that the anticipation rejection of claim 4 is deficient” (App. Br. 8). We disagree for the same reasons set forth above in our analysis of the anticipation rejection. Additionally, it would have been prima facie obvious to use both the protective conformal coating of Berger and the admittedly known conventional materials for protecting semiconductor devices, e.g., as exemplified by the encapsulant and underfill as shown in Raiser, since one would have been merely combining two compositions each known for the same purpose of protecting the semiconductor device. Kerkhoven, 626 F.2d at 850. Once one combined the protective conformal coating of Berger with, e.g., the admittedly known conformal coating material, the “conventional” conformal coating would reasonably be considered a matrix material7 and 7 Appellant states the matrix material may be a conventional encapsulant (Br. 4). When Appellant amended claim 4 to include the phrase “a matrix material”, he stated “[t]his matrix material may be, for example, a coating, Appeal 2009-003893 Application 09/759,018 11 the composition of Berger would reasonably be considered the polymer phase and chelating agent bonded thereto. With respect to dependent claim 9, Appellant’s disagreement with the claim interpretation set forth by the Examiner (App. Br. 10) focuses on the limitation “wherein said composition is said organic package”. However, Appellant’s Specification does not explicitly define the term “organic package”. The Specification states the inventive composition may be “contained in an organic package” (Spec. 9:14-15), and the package “may be a dielectric” (Spec. 9:17). Appellant admits that an organic package is a conventional protective material used in semiconductor manufacturing (see FF above). Accordingly, the Examiner’s position that the claim reads on structure wherein the composition is part of an organic package is reasonable. The claim is open-ended and does not preclude other elements as part of the composition and/or as part of the organic package. Likewise, Appellant’s contention with respect to dependent claim 12 focuses on the interpretation of the limitation “wherein said composition is said printed circuit board” are also unavailing. Appellant’s Specification does not explicitly define the term “printed circuit board”. The Specification states the inventive composition may be “contained in” the printed circuit board (Spec. 10:5-8). Appellant admits that a printed circuit board is a conventional protective material used in semiconductor manufacturing (see FF above). Accordingly, the Examiner’s position that the claim reads on structure wherein the composition is part of a printed circuit board is encapsulant, underfill, or even an organic package.” (Response filed Jan. 4, 2005, p. 6) Appeal 2009-003893 Application 09/759,018 12 reasonable. The claim is open-ended and does not preclude other elements as part of the composition and/or as part of the “printed circuit board. Conclusion Accordingly, on the record before us, the Appellant has not shown error on the part of the Examiner. It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the known elements of the prior art for their known functions to arrive at the claimed subject matter. We therefore sustain the § 103 rejections advanced by the Examiner in this appeal. ORDER Upon consideration of the appeal, and for the reasons given herein, it is ORDERED that the decision of the Examiner rejecting claims 4-13 over the prior art is affirmed, FURTHER ORDERED that since our rationale for affirmance for each ground of rejection differs from the rationale of the Examiner, our affirmance is designated as including new rejections. 37 C.F.R. § 41.50(b) (2009), FURTHER ORDERED that our decision is not a final agency action, FURTHER ORDERED that within two (2) months from the date of our decision appellant may further prosecute the application on appeal by exercise one of the two following options: 1. Request that prosecution be reopened by submitting an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1) (2009). 2. Request rehearing on the record presently before the Board. Appeal 2009-003893 Application 09/759,018 13 37 C.F.R. § 41.50(b)(2) (2009). FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009). AFFIRMED New ground of rejection under 37 C.F.R. § 41.50(b) PL Initial: sld INTERNATIONAL BUSINESS MACHINES CORPORATION DEPT. 18G BLDG. 300-482 2070 ROUTE 52 HOPEWELL JUNCTION, NY 12533 Appeal 2009-003893 Application 09/759,018 14 Application/Control No. 09/759,018 Applicant(s)/Patent Under Reexamination Notice of References Cited Examiner Ishw Arbhai Patel Art Unit 2800 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Date MM- Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Date MM- Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) x U F. Albert Cotton and Geoffrey Wilkinson, "Advanced Inorganic Chemistry, Sixth Edition," pp.486-488 (1999). V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. Delete Last PagelAdd A Page Appeal 2009-003893 Application 09/759,018 15 Appeal 2009-003893 Application 09/759,018 16 Appeal 2009-003893 Application 09/759,018 17 Appeal 2009-003893 Application 09/759,018 18 Appeal 2009-003893 Application 09/759,018 19