Ex Parte Kodas et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10265295 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOIVO T. KODAS, MARK J. HAMPDEN-SMITH,
KAREL VANHEUSDEN, HUGH DENHAM,
AARON D. STUMP, ALLEN B. SCHULT,
PAOLINA ATANASSOVA, and KLAUS KUNZE
____________

Appeal 2008-5872
Application 10/265,295
Technology Center 1700
____________

Decided: January 23, 2009
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-22 and 38-43, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for forming a conductive electronic
feature on a substrate. Claim 1 is illustrative:
Appeal 2008-5872
Application 10/265,295

1. A method for the fabrication of a conductive electronic feature
on a substrate, comprising the steps of:
(a) providing a substrate having a recessed feature;
(b) depositing a flowable liquid silver metal precursor composition
into at least a portion of said recessed feature; and
(c) heating said precursor composition to a temperature of not greater
than about 400°C to convert said precursor composition to a conductive
feature having a resistivity of not greater than 10 times the resistivity of the
bulk metal.

The References
Beach 4,948,623 Aug. 14, 1990
Kumar 5,244,538 Sep. 14, 1993
Kiguchi (EP ‘641) EP 0 930 641 A2 Jul. 21, 1999
Kydd (Kydd ‘889) 6,036,889 Mar. 14, 2000
Takamatsu 6,197,366 B1 Mar. 6, 2001
Kydd (Kydd ‘745) 6,379,745 B1 Apr. 30, 2002

K.F. Teng and Robert W. Vest, “Liquid Ink Jet Printing with MOD Inks for
Hybrid Microcircuits,” CHMT-12 IEEE Trans. on Components, Hybrids
and Mfg. Tech. 545-49 (Dec. 1987).

The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
22 and 38 over Kydd ‘889 or Takamatsu, in view of Kumar or Beach;
claims 1-22 and 38 over Kydd ‘889 or Takamatsu, in view of Kumar or
Beach, further in view of Teng; claims 39-41 over Kydd ‘889 or Takamatsu,
in view of Kumar or Beach, further in view of Teng and Kydd ‘745;
claims 42 and 43 over Kydd ‘889 or Takamatsu, in view of Kumar or Beach,
further in view of Teng and EP ‘641.
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OPINION
We affirm the Examiner’s rejections.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references would have rendered the
Appellants’ claimed invention prima facie obvious to one of ordinary skill in
the art?
Rejections under 35 U.S.C. § 103 of claims
1-22 and 38 over Kydd ‘889 or Takamatsu,
in view of Kumar or Beach, and over
Kydd ‘889 or Takamatsu, in view of
Kumar or Beach, further in view of Teng

The Appellants separately argue claims 1, 10, 16, and 17 (Br. 7-16).
The Appellants address claims 11-14, 18-22, and 38 (Br. 13-16), but do not
provide a substantive argument for the separate patentability of those claims.
We therefore limit our discussion to claims 1, 10, 16, and 17. The other
claims stand or fall with the argued claim from which they depend. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Findings of Fact
Kydd ‘889 coats polymer substrates with a mixture of a metal-organic
decomposition (MOD) compound and metal powder flakes, in a vehicle that
dissolves the MOD compound and suspends the metal powder flakes to
provide inks and pastes that can be applied by screen printing, stenciling,
gravure printing or other direct contact printing processes (col. 8, ll. 1-4;
col. 9, ll. 28-45). Kydd ‘889 heats the mixture to approximately 200-350°C
to produce an electrical conductor on the substrate and to bond electrical
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Application 10/265,295

components to the conductor (col. 8, ll. 4-8). The MOD preferably is silver
neodecanoate (col. 8, ll. 16-17), which is one of the Appellants’ silver
precursor compounds (Spec. 18: Table 1). Heating the mixture to a
temperature just above about 300°C sinters the deposit to near theoretical
density with an electrical resistivity less than twice that of the bulk metal
(col. 6, l. 65 – col. 7, l. 2).
Takamatsu discloses a metal paste that exhibits a coatable viscosity
and comprises an organo- or inorganometallic compound of a metal such as
silver that is solid at ordinary temperature and belongs to groups 3 through
15 of the periodic table and, as a medium, an amino compound (abstract;
col. 3, ll. 29-31; col. 5, ll. 45-51). The metal paste has a baking temperature
of 90-550°C which enables it to be used on substrates including
thermoplastic and thermosetting resins that cannot withstand high
temperatures (col. 8, l. 66 – col. 9, l. 11).
Kumar fills channels in a dielectric substrate with metal to form metal
lines therein (col. 2, ll. 48-50). The disclosed methods for depositing the
metal are chemical vapor deposition, electroless plating, sputtering, and
evaporating (col. 4, l. 61 – col. 5, l. 59).
Beach uses chemical vapor deposition to form conformal deposits of
metals such as copper, silver, and gold in trenches in all types of substrates
at low temperature (col. 4, ll. 3-7; col. 12, ll. 39-54).
Teng discloses decomposing ink jet printer MOD film to silver film at
300°C (p. 548).

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Analysis
Claim 1
The Appellants argue that one of ordinary skill in the art would not
have been motivated to combine the thick film deposition techniques of
Kydd ‘889 and Takamatsu with the incompatible gaseous or low viscosity
liquid deposition techniques of Kumar and Beach (Br. 9-12).
Kydd ‘889 and Takamatsu do not limit their methods to substrates
having no recesses. Hence, it would have been prima facie obvious to one
of ordinary skill in the art to apply their compositions to substrates having
recesses such as those of Kumar and Beach. Moreover, the Appellants
indicate that it was well known in the art to apply flowable liquid metal
precursor compositions into recesses (Spec. 3:12 – 6:28).1
Claim 10
The Appellants argue that “[s]imply because the claimed method
[application using a syringe], by itself, is known in the art, does not lead to
the conclusion that the method could be used for a particular process absent
some suggestion to make the combination” (Br. 13).
The disclosures by Kydd ‘889 that the inks and pastes have viscosities
suitable for application by direct contact printing processes (col. 9, ll. 28-

1 In fact, the Appellants acknowledge (Spec. 6:6-12) the existence of a single
reference (Capote, US 5,716,663) that discloses each element of the
Appellants’ claim 1, i.e., providing a substrate having a groove (col. 12,
ll. 14-17), depositing a flowable precursor composition of a metal that can
be silver into the groove (col. 5, ll. 24-25; col. 12, ll. 14-16), and heating the
precursor composition to a temperature of about 100°C to about 350°C to
convert the precursor composition to a conductive feature (col. 20, ll. 45-59;
col. 21, ll. 19-22; col. 22, ll. 1-15, 34-37) having a resistivity approaching
that of the bulk metal (col. 3, ll. 21-23; col. 5, ll. 23-27).
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32), and by Takamatsu that the pastes have a coatable viscosity (col. 5,
ll. 45-48) would have led one of ordinary skill in the art, through no more
than ordinary creativity, to use known techniques suitable for applying
compositions having such a viscosity, including syringe application
(acknowledged by the Appellants to be a known technique (Br. 13)). See
KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (In making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”).
Claims 16 and 17
The Appellants argue, in reliance upon Kydd ‘889’s Example I
(col. 11, ll. 14-42), that Kydd ‘889’s conductive features heated at 185°C
have a resistivity of 54 microohm cm which is about 30 times the resistivity
of bulk silver (1.59 microohm cm; Kydd ‘889, col. 12, ll. 7-8) (Br. 14). The
Appellants argue that in Kydd ‘889’s table at column 12, lines 48-55,
wherein the resistivities are 2.11 to 5.26 microohm cm, the lowest heating
temperature is 228°C, which is above the 200°C temperature in claim 16
(Br. 14-15).
In Kydd ‘889’s Example I wherein the resistivity is 54 microohm cm,
the ratio of silver flake to silver neodecanoate is 0.88/1.10 (col. 11, ll. 19-
20). In Kydd ‘889’s Example III wherein the resistivities are 2.11 to
5.26 microohm cm, the ratio of silver flake to silver neodecanoate is 12/3
(col. 12, ll. 21-22), which is much larger. Kydd ‘889 would have led one of
ordinary skill in the art, through no more than ordinary creativity in view of
Kydd ‘889’s desire to cure at temperatures low enough to not damage the
substrate (col. 1, ll. 55-59), to add additional silver flake to obtain low
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resistivities at sufficiently low heating temperatures such as not greater than
about 200°C and not greater than about 150°C recited, respectively, in the
Appellants’ claims 16 and 17. See KSR, 127 S. Ct. at 1741. The
“comprising” transition term in the Appellants’ claim 1, from which claims
16 and 17 depend, opens the claims to non-recited components such as
Kydd ‘889’s silver flake. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981).
The Appellants argue, apparently with respect to claim 11 which
requires applying the precursor composition using an ink jet device, that the
pastes of Kydd ‘889 and Takamatsu, due to their relatively high viscosity,
cannot be deposited using the ink jet device disclosed by Teng (Br. 17).
That argument is not persuasive because Kydd ‘889 discloses that the
composition can be in the form of an ink as well as a paste (col. 9, ll. 28-32),
and Takamatsu discloses that the viscosity can be adjusted as desired by
changing the relative amounts of organo- or inorganometallic compound and
amino compound to form an ink (col. 2, ll. 58-60 col. 2, ll. 58-60; col. 5,
ll. 48-51). Hence, Kydd ‘889 and Takamatsu would have indicated to one of
ordinary skill in the art that their compositions can be applied using an ink
jet printer.
Rejection under 35 U.S.C. § 103 of claims 39-41
over Kydd ‘889 or Takamatsu, in view of Kumar
or Beach, further in view of Teng and Kydd ‘745
Findings of Fact
Kydd ‘745 discloses a composition comprising a metal powder
mixture and a reactive organic medium (ROM) that “can be applied to
temperature-sensitive substrates and cured to well-consolidated, well-bonded
circuit traces by heat treatment at a temperature which does not damage the
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substrate” (col. 8, ll. 10-14). Kydd ‘745 discloses that “[b]y selecting
constituents and additives, it has proven possible to produce a range of
printable compositions ranging from fluid inks with a viscosity of
15 centipoise to solid powders” (col. 10, ll. 59-62).
Analysis
The Appellants argue that it appears that Kydd ‘745’s low viscosity
compositions would not function in the deposition processes of Kydd ‘889
and Takamatsu (Br. 21).
That argument is not convincing because Kydd ‘745 discloses that the
composition can be used in screen printing, stenciling and gravure printing
(col. 6, ll. 63-65) which are used by Kydd ‘889 (col. 9, ll. 28-32), and can be
in the form of an ink (col. 10, ll. 59-62) which is a form Takamatsu’s
composition can be in after appropriate viscosity adjustment (col. 2, ll. 58-
63).
Rejection under 35 U.S.C. § 103 of claims 42 and 43
over Kydd ‘889 or Takamatsu, in view of Kumar
or Beach, further in view of Teng and EP ‘641
The Appellants do not provide a substantive argument as to the
separate patentability of claims 42 and 43 (Br. 22). Hence, claims 42 and 43
fall for the reasons given above regarding claim 1 from which claims 42 and
43 indirectly depend.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied references would have rendered the
Appellants’ claimed invention prima facie obvious to one of ordinary skill in
the art.
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DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-22 and 38 over
Kydd ‘889 or Takamatsu, in view of Kumar or Beach, claims 1-22 and 38
over Kydd ‘889 or Takamatsu, in view of Kumar or Beach, further in view
of Teng, claims 39-41 over Kydd ‘889 or Takamatsu, in view of Kumar or
Beach, further in view of Teng and Kydd ‘745, and claims 42 and 43 over
Kydd ‘889 or Takamatsu, in view of Kumar or Beach, further in view of
Teng and EP ‘641 are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

PL Initial:
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