Ex Parte Kotake et al

Patent Trial and Appeal Board

Feb 21, 2019

13980385 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/980,385 08/28/2013
42798 7590 02/21/2019
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Tomohiko Kotake
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20371-134966 7596
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
02/21/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOHIKO KOT AKE, MASATO MIY ATAKE,
SHUNSUKE NAGAI, SHINTARO HASHIMOTO, YASUO INOUE,
SHIN T AKANEZA WA, and HIKARI MURAI
Appeal2018-000947
Application 13/980,385
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-21 and 34--39. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision refers to the Specification ("Spec.") filed July 18, 2013,
Appellants' Appeal Brief ("Appeal Br.") filed June 5, 2017, the Examiner's
Answer ("Ans.") dated September 5, 2017, and Appellants' Reply Brief
("Reply Br.") filed November 3, 2017.
2 Appellants identify Hitachi Chemical Company, Ltd. as the real party in
interest (Appeal Br. 2).
Appeal2018-000947
Application 13/980,385
STATEMENT OF THE CASE
The invention relates to a modified silicone compound suitable for a
semiconductor package and a printed wiring board, as well as a
thermosetting insulating resin composition suitable for a prepreg, a
laminated plate, and a printed wiring board using this compound (Spec. ,r 1 ).
Appellants disclose that an objective of the invention is to provide the
composition with excellent low water absorbability and low thermal
expansion properties (id. ,r 7). To achieve this objective, Appellants disclose
the modified silicone compound is prepared by reacting a siloxane diamine,
a maleimide compound with at least two N-substituted maleimide groups,
and an amine compound with an acidic substituent (id. ,r 9). Appellants
additionally disclose that an amine compound with at least two primary
amino groups per molecule may be included in the above reaction mixture
(id. ,I 12).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A modified silicone compound prepared by reacting: (A)
a siloxane diamine represented by a general formula (1 ); (B) a
maleimide compound with at least two N-substituted maleimide
groups in a molecular structure; (C) an amine compound with an
acidic substituent represented by a general formula (2),
R1 ", R:3
I
t .
!
!
!
H2N-R5 Si---- a+------ s1---Re-NH2 (1)
! I I
'" R2 _) n R4
wherein a plurality ofR1s each independently represent an
alkyl group, a phenyl group, or a substituted phenyl group and
may be the same as or different from each other, a plurality of
2
Appeal2018-000947
Application 13/980,385
R2s each independently represent an alkyl group, a phenyl group,
or a substituted phenyl group and may be the same as or different
from each other, R3 and R4 each independently represent an alkyl
group, a phenyl group, or a substituted phenyl group, Rs and R6
represent C3H6, and n represents an integer of 2-50,
wherein R9 or a plurality of R9s each independently
represent a hydroxyl, a carboxyl, or a sulfonic group that is an
acidic substituent, R 10 or a plurality of R 10s each independently
represent a hydrogen atom, an aliphatic hydrocarbon group with
1-5 carbon atoms, or a halogen atom, x represents an integer of
1-5, y represents an integer of 0-4, and x+y=5.
The remaining independent claim 2 recites a modified silicone
compound prepared from the reaction mixture as in claim 1, additionally
including an amine compound with at least two primary amino groups per
molecule.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
1. Claims 1-21 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement; and
3
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Application 13/980,385
2. Claims 1-21 and 34--39 under 35 U.S.C. § I03(a) as
unpatentable over Kotake3 in view of Rosenfeld. 4
ANALYSIS
Rejection 1: § 112, first paragraph, written description requirement
The Examiner finds that the written description of the invention fails
to support the recitation in claim 1 where Rs and R6 of formula 1 represent
C3H6 (Ans. 2). The Examiner finds that the written description of the
invention also fails to support the range of amine equivalents recited in
claims 20 and 21 (id. at 3). The Examiner finds that the only descriptive
support for Rs and R6 being C3H6 and the amine equivalents recited in
claims 20 and 21 are the particular disclosed tradenamed products, which
fail to support applying C3H6 for Rs and R6 and these amine equivalent
values generally to the claimed invention (id.). In particular, the Examiner
finds that the ordinary artisan would not consider there to be support for
these attributes being applied broadly to compounds, other than the disclosed
tradenamed compounds (id. at 11 ). The Examiner further finds that "it is not
even clear that these [tradenamed] compounds fall within the scope of the
claimed formula [1]" (id. at 12).
Appellants assert that the Specification discloses that Rs and R6
independently represent a divalent organic group, and note that C3H6 is a
divalent organic group (Appeal Br. 7). Appellants further assert that the
Specification discloses several tradenamed examples of siloxane diamines,
3 Kotake et al., WO 2010/110433 Al, published September 30, 2010. The
Examiner relies on, without objection, the English-language equivalent to
US 2012/0077401 Al, published March 29, 2012 ("Kotake").
4 Rosenfeld et al., US 5,856,425, issued January 5, 1999 ("Rosenfeld").
4
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Application 13/980,385
including KF-8010, KF-8012, X-22-161A, and X-22-161B, within the scope
of formula ( 1) (id.). Appellants direct our attention to SILICONES FOR RESIN
MODIFICATION,s which teaches that each ofKF-8010, KF-8012, X-22-161A,
and X-22-161B has C3H6 in positions corresponding to Rs and R6 of fornmla
( 1) (id. at 7-8). Appellants argue that any person skilled in the art would
find that the Specification, as originally filed, provides adequate written
description of Rs and R6 representing a divalent organic group including
C3H6 in formula (1) over the full scope ofR1 through R4 and n (id. at 8). In
addition, Appellants assert that the Specification discloses examples of
siloxane diamines having amine equivalent values at the endpoints and with
the range recited in both claims 20 and 21 (id. at 9).
In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for
lack of adequate descriptive support, it is incumbent upon the Examiner to
establish that the originally-filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that Appellants had
possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Adequate
description under the first paragraph of 35 U.S.C. § 112 does not require
literal support for the claimed invention. Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) ("In order to satisfy the written
description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue."); see
also In re Herschler, 591 F.2d 693, 701 (CCPA 1979); In re Edwards, 568
F.2d 1349, 1351-52 (CCPA 1978); In re Wertheim, 541 F.2d 257,262
s Shin-Etsu Chemical Co., Ltd., SILICONES FOR RESIN MODIFICATION 1-12
(2011).
5
Appeal2018-000947
Application 13/980,385
(CCP A 197 6). Rather, it is sufficient if the originally-filed disclosure would
have conveyed to one having ordinary skill in the art that an appellant had
possession of the concept of what is claimed. In re Anderson, 4 71 F .2d
1237, 1242 (CCPA 1973). In other words, the disclosure must convey with
reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. Purdue Pharma, supra ("Put another way, one
skilled in the art, reading the original disclosure, must immediately discern
the limitation at issue in the claims.").
Here, there is no dispute that Appellants' Specification, as originally
filed, discloses siloxane diamines of formula (1 ), wherein Rs and R6
represent a divalent organic group. There is also no dispute that the
Specification discloses several tradenamed siloxane diamine products
including KF-8010, KF-8012, X-22-161A, and X-22-161B. Further,
although the Examiner questions whether these tradenamed siloxane
diamine products are within the scope of formula ( 1) of claim 1, we note the
Specification clearly teaches this relationship (Spec. ,r 17). In addition, we
note the Specification also teaches the amine equivalent for each of these
tradenamed siloxane products, thereby providing specific examples of amine
equivalents of 430, 2200, 800, and 1500, respectively (id.).
Where specific examples of substituents in a chemical formula are
disclosed, such examples may generally be relied on for written description
support for a claim requiring these substituents in the chemical formula
absent some reasoning or evidence that the substituents may not be so freely
substituted. See In re Driscoll, 562 F.2d 1245, 1249-50 (CCP A 1977)
(reversing a written description rejection of a claimed compound whose
substituent was limited to C1-C6 alkylsulfonyl, where the specification
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Application 13/980,385
disclosed genus of compounds having any of 14 classes of substituents at R,
one class being C1-C6 alkylsulfonyl); In re Johnson, 558 F.2d 1008, 1018-
19 (CCP A 1977) (reversing a written description rejection where claims
excluded two species within a genus, where specification disclosed the
genus and numerous species therewithin). Here, the Examiner provides
neither reasoning nor evidence to question Appellants' possession of
compounds of formula (1) limited to C3H6 at positions Rs and R6.
Likewise, where specific species of compounds within the scope of a
genus are disclosed, as well as a specific value of a property for each
species, such examples may generally be relied on for written description
support for a range for that property bounded by the specific values of the
disclosed species. In re Blaser, 556 F.2d 534, 536 (CCP A 1977); Wertheim,
541 F .2d at 262. Here, the Examiner provides neither reasoning nor
evidence to question Appellants' possession of the range of amine
equivalents from 430 to 2,200.
Accordingly, we will not sustain the Examiner's written description
rejection of claims 1-21.
Rejection 2: § 103(a) Obviousness
Appellants argue all the claims as a group. As 37 C.F.R.
§ 4I.37(c)(l)(iv) (2016) provides, we select claim 1 as representative and
remaining claims 2-21 and 34--39 stand or fall with claim 1.
After review of the opposing positions Appellants and the Examiner
articulate and the Examiner's evidence of obviousness in light of the
Appellants' countervailing evidence, we determine that a preponderance of
the evidence supports the Examiner's conclusion regarding the obviousness
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Appeal2018-000947
Application 13/980,385
of claim 1. Thus, Appellants have not identified reversible error in the
Examiner's obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011).
The Examiner finds that Kotake discloses a thermosetting resin
composition produced by reacting a maleimide with two N-substituted
maleimide groups ( corresponding to component (B) of claims 1 and 2) with
a diamine, wherein the diamine may be a mixture of diamines including
phenylenediamine (corresponding to component (D) of claim 2) (Ans. 4).
The Examiner also finds that Kotake discloses that the maleimide compound
and the diamine compound should be reacted with an acidic diamine
(corresponding to component (C) of claims 1 and 2) (id.). The Examiner
acknowledges that Kotake fails to teach use of a siloxane diamine (id.).
For this feature, the Examiner finds that Rosenfeld also discloses a
thermosetting resin composition produced by reacting a maleimide with
two N-substituted maleimide groups ( corresponding to component (B) of
claims 1 and 2) with a diamine, wherein the diamine may be a mixture of a
non-siloxane diamine and a siloxane diamine having the structure of formula
(1) where n is 7-200, R1 and R2 are methyl, and Rs and R6 are C3H6
(corresponding to component (A) of claims 1 and 2) (Ans. 4--5). The
Examiner also finds that Rosenfeld teaches that the resulting resin has good
reactivity, long pot life and storage, excellent adherence, low modulus and
temperature independent flexibility, and low water absorptivity (id. at 5).
The Examiner concludes that it would have been obvious to have combined
a siloxane diamine with the non-siloxane diamine of Kotake in order to
improve the resin's reactivity, long pot life and storage, adherence, modulus
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Application 13/980,385
and temperature independent flexibility, and water absorptivity, as taught by
Rosenfeld (id.).
Appellants argue that there would have been no apparent reason to
combine teachings of Kotake and Rosenfeld because the purposes of Kotake
and Rosenfeld are at odds (Appeal Br. 10-11). According to Appellants,
Kotake discloses a preference for high reactivity between a maleimide and a
diamine, whereas Rosenfeld uses a siloxane-containing diamine to lower the
reactivity between a maleimide and a diamine (id.; see also Reply Br. 6-9).
This argument is not persuasive of reversible error in the Examiner's
obviousness rejection. As the Examiner responds (Ans. 13), Appellants'
argument mischaracterizes Rosenfeld' s teachings. Specifically, while
Rosenfeld desires a long pot life, Rosenfeld also desires high reactivity and
short reaction times between the maleimide and the diamine (see Rosenfeld
Abstract ("[t]he resin paste has a long pot life and a short cure time"),
1 :34--38 ("cures rapidly, typically in less than five minutes at temperatures
up to 190° C" and "do not react at room temperature, resulting in a long pot
life"), 4:40-55). However, it is important to note that these objects are not
in conflict-Rosenfeld' s long pot life is at room temperature and
maleimide/diamine reactivity is performed at elevated temperatures (id.).
Similarly, we note Kotake's maleimide/diamine reactivity is performed at
elevated temperatures (Kotake ,r,r 65, 114). Thus, not only is there no
apparent conflict between Kotake and Rosenfeld's objectives, these
references share a common preference for high maleimide/diamine reactivity
at elevated temperatures.
Appellants next argue that one skilled in the art would not have
expected a decrease in the composition's coefficient of thermal expansion
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Application 13/980,385
("TEC") from a combination of Kotake and Rosenfeld (Appeal Br. 12). In
addition, Appellants argue that the present invention provides unexpectedly
superior results over Kotake (id. at 13). Appellants assert that Rosenfeld
does not disclose an improvement in the TEC of the composition, but instead
discloses that, due to its low modulus, the composition is flexible when
heated or cooled (id. at 12). Appellants direct our attention to Le Bourhis, 6
which teaches that a material's TEC, a, and elastic modulus, E, are
mathematically related by the formula:
"Yc;PCv
Ct ·:::::. ------ ..., ---~-----
5 £
where the Griineisen constant, ya, varies (0.4