Ex Parte Lamb et al

Board of Patent Appeals and Interferences

Nov 10, 2010

10964288 (B.P.A.I. Nov. 10, 2010)

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.
10/964,288 10/13/2004 James E. Lamb III 27269-CNT8 2695
23589 7590 11/12/2010
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
EGWIM, KELECHI CHIDI
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
11/12/2010 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 JAMES E. LAMB, III
and
XIE SHAO
____________

Appeal 2009-013743
Application 10/964,288
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and KAREN M.
HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-3 and 5-19. We have jurisdiction under
35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013743
Application 10/964,288

2

We REVERSE.

Appellants claim the combination of a microelectronic substrate and a
fill composition adjacent the substrate surface, the composition "being at
least about 70% removed when subjected to a pre-bake thermal stability
test" and "having less than about 15% shrinkage when subjected to a film
shrinkage test" (claim 1).
Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. The combination of:

a microelectronic substrate having a surface; and

a fill composition adjacent said microelectronic substrate surface,
wherein said composition comprises:

a quality of solid components including a polymer binder;

and a solvent system for said solid components,

said composition:

being at least about 70% removed when subjected to a
pre-bake thermal stability test; and

having less than about 15% shrinkage when subjected to
a film shrinkage test.

The Examiner rejects all appealed claims under 35 U.S.C. § 102(a),
(b) or (e) as being anticipated by, or alternatively under 35 U.S.C. § 103(a)
as being unpatentable over, Flaim (US Patent 5,693,691, issued December
Appeal 2009-013743
Application 10/964,288

3
1997), Meador 599 (US Patent 5,919,599, issued July 1999) or Meador 479
(US Patent 6,156,479, issued December 2000).
The Examiner also rejects all appealed claims under 35 U.S.C.
§ 103(a) as being unpatentable over Tobben (US Patent 6,103,456, issued
August 2000), Grill (US Patent 6,140,266, issued October 2000), or Moon
(US Patent 6,649,515 B2, issued November 2003) in view of Takiguchi (US
Patent 6,010,956, issued January 2000), Flaim, Meador 599, or Meador 479.
With respect to each of these rejections, the Examiner finds that the
pre-bake thermal stability and shrinkage properties required by claim 1
would be inherently possessed by the compositions of Flaim, Meador 599,
Meador 479, and Takiguchi (Ans. 3-7). However, as correctly argued by
Appellants, the Examiner's inherency finding is shown to be erroneous by
the Shao Declarations of record (i.e., Exhibits A-D of the Appeal Brief)
which evince that exemplary compositions of these references may possess
one but not both of the above noted properties as required by claim 1 (App.
Br. 14-44; Reply Br. 5-28).
The Examiner contends that the Shao Declarations are unpersuasive
because they allegedly are not commensurate in scope with all that the
applied prior art teaches and not commensurate in scope with the appealed
claims (Ans. 8-18). Whether the Declaration evidence is commensurate in
scope with the appealed claims is not relevant to the issue of whether the
applied reference compositions inherently possess the claim 1 properties.
Moreover, for the reasons fully detailed by Appellants (e.g., see Reply Br.
para. bridging 7-8), the Examiner is incorrect in believing that the
Declarations must test all possible compositions encompassed by the
reference teachings.
Appeal 2009-013743
Application 10/964,288

4
On this record, it is undisputed that the exemplified compositions
tested in the Declarations are representative of the reference compositions
and that these tested compositions are the closest exemplified prior art to
Appellants' claimed compositions. Under these circumstances, the
Declarations convincingly evince that the Examiner's inherency finding is in
error.
In the alternative, the Examiner concludes that it would have been
obvious for one with ordinary skill in the art "to arrive at the same inventive
composition because the disclosure of the inventive subject matter appears
within the generic disclosure of the prior art" (Answer 4; also see id. at 5-
18). We agree with Appellants that the Examiner's obviousness conclusion
is improper because it lacks articulated reasoning with rational underpinning
(e.g., see App. Br. 20-23). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) ("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness"), cited with approval in KSR Int’l. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
For the above stated reasons, we cannot sustain any of the § 102 or
§ 103 rejections advanced by the Examiner in this appeal.
The decision of the Examiner is reversed.
REVERSED

cam

Appeal 2009-013743
Application 10/964,288

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