Ex Parte Lee et al

Patent Trial and Appeal Board

Feb 14, 2018

12240396 (P.T.A.B. Feb. 14, 2018)

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.
12/240,396 09/29/2008 Ning-Cheng Lee 21XD-154621 5299
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
02/16/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@ SHEPPARDMULLIN.COM
S heppardMullin_Pair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NING-CHENG LEE and RUNSHENG MAO
Appeal 2017-005766
Application 12/240,396
Technology Center 1700
Before: MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
May 16, 2016 decision finally rejecting claims 1, 2, 4, 5, and 21—24 as
unpatentable under 35 U.S.C. § 103(a). Claims 3, 6—20, and 25 are
withdrawn from consideration; these claims are directed to a non-elected
invention. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Indium Corporation as the real party in interest (Appeal
Br. 1).
Appeal 2017-005766
Application 12/240,396
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to materials having increased
mobility after heating (Spec. 3:16). These materials are said to be useful in
an industrial process, such as soldering, which requires material heating
followed by material residue removal {id. at 1:18—25; 2:11—16, and 3:22—
24). Claims 1 and 2 are representative and are reproduced below from the
Claims Appendix of the Appeal Brief {emphasis added):
1. A material having increased mobility after heating, the
material comprising:
two or more ingredients, wherein at least two of the
ingredients have an association force within the material that,
prior to heating, causes an increase in viscosity of the material
after the at least two ingredients are combined in the material,
wherein at least one of the at least two ingredients has a lower
boiling point than another of the at least two ingredients,
wherein when the at least one ingredient having the lower boiling
point is substantially evaporated from the material after heating
the material, thereby substantially eliminating the association
force within the material, and the material has an overall
decrease in viscosity, and an overall increase in mobility, after
heating.
2. The material of claim 1, wherein the material is a liquid
solder flux that has reduced viscosity, and increased mobility,
after heating in a reflow process.
Appeal Br. 14 (Claims App.).
2
Appeal 2017-005766
Application 12/240,396
REJECTION2
Appellants appeal the rejection of claims 1, 2, 4, 5, and 21—24 as
unpatentable under 35 U.S.C. § 103(a) over Schneider.3
Appellants’ arguments focus on independent claim 1 and dependent
claim 2 (see generally Reply Br. 3—10). Because Appellants argue the
rejection of claims 1, 2, 4, 5, and 21—24 as a group, we select claims 1 and 2
as representative and decide this appeal on the basis of these claims alone.
37C.F.R. §41.37(c)(l)(iv).
DISCUSSION
The Examiner finds that Schneider teaches or suggests each limitation
recited in claims 1 and 2 including
an activator material (for liquid solder flux) [], wherein the
activator material (before added to water), would be a
combination of individual activator components comprising
butyric acid (lower boiling point) and triethanolamine. Since
[Schneider’s] activator material. . . contains the same
ingredients as instant invention (example 2 of instant
specification comprises identical components butyric acid and
triethanolamine), the claimed increased in viscosity upon
combination, the association force (temporary interaction force)
is an acid-base interaction force and the material is a liquid
2 The Examiner imposed new grounds of rejection in the Answer that were
based on the same prior art as the original rejection, but limited Schneider’s
teachings from the disclosed liquid solder flux to the individual activator
components thereof (