11061707 (B.P.A.I. Jan. 26, 2009)

Ex Parte Lim et al

Board of Patent Appeals and InterferencesJan 26, 2009

11061707 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte OON-PIN LIM, CHENG-EE OO, JOKHAIRI YUSOFF, and KIN-MUN LO ____________ Appeal 2008-4007 Application 11/061,707 Technology Center 1700 ____________ Decided: January 26, 2009 ____________ Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request reconsideration of our Decision of October 21, 2008 (“Decision”) wherein we entered new grounds of rejection under Appeal 2008-4007 Application 11/061,707 § 41.50(b) rejecting claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Ono and claims 1-6 under 35 U.S.C. § 103(a) as being unpatentable over Oishi. Appellants contend that the claims are not obvious over Ono or Oishi. (Request for Rehearing “Request” 1.) We have reviewed the Decision in light of the arguments presented by Appellants in the Request. However, we are not persuaded that the Decision was in error. Rejection of Claims 1 and 2 as being obvious over Ono Appellants contend that the “multiple nonskid irregularities” disclosed in Ono are the result of a matte finish identified as prior art in Appellants’ Specification. (Request 2). Appellants argue that we have found no evidence that the nonskid irregularities in Ono are different from the prior art slightly roughened or matte finish and there would not be a reason to modify the height of the nonskid irregularities to fall within Appellants’ claims. (Request 2). Appellants are referred to FF 6 of the Decision, in which we found that: Ono teaches a bond foot having multiple non-skid irregularities (a plurality of protrusions) extending therefrom for pressing a connection strap (ribbon) against a substrate to provide a nonskid property between the strap and ultrasonic horn. ([0043]; Figures 4(a) and 4(b), reference number 6). (Decision 5). Specifically, Figures 4(a) and 4(b) show discrete protrusions extending from the bond foot as opposed to a slightly roughened or matte finish of the prior art referenced by Appellants. In addition, Appellants have not provided any persuasive evidence that Ono’s multiple nonskid irregularities correspond to 2 Appeal 2008-4007 Application 11/061,707 Appellants’ description of the prior art. Ono does not describe that the nonskid irregularities are the result of a matte finish. Therefore, Appellants’ arguments are not persuasive. Appellants also argue that there would be no need to modify the height of the irregularities because Ono uses vacuum aspiration to hold the connection strap (ribbon) in place. (Request 2 and 3). Appellants’ argument is not persuasive. The Decision states that “one of ordinary skill in the art would have optimized the height of the irregularities to fall within Appellants’ claimed ratios so that the irregularities would have performed their desired ‘nonskid’ function. See In re Kulling, 897 F.2d 1147, 1149-50 (Fed. Cir. 1990).” (Decision 11). Appellants have not presented any persuasive evidence that Ono’s use of vacuum aspiration would have discouraged one of ordinary skill in the art from optimizing the height of the protrusions to within Appellants’ claimed range. Indeed, Ono utilizes both the height of the protrusions and vacuum aspiration in order to support and hold the ribbon in place. Therefore, Appellants’ argument is not persuasive. Rejection of Claims 1-6 as being obvious over Oishi Appellants contend that Oishi is non-analogous art because Oishi is directed to welding flexible flat cable to a busbar, not connecting electronic micro-chips with bonding ribbon as presently claimed. (Request 3). Appellants additionally argue that it would not have been obvious to one skilled in the art to apply Oishi to the problem of connecting microchips. (Request 3). 3 Appeal 2008-4007 Application 11/061,707 Determining whether a reference is non-analogous art is a two-fold inquiry. First, we must decide if the reference is within the field of the inventor’s endeavor; if it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “‘A reference is reasonably pertinent if, even though it may be in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.’” In re Icon Health and Fitness, 496 F.3d 1374, 1379-80 (Fed Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). “In other words, ‘familiar items may have obvious uses beyond their primary purposes.’” Id. at 1380 (quoting KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007)). Appellants’ argument that Oishi is not analogous art is unpersuasive. Both Oishi and Appellants are concerned with the problem of connecting materials in electrical devices using ultrasonic welding. Thus, the structure of bonding tools and methods used as disclosed in Oishi would have commended itself to the inventor’s attention in considering this problem. Further, the appealed claims are directed to a bonding tool and do not contain any structural limitations that would limit the claims to connecting electronic microchips. Appellants argue that Oishi’s elongated projections are designed to pass through an insulating coating layer such that the height of the elongated projections would be more than 100 percent of the conductive element 4 Appeal 2008-4007 Application 11/061,707 thickness rather than between 40 and 80 percent of the conductive element as claimed. (Request 3). Appellants’ claims are not limited to a “conductive element,” but use the term, “ribbon.” Appellants are referred to FF 11 of the Decision which states: Oishi teaches a bond foot having a plurality of projections (protrusions) (Ref. # 9) extending therefrom for pressing a cable (ribbon) against a substrate, a transducer for causing said bond foot to move in a predetermined pattern with respect to the substrate while the bond foot is pressed against the ribbon. (Col. 5, ll. 21-54, col. 6, ll. 14; Fig. 2). (Decision 6). The Specification does not disclose a specific definition of “ribbon” that would exclude cables having insulating coatings thereon as disclosed in Oishi. Therefore, Appellants’ arguments are not persuasive. In conclusion, based on the foregoing, we have granted Appellants’ request to the extent that we have reconsidered our decision, but we deny Appellants’ request to make any change therein. DENIED cam AGILENT TECHNOLOGIES INC. INTELLECTUAL PROPERTY ADMINISTRATION, LEGAL DEPT. MS BLDG., EPO BOX 7599 LOVELAND CO 80537 5