Ex Parte Miller et al

Board of Patent Appeals and Interferences

Jan 19, 2012

11129121 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/129,121 05/13/2005 James D. Miller C001 P00680-US2 8961
3017 7590 01/19/2012
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE, RI 02903
EXAMINER
NERANGIS, VICKEY MARIE
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
01/19/2012 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 D. MILLER,
E. MIKHAIL SAGAL, and KEVIN A. MCCULLOUGH
____________

Appeal 2010-005217
Application 11/129,121
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005217
Application 11/129,121

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-3. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal:
1. An injection molded thermally conductive plastic
substrate for supporting electronic circuits, comprising:
about 40% to about 70% by weight of polyphenylene
sulfide matrix; and
about 30% to about 60% by weight of a thermally-
conductive, electrically-insulating material dispersed uniformly
throughout said polymer matrix,
said substrate having mechanical properties that provide
a surface wherein microelectronic circuits are formed directly
thereon,
wherein said substrate has a dielectric strength of greater
than 40,000 volts and a surface resistivity of greater than
8.0 x 1014 ohms.
The Examiner maintains, and Appellants appeal, the following
rejections:
a) claims 1-3 under 35 USC § 112, first paragraph as failing to
comply with the written description requirement;
b) claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over the
combined prior art of Zhuo (US 6,162,849 issued Dec. 19, 2000)
and Moh (US 5,108,958 issued Apr. 28, 1992);
c) claim 3 under 35 U.S.C. § 103(a) as unpatentable over the
combined prior art of Zhuo, Moh, and Eckman (US 5,930,459
issued July 27, 1999).
Appeal 2010-005217
Application 11/129,121

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The Examiner’s final rejection of claims 1 and 2 on the grounds of
nonstatutory obviousness-type double patenting over copending Application
No. 11/138,118 has not been argued by Appellants (see, Ans. 3).
Accordingly, we summarily affirm this rejection.

The Written Description Rejection
The Examiner has the burden of making out a prima facie case that
the appealed claims do not comply with § 112, first paragraph, written
description requirement, by setting forth evidence or reasons why, as a
matter of fact, the written description in Appellants’ disclosure would not
reasonably convey to persons skilled in this art that Appellants were in
possession of the invention defined by the claims, including all of the
limitations thereof, at the time the application was filed. See, e.g., In re
Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996), citing In re Wertheim,
541 F.2d 257, 262-64 (CCPA 1976).
The Examiner finds that written description is lacking for the phrase
“said substrate having mechanical properties that provide a surface wherein
microelectronic circuits are formed directly thereon”, and for the endpoint
amount of 70% for the polyphenylene sulfide. However, for the reasons set
forth in the Appeal Brief, we agree with the Appellants that the Examiner
has not set forth a prima facie case that the Specification fails to provide
written support for either of these two limitations. We add the following for
emphasis.
Specifically, the Examiner admits that the Specification provides
support for the substrate having “good mechanical strength” and for
Appeal 2010-005217
Application 11/129,121

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electronic circuits to be formed directly on the substrate (Ans. 7).
Appellants point out that the Specification also sets forth the thermal
conductivity properties needed in order for microelectronic circuits to be
formed thereon (Br. 4-6; e.g., Spec. para. [28]). We therefore find that one
of ordinary skill in the art would have readily understood that Appellants
were in possession of the invention defined by the claimed substrate having
“mechanical properties” as recited in claim 1.
With respect to the endpoint of 70%, we agree with Appellants that
the Specification conveys that the substrate may comprise only the two
components of the polyphenylene sulfide and the thermally-conductive
electrically-insulating material (e.g., boron nitride) (Br. 8). Thus, the
preferred described range of 30% to 60% of the thermally-conductive
electrically-insulating material “mathematically requires that the
corresponding polyphenylene sulfide matrix must be at between 40% and
70%” (Br. 8) when the “optional” reinforcement material is not present (see,
Spec. [22]).
Accordingly, we reverse the § 112 rejection.

The Obviousness Rejections
When claimed ranges overlap or lie inside ranges disclosed by the
prior art for every component in a claim, a prima facie case of obviousness is
established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
Appeal 2010-005217
Application 11/129,121

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We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections based on the
combination for essentially those reasons expressed in the Answer, including
the Response to Argument section, and we add the following primarily for
emphasis.
Appellants’ main argument is that there is no express teaching or
suggestion to use the material of Zhuo as a substrate upon which electronic
circuits can be formed directly thereon. (Id. at 9-11). We disagree for the
reasons aptly set forth by the Examiner. (e.g., Ans. 6, 9). Specifically, the
Examiner correctly points out that Zhuo teaches that the composite material
may be used in place of alumina in microelectronic chip packages. One of
ordinary skill would have easily appreciated, as exemplified by Moh and
even admitted by Appellants, that ceramics such as alumina were used as a
substrate in such packaging for these circuits (id. at 6; Br. 10; Spec. para.
[09]). Thus, it is reasonable to conclude that one of ordinary skill in the art
would have understood that the composite material disclosed in Zhuo would
also be useful as a substrate in microelectronic chip packages.
Appellants’ additional argument that the material described by Zhou
has at most 40% thermoplastic and at least 60% boron nitride versus the
claimed ranges is also unavailing. (Br. 10, 11). The Examiner correctly
finds that Zhuo describes a material with the required components of claim 1
that overlap the claimed ranges of each component at one of the endpoints
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(Ans. 5, 10). In cases involving overlapping ranges, it has been consistently
held that even a slight overlap in range establishes a prima facie case of
obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Accordingly, the Examiner’s determination that the combined prior
art renders the claimed invention obvious was reasonable.
Notably, Appellants have not provided any persuasive technical
reasoning nor evidence that an artisan would not have predictably used the
material of Zhuo as a substrate as claimed (Br. generally; no Reply Brief has
been filed).
Accordingly, the preponderance of the evidence supports the
Examiner’s rejection of claims 1 and 2 based on Zhuo and Moh.
The Examiner additionally relies upon Eckman to reject dependent
claim 3 which requires the use of about 10% reinforcing chopped glass.
Appellants’ main argument, that the Examiner’s reliance upon Eckman is
misplaced because the polyphenylene sulfide/ceramic composite material of
Eckman is not taught for use as a substrate as recited in claim 1 (Br. 14),
fails to consider the prior art as a whole.
It is well established that ordinary creativity is presumed on the part of
one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). The Examiner’s implicit determination that
one would have found it obvious to use a reinforcement filler for its known
predictable use to improve mechanical strength as exemplified in Eckman
(e.g., Eckman col. 5, ll. 39-45 (short glass fibers “dramatically increase the
strength” of plastics)) in a substrate such as suggested by the combined
teachings of Zhuo and Moh is reasonable. See KSR, 550 U.S. at 415-16
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(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Accordingly, the preponderance of the evidence supports all of the
Examiner’s rejections, and we sustain the § 103 rejections of all the claims
on appeal.
DECISION
The decision of the Examiner 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)(1).

AFFIRMED

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