Ex Parte Nakamura

Board of Patent Appeals and Interferences

Sep 21, 2010

10240068 (B.P.A.I. Sep. 21, 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.
10/240,068 01/08/2003 Satoshi Nakamura 10921.0144USWO 5355
7590 09/21/2010
Hamre, Schumann, Mueller & Larson, P.C.
P.O. Box 2902-0902
Minneapolis, MN 55402
EXAMINER
DOAN, THERESA T
ART UNIT PAPER NUMBER
2814
MAIL DATE DELIVERY MODE
09/21/2010 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 SATOSHI NAKAMURA
_____________

Appeal 2009-011749
Application 10/240,068
Technology Center 2800
____________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

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.
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Application 10/240,068

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 4-7, and 15-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s Figure 3 is depicted below:

Figure 3 depicts Appellant’s claimed invention which is directed to a
mounting structure for the electronic device E. An electronic device E is
mounted to a conductive mount portion on a substrate (10) via a connection
layer (9), which includes solder. The solder utilized for the connection layer
(9) is Pb-free solder containing at least Sn. The connection layer (9)
includes a diffusion-preventing layer (8) formed of an alloy of Ni and Sn for
preventing the Cu contained in the base layer (4) from diffusing into the
solder. See Spec. 11:8-15, 13:13-21, 15:19-24 see also Fig. 13; Spec. 8:5-
11.
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Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An electronic device mounting structure in which an electronic
device is mounted to a conductive mount portion on a substrate via a
connection layer formed utilizing solder;
the conductive mount portion including a base layer and a first plating
layer formed on the base layer in advance, the base layer containing Cu, the
first plating layer containing Ni;
the solder utilized for the connection layer being Pb-free solder
containing at least Sn;
the connection layer including a diffusion-preventing layer formed of
an alloy of Ni and Sn for preventing the Cu contained in the base layer from
diffusing into the solder.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Takashi JP 11-245083 Sep. 14, 1999
Tsukada EP 1 009 202 A1 June 14, 2000
The following rejection is before us for review:
The Examiner rejected claims 1, 4-7, and 15-18 under 35 U.S.C. §
103(a) as being unpatentable over Tsukada in view of Takashi.

ISSUE
The pivotal issue is whether Tsukada’s connection layer 12 formed of
an alloy of Ni and Sn inherently constitutes “a diffusion-preventing layer . . .
for preventing the Cu contained in the base layer from diffusing into the
solder” as recited in independent claim 1.

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FINDINGS OF FACT
We adopt all of the findings of fact as recited in the Examiner’s
Answer and we emphasize the following facts supported by a preponderance
of the evidence:
1. Appellant’s Specification describes forming layer 8 by fusing Sn from
solder 7 and fusing Ni from plating layer 5 (Spec. 14:15-17).
2. Tsukada teaches forming layer 12 by fusing Sn from solder 4 and
fusing Ni from layer 10 (¶ [0004], ll. 25-27).
3. Tsukada’s Ni-Sn layer 12 overlays the copper base layer 9 (see Fig. 1;
¶ [0003], l. 19).
4. Takashi teaches that solder can be composed of SnPb or SnAg
(Abstract).

PRINCIPLES OF LAW
Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of either anticipation or
obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
“[W]hen the PTO shows a sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990).
The prima facie case can be rebutted by evidence showing that the
prior art products do not necessarily possess the characteristics of the
claimed product. Best, 562 F.2d at 1255; see also MPEP § 2112.01 I.
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“[T]he discovery of a previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art’s functioning,
does not render the old composition patentably new to the discoverer.” Atlas
Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Thus, the
claiming of a new use, new function, or unknown property which is
inherently present in the prior art does not necessarily make the claim
patentable. Best, 562 F.2d at 1254.

ANALYSIS
Appellant argues (Br. 3-4) that there is no recognition in Tsukada that
an alloy formed of Ni and Sn would be beneficial in preventing the Cu
contained in the base layer from diffusing into a lead-free solder. Appellant
asserts (Br. 4) that there would have been no reasonable basis for one of
ordinary skill to conclude that the Pb-free solder of Takashi could have been
used with Tsukada without the deleterious effects resulting from diffusion of
Cu from the base layer into the Pb-free solder. Appellant further argues (Br.
4) that the failure of Tsukada to mention the Cu-diffusion prevention
property precludes any reasonable expectation of achieving the results
exhibited by the present invention, and thus, the unexpected results enjoyed
by the present invention overcome any prima facie case of obviousness.
We are not persuaded by Appellant’s arguments. We are in complete
agreement with the Examiner’s reasoned analysis and application of the
prior art. Accordingly we will adopt the Examiner’s reasoning as our own in
sustaining the rejections of record, and we present the following primarily
for emphasis.
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Appellant’s Specification describes forming layer 8 by fusing Sn from
solder 7 and fusing Ni from plating layer 5 (FF 1). Tsukada teaches forming
layer 12 by fusing Sn from solder 4 and fusing Ni from layer 10 (FF 2).
Thus, a prima facie case (a Ni-Sn layer) has been established. Best, 562
F.2d at 1255.
The Examiner reasoned (Ans. 6-7), and we agree, that Tsukada’s Ni-
Sn layer 12 would necessarily possess the same property, as Appellant’s Ni-
Sn layer 8, of preventing Cu from the base layer 9 (FF 3) from diffusing into
the solder 4, because the two Ni-Sn layers are identical or substantially
identical, and are produced by identical or substantially identical processes.
Best, 562 F.2d at 1255.
On the record before us, Appellant has not presented any evidence to
show that the prior art product does not necessarily possess the
characteristics of the claimed product. Best, 562 F.2d at 1255. Thus, the
Examiner has established that Tsukada’s Ni-Sn layer possesses the
characteristic of preventing diffusion of Cu from the base layer into the
solder.
With respect to Appellant’s argument (Br. 3-4) that there is no
recognition in Tsukada that an alloy formed of Ni and Sn would be
beneficial in preventing the Cu contained in the base layer from diffusing
into a lead-free solder, we note that the discovery of a previously
unappreciated property of a prior art composition does not render the old
composition patentably new to the discoverer. Atlas, 190 F.3d at 1347.
Appellant also argues (Br. 5) that Spada, cited by the Examiner for the
principle that if the prior art teaches the identical chemical structure, the
properties applicant discloses and/or claims are necessarily present, is
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inapplicable in obviousness rejections. Appellant explains (Br. 5) that this is
because the inherent property, which would be unknown before making the
combination, is incapable of providing any motivation for making the
combination.
We note that the Examiner did not propose the inherent property as a
motivation in combining Tsukada and Takashi. The Examiner (Ans. 8) only
introduced Takashi for the teaching that it is well known in the art to
substitute AgSn solder (Pb free solder) for PbSn solder because they are
equivalent solder materials (FF 4).
Accordingly, for the reasons articulated supra, we will affirm the
Examiner’s rejection of independent claim 1, and for similar reasons, the
rejections of dependent claims 4-7 and 15-18 as no other arguments of
patentability were presented with respect to these claims.

CONCLUSION
Tsukada’s connection layer 12 formed of an alloy of Ni and Sn
inherently constitutes “a diffusion-preventing layer . . . for preventing the Cu
contained in the base layer from diffusing into the solder.”

ORDER
The decision of the Examiner to reject claims 1, 4-7, and 15-18 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)(v).

AFFIRMED
Appeal 2009-011749
Application 10/240,068

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Hamre, Schumann, Mueller & Larson, P.C.
P.O. Box 2902-0902
Minneapolis, MN 55402