Ex Parte Nishino et al

Patent Trial and Appeal Board

Sep 27, 2017

13140391 (P.T.A.B. Sep. 27, 2017)

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.
13/140,391 06/16/2011 Mitsuyoshi Nishino 091478-0024 7479
53080 7590 09/29/2017
McDermott Will and Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
mweipdocket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUYOSHINISHINO, FUMINORI SATOU,
KENTARO FUJINO, and YOSHIHIKO NAKAMURA
Appeal 2017-001911
Application 13/140,3911
Technology Center 1700
Before PETER F. KRATZ, RAE LYNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 6-102 under 35 U.S.C. § 103(a) as being
1 Appellants identify the real party in interest as Panasonic Intellectual
Property Management Co., Ltd. Appellants’ Appeal Brief 1, filed March 11,
2016 (hereinafter “App. Br.”).
2 Although the Examiner’s Final Office Action, dated August 13, 2015,
(“Final Act.”) identified claim 1 as rejected, the Examiner entered an after-
final amendment filed October 9, 2015, incorporating the subject matter of
claim 1 into claim 8, amending the dependency of claims 6 and 7 to depend
from claim 8, and cancelling claim 1. See Examiner’s Advisory Action,
mailed November 6, 2015.
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Application 13/140,391
unpatentable over Tamiya3 in view of Aoki.4 See Final Act. 2; Examiner’s
Answer 2, dated September 22, 2016 (“Ans.”). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to an epoxy resin composition for a
prepreg material for a printed circuit board. Specification (“Spec.”) ^ 2.
According to the Specification, epoxy compositions use two conventional
curing agents: (1) a curing agent having a phenolic hydroxyl group, such as
cresol novolac resin, phenol novolac resin and bisphenol A novolac resin, or
(2) an amine series curing agent. Id. 4-5. A curing agent having a
phenolic hydroxyl group gives the resin composition a higher glass
transition temperature and thermal decomposition temperature necessary for
mounting with lead-free solder but provides poorer adhesive strength. Id.
Mixing a nitrogen or bromine of an imidazole silane compound has shown
improvement in adhesive strength between layers, including adhesion with
metal foils, but this additive has not improved “inner layer adhesive
strength,” which is “at the interface between the inner layer material and [the
epoxy resin] insulation layer.” Id. ^ 6. Thus, the present invention is
directed to an epoxy resin composition having a high thermal decomposition
temperature of the hardened material and a high heat resistance, as well as a
high adhesive strength, in particular inner layer adhesive strength. Id. ^\9.
3 WO 2008/032383 Al, published April 20, 2008 and naming Hiroki Tamiya
et al. as inventors. All reference to “Tamiya” herein is to US 2010/0025094
Al, published February 4, 2010, which is the U.S. National phase filing under
35 U.S.C. § 371 of the PCT application.
4 U.S. Application Publication US 2007/0029682 Al, published February 8,
2007, naming Takayuki Aoki et al. as inventors (“Aoki”).
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Independent claim 8 is exemplary of the subject matter on appeal and
is reproduced below:
8. A prepreg obtained by impregnating a substrate
with an epoxy resin composition and performing drying, the
epoxy resin composition comprising:
an epoxy resin containing nitrogen and bromine in the
molecule;
a curing agent having a phenolic hydroxyl group;
a lH-Imidazole-1-propanoic acid, a-methyl-, 3-
(trimethoxysilyl)propylester; and
a y-glycidoxy propyltrimethyoxy silane, wherein:
a bromine content in a resin component of the epoxy
resin composition is 10 mass % or greater,
a content of the y-glycidoxy propyltrimethyoxy silane
with respect to a total amount of the epoxy resin composition is
0.2 to 2.0 mass%, and
a content of the lH-Imidazole-1 -propanoic acid, a-
methyl-, 3-(trimethoxysilyl)propylester with respect to the total
amount of the epoxy resin composition is 0.2 to 0.4 mass%.
App. Br. 13, Claim App’x.
Unless otherwise indicated, we adopt the Examiner’s findings in the
Answer (Ans. 2 4) as our own and add any additional findings of fact
appearing below for emphasis.
Appellants present arguments with respect to independent claim 8.
App. Br. 4-7. Appellants do not advance any substantive arguments for any
other particular claim on appeal. Id. at 8. Thus, all the claims stand or fall
with representative claim 8.
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II. DISCUSSION
0.2 to 2.0 mass % y-glycidoxy propyltrimethyoxy silane
Appellants argue that the Examiner erred in finding that the prior at
teaches an epoxy resin composition having y-glycidoxy propyltrimethyoxy
silane (which Appellants refer to as “Epoxy silane X4”) in the recited
concentration range of 0.2 to 2.0 mass%. Id. at 4. According to Appellants,
Aoki’s teaching of using Epoxy silane X4 of 0.1 to 5.0 parts, or preferably
0.3 to 3 parts, by weight per 100 parts by weight of components (A) (epoxy
resin) and (B) (phenolic resin curing agent) combined, cannot be compared
to the recited percentage value recited in the claims which is “with respect to
a total amount of the epoxy resin composition.” Id. at 4-5.
The Examiner responds that Appellants’ arguments improperly
incorporate all of the teachings of Aoki, including the additional components
of Aoki, such as fillers, when the Examiner determines that it would have
been obvious to one of ordinary skill in the art to add only the Epoxy silane
X4 to the epoxy resin composition of Tamiya to improve its adhesion to
other materials, as taught by Aoki. Ans. 3; see Aoki ^ 25, 44-45.
The Examiner finds that Tamiya has only three ingredients: epoxy
resin (A), phenolic resin curing agent (B), and an Imidazole silane
compound (C). Ans. 4 (citing Tamiya ^ 12). The Examiner further finds
that the amount of component (C), 0.5-2% by mass “does not appreciably
change the relative amounts of [Epoxy silane X4].” Ans. 5.
We agree with the Examiner that the skilled artisan would have added
an amount of Epoxy silane X4 to Tamiya’s epoxy resin only with respect to
the amounts of compositions A and B in the epoxy resin based on the
teachings of Aoki, and not with respect to the entire composition taught by
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Aoki. That is, the teaching of an amount of Epoxy silane X4 in Aoki only
with respect to the epoxy resin and phenolic curing agent would have
reasonably suggested to the skilled artisan that the amount with respect to
the other components of Aoki is not critical or relevant to using the Epoxy
silane X4 in an epoxy resin composition. Thus, based on the relationship of
Epoxy silane X4 to the epoxy resin (A) and the phenolic resin curing agent
(B) taught by Aoki, the skilled artisan would have been capable of
determining a proper amount of Epoxy silane X4 to be added to the epoxy
resin of Tamiya. In doing so, we further agree with the Examiner that the
amount of Imidazole silane compound (C) in Tamiya is not significant to
change the relative amounts of compositions A and B taught by Tamiya.
Moreover, Appellants do not address the Examiner’s further rationale
that it would have been obvious to one of ordinary skill in the art to vary the
amount of Epoxy silane X4, including over values presently claimed, to
adjust the adhesion of the epoxy resin as required for a desired end use.
Final Act. 3; Ans. 3, 5. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368
(Fed. Cir. 2007) (“[Djiscovery of an optimum value of a variable in a known
process is usually obvious.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[I]t is not inventive to discover the optimum or workable ranges by routine
experimentation. ”).
Unexpected Results
Appellants further argue that the two silane components recited in the
claims, namely lH-Imidazole-1 -propanoic acid, a-methyl-, 3-
(trimethoxysilyl)propylester (which Appellants refer to as “Imidazole silane
X3”) and y-glycidoxy propyltrimethyoxy silane (“Epoxy silane X4”) provide
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an epoxy resin with superior and unexpected results. App. Br. 5. In
particular, Appellants contend that the epoxy resin has higher adhesion
strength and higher storage stability than would have been expected with
Imidazole silane X3 or Epoxy silane X4 alone. Id. Appellants point to the
Examples and Comparative Examples in Table 1 of the Specification (]f 84)
as evidence that the results of Example 5 are unexpected over the results
shown in Examples 1—4 (which include only Epoxy silane X4 component),
Comparative Examples 3-5 (which include only Imidazole silane X3), and
Examples 7-9 (which include different silane compounds than Imidazole
Silane X3). Id. at 6-8.
For the reasons cogently discussed in detail by the Examiner on pages
6-11 of the Examiner’s Answer, we agree with the Examiner that the data
provided in Table 1 do not show that the results from combining Epoxy
silane X4 and Imidazole silane X3 in an epoxy resin composition (Example
5) are unexpected in light of the teachings of Tamiya and Aoki that both of
the compounds were known in the art to improve adhesion. While evidence
of substantially improved results may be sufficient to support an Appellants’
assertion that the results are unexpected without evidence to the contrary,
evidence of mere improvement in properties over the prior art alone are not
sufficient to support an assertion that the results are surprising or
unexpected. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“[I]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.”). Here,
Appellants data show improvement, but the data do not show that the degree
of improvement is substantial. Without any evidence showing the
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improvement is unexpected in the art or so substantial to be ipso facto
unexpected, evidence of mere improvement is not probative of non­
obviousness. For example, it is just as reasonable to conclude from the data
that the improvement is no more than the additive effects of the individual
improvements in epoxy resins using Epoxy silane X4 or Imidazole silane X3
without the other, which is taught by the prior art, or the result of
optimization of these components via routine experimentation.
Further, we agree with the Examiner (Ans. 10) that the single example
in Table 1 is not sufficient to show that the improvement occurs over the
entire scope of the claimed invention. The data in Table 1 show
improvement in a single composition using 0.4 parts by weight of A-187 (y-
glycidoxy propyltrimethoxy silane “A-187” manufactured by GE Toshiba
Silicones), 0.4 parts by weight IM1000 (Imidazole silane compound
“IM1000” manufactured by Nikko Materials Co., Ltd.), specific epoxy
resins in specific amount, and a single curing agent (bisphenol novolac
resin) in a specific amount. This single datum point is not probative of the
results over the entire ranges of 0.2 to 2 % mass Epoxy silane X4,5 over the
entire range 0.2 to 0.4% mass Imidazole silane X3, for all epoxy resins
containing nitrogen and bromine, and for all curing agents having a phenolic
hydroxyl group. Thus, the data are not commensurate in scope with the
claims. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In
re Tiffin, 448 F.2d 791, 792 (CCPA 1971)) (“Establishing that one (or a
small number of) species gives unexpected results is inadequate proof, for ‘it
5 This range is particularly important in light of Appellants arguments,
discussed above, that the claimed concentration range would not have been
obvious based on the prior art teachings. Appellants have demonstrated no
criticality to the recited concentration range.
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is the view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”’); see also In re Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Additional arguments first raised in the Reply Brief
In the Reply Brief, for the first time on appeal, Appellants raise an
argument that Tamiya and Aoki are different technologies and not
combinable. Reply Br. 5. This argument was not timely presented and,
therefore, is not properly before us. See 37 C.F.R. § 41.37(c)(l)(iv) (“[A]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); 37 C.F.R.
§ 41.41(b)(2)(“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer,. . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”); Ex parte Borden, 93
USPQ2d 1473, 14-74 (BPAI 2010 (Informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Accordingly, we find no error in the Examiner’s rejection of claims 6-
10.
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
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IV. ORDER
We affirm the Examiner’s rejection of claims 6-10 under 35 U.S.C. §
103(a) as being unpatentable over Tamiya in view of Aoki.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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