Ex Parte Schulz-Harder et al

Patent Trial and Appeal Board

Mar 3, 2015

10560525 (P.T.A.B. Mar. 3, 2015)

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.
10/560,525 03/14/2006 Jurgen Schulz-Harder A-9806 6395
20741 7590 03/03/2015
Welsh Flaxman & Gitler
2000 Duke Street , Suite 100
Alexandria, VA 22314
EXAMINER
CAZAN, LIVIUS RADU
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
03/03/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JURGEN SCHULZ-HARDER, KURT MITTEREGGER,
KARL EXEL, and JURGEN WEISSER
____________

Appeal 2013-001190
Application 10/560,525
Technology Center 3700
____________________

Before JENNIFER D. BAHR, TIMOTHY J. GOODSON, and
JAMES J. MAYBERRY, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants Jurgen Schulz-Harder et al. appeal under 35 U.S.C.
§ 134(a) from the rejection of claims 32, 34, 36–39, 41–44, and 51. App.
Br. 3. Claims 1–29, 31, 45–48, and 50 are canceled, and claims 30, 33, 35,
40, and 49 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 51, reproduced below, illustrates the subject matter on appeal:
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51. A method for manufacturing a metal-ceramic substrate
the method comprising the steps of:
a. applying a metallization to at least one surface side of
a ceramic layer by means of a direct copper bonding process,
b. structuring the metallization into a plurality of
individual metal areas such that the metal areas on the at least
one surface side of the ceramic layer are at a distance from
another,
c. progressively heating only the ceramic layer in a
thermal treatment process with a laser beam in the areas in
between all the plurality of individual metal areas and
progressively shock-cooling partially and linearly the ceramic
layer in between all the plurality of individual metal areas to
produce break-off lines by controlled fracture or weakening
between a top side and a bottom side of the material in the
ceramic layer,
wherein the heating of the ceramic layer during the
thermal treatment process takes place without vaporization or
burning off the ceramic material in a focused treatment area that
moves in relation to the ceramic layer, wherein the ceramic
layer has a thickness between 0.1 and 3 mm, and wherein the
plurality of individual metal areas have a thickness between
0.02 and 0.6 mm and are at a distance of 0.1–3 mm from each
other and wherein the plurality of individual metal areas are at a
distance of 0.05–1.5 mm from a respective break-off line in
between the plurality of individual metal areas and wherein the
ceramic layer is selected from the group consisting of, Al2O3,
AlN, Si3N4, SiC, BeO, TiO2, ZrO2, and Al2O3 with ZrO2
content.

PRIOR ART
The Examiner relies on the following evidence in rejecting the claims
that are the subject of this appeal:
Kondratenko
Shulz-Harder ’221
Shulz-Harder ’592

US 5,609,284
US 6,207,221 B1
US 6,638,592 B1
Mar. 11, 1997
Mar. 27, 2001
Oct. 20, 2003
Appeal 2013-001190
Application 10/560,525

3
Carter, C. and M. Norton, CERAMIC MATERIALS SCIENCE &
ENGINEERING, pp. 3–14 (2007).

GROUNDS OF REJECTION
Claims 32, 34, 36–39, 42–44, and 51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kondratenko, Shulz-Harder ’221, and
Shulz-Harder ’592. Ans. 4.
Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kondratenko, Shulz-Harder ’221, Shulz-Harder ’592, and
Applicant’s admitted prior art. Id. at 8.

OPINION
Appellants argue claims 32, 34, 36–39, 42–44, and 51 as a group.
Appeal Br. 8–14; Reply Br. 2–5. We select claim 51 as representative. See
37 C.F.R. § 41.37(c)(1)(iv) (2012). The remaining claims in this group
stand or fall therewith.
The Examiner finds that Kondratenko teaches a method of
progressively heating and shock-cooling a ceramic layer to produce break-
off lines. Ans. 4–5 (citing Kondratenko Abstract, col. 3, ll. 41–53, col. 5, ll.
49–67, col. 6, ll. 5–18, col. 11, ll. 39–42). The Examiner further finds that
Schulz-Harder ’221 discloses a metal-ceramic substrate having an AlN
ceramic layer with a thickness of 0.2 to 2 mm and individual metal areas,
applied by direct copper bonding, with thicknesses of 0.1 to 6 mm. Id. at 6
(citing Schulz-Harder ’221 col. 2, ll. 1–6 and 21–29). The Examiner also
finds that Schulz-Harder ’592 discloses producing individual metal-ceramic
substrates by breaking a larger substrate along scored lines, in which the
metal areas are at a distance of 0.05 to 1 mm from a break line and 0.1 to 2
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mm from each other. Id. at 6–7 (citing Schulz-Harder ’592, Fig. 3, col. 4, ll.
25–26). The Examiner determines that it would have been obvious to utilize
Kondratenko’s method to separate the substrates of Schulz-Harder ’221 and
’592 into individual substrates “for the advantages the technique of
Kondratenko provides over conventional methods, such as, for example,
increased cutting speed.” Id. at 7 (citing Kondratenko col. 5, ll. 20–23). The
Examiner also takes the view that the claimed dimensions are “merely
exemplary” insofar as the Specification “does not reveal any criticality to the
claimed metal and substrate thickness, or the spacing between metal areas.
Id.
Appellants argue that Kondratenko’s process is for cutting glass,
which is unlike the claimed ceramic material, the crystalline structures of
which make it difficult to reliably produce break-off lines. Appeal Br. 9,
Reply Br. 3. However, as the Examiner correctly notes, Kondratenko
discloses that “[i]n addition to cutting plate and sheet glass, the disclosed
method was employed for cutting such non-metallic materials as . . .
ceramics.” Ans. 10 (quoting Kondratenko col. 11, ll. 39–42). The Examiner
also adduces evidence that glass is a type of ceramic. Id. at 9 (citing Carter
& Norton 4). Appellants maintain that “glass and ceramics are very
different,” but Appellants do not cite any evidence supporting this argument.
See Reply Br. 4. Nor do Appellants address Kondratenko’s teaching that its
method was employed for ceramics.
Appellants contest the Examiner’s statement that the claimed
dimensions are not critical. See Appeal Br. 10; Reply Br. 4. In particular,
Appellants argue that the thicknesses and distances are necessary to avoid
overlap between the weakening resulting from the metallization process and
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the weakening due to forming the break-off lines. Appeal Br. 10–11, 13–14;
Reply Br. 2–4. In support of this argument, Appellants quote from a
declaration one of the inventors submitted during prosecution. Appeal Br.
13–14. The Examiner responds that nothing in the Specification “explicitly
states the thickness of the metal areas is in any way related to and should be
chosen as a function of the other dimensions, and none of the criticality
implied by Appellants in their arguments is even remotely suggested by the
disclosure.” Ans. 11–12. While we agree with the Examiner that Appellants
have not pointed to support in the Specification for their argument that the
claimed dimensions are necessary to avoid overlapping of stresses or
weakening,
1
we note that arguments and evidence responsive to an
obviousness rejection need not be within a specification in order to be
considered. See In re Chu, 66 F.3d 292, 298 (Fed. Cir. 1995).
The more significant problem with Appellants’ argument is that, as
summarized above, the Examiner found that the claimed dimensions are
disclosed in the cited Schulz-Harder references. Ans. 6. Appellants do not
contest these findings. Because it is undisputed that the claimed dimensions
were taught by the cited references, it is unclear why it matters whether they
should or should not be considered critical. The Examiner also articulated a
reason why it would have been obvious to combine the Schulz-Harder
references with Kondratenko. Id. at 7. Appellants do not apprise us of any
error in the Examiner’s stated reason for the combination.
Appellants argue that obviousness is not applicable “[w]here problems
confronting the applicant are not applicable to the cited art.” Appeal Br. 13

1
Indeed, our review of the Specification does not reveal any discussion of
the problem of interference or overlapping of stresses.
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(citing In re Klein, 647 F.3d 1343 (Fed. Cir. 2011)).
2
Klein sets forth the
tests for determining whether a reference qualifies as analogous art for an
obviousness determination. Klein, 647 F.3d at 1348. The Examiner
determines that the Schulz-Harder references qualify as analogous art
“because they are directed to substrates almost identical to that claimed” and
that Kondratenko is analogous art “because it is directed to the problem of
splitting ceramic substrates.” Ans. 14–15. Substantial evidence supports the
Examiner’s findings, which Appellants do not challenge in their Reply Brief.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 32, 34, 36–39, 42–44, and 51.
Appellants do not present any separate argument directed to claim 41,
apart from its dependency from claim 51. Appeal Br. 15. Thus, we also
sustain the Examiner’s rejection of claim 41.

DECISION
We affirm the rejections of claims 32, 34, 36–39, 41–44, and 51.

2
This argument is somewhat unclear, but we understand from the citation to
Klein that Appellants intend to argue that the references do not qualify as
analogous art. To the extent that Appellants intend to argue against the
proposed combination on the basis the cited references do not teach using
the claimed method in order to avoid the problem of interference or
overlapping of stresses, the argument is unpersuasive. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. . . . [A]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20
(2007). Thus, it is not necessary for the Examiner to show that Kondratenko
teaches progressively heating and shock-cooling a ceramic layer for the
same reason that Appellants utilized that technique.
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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)(iv).

AFFIRMED

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