Ex Parte Schumacher et al

Patent Trial and Appeal Board

Nov 3, 2017

14196799 (P.T.A.B. Nov. 3, 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.
14/196,799 03/04/2014 Johann R. Schumacher 10-265-US-DIV 5096
20306 7590 11/03/2017
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
11/03/2017 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 JOHANN R. SCHUMACHER, STEVEN M. SCHULTZ,
STANLEY E. WILSON, and TARUN AMLA
____________

Appeal 2017-003825
Application 14/196,799
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 3, 6, 10, 12, 14–18, and 20–25. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant is the Applicant, ISOLA USA CORP., which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed August 1, 2016
(“App. Br.”), 1.

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STATEMENT OF THE CASE
Appellant claims a method of manufacturing an ultrathin laminate
material. App. Br. 1–4. Claims 12 and 21 illustrate the subject matter on
appeal and are reproduced below from the Claims Appendix to the Appeal
Brief:
12. A method for manufacturing an ultrathin laminate
material comprising the steps of:
forming at least a first resin coated copper sheet
including a copper foil sheet having a b-staged resin layer on
one surface of the copper foil sheet;
placing the at least one resin coated copper foil sheet into
contact with a first planar surface of a woven fabric sheet
having a thickness of from 10 to about 30 microns such that the
b-staged resin layer lies between the copper foil sheet and the
fabric sheet first planar surface to form a layup;
applying pressure and/or heat to the layup to cause the b-
staged resin associated with the resin coated copper layer to
penetrate into the woven fabric sheet; and
curing the b-staged resin to form an ultrathin laminate
sheet including a c-staged resin wherein the ultrathin laminate
sheet has a dielectric thickness of from about 0.75 mils to no
greater than 1.5 mils.

21. A method for manufacturing an ultrathin laminate
material comprising the steps of:
forming a first resin coated copper sheet and a second
resin coated copper sheet each of the first and second resin
coated copper sheets including a copper foil sheet having a b-
staged resin layer on one surface of the copper foil sheet
wherein the b-staged resin layer of each of the first and second
resin coated copper sheets has a thickness of from about 10
microns to about 15 microns;
placing the first resin coated copper foil sheet into
contact with a first planar surface of a woven glass fabric sheet
having a thickness of from 10 to about 30 microns such that the
b-staged resin layer lies between the copper foil sheet and the
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woven glass fabric sheet first planar surface and placing the
second resin coated copper foil sheet into contact with a second
planar surface of the woven glass fabric sheet such that the b-
staged resin layer lies between the copper foil sheet and the
woven glass fabric sheet second planar surface to form a layup;
applying pressure and/or heat to the layup to cause the b-
staged resin associated with the resin coated copper layer to
penetrate into the woven fabric sheet; and
curing the b-staged resin layers by applying heat and
pressure to the layup to form an ultrathin laminate sheet
including c-staged resin wherein the ultrathin laminate sheet
has a dielectric thickness ranging from about 0.8 to about 1.2
mils.

App. Br. 12–13 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered July 30, 2015 (“Final Act.”), and maintains the rejections in
the Answer entered November 4, 2016 (“Ans.”):
I. Claims 6, 10, 12, 14–18, 20–23, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Sato et al. (US 7,144,472 B2, issued
December 5, 2006) (“Sato”), in view of Adler (US 4,087,300, issued May 2,
1978);
II. Claims 3 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Sato in view of Adler, Watanabe et al. (US 3,962,520, issued June 8, 1976)
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(“Watanabe”) and Burns et al. (US 6,653,371 B1, issued November 25,
2003) (“Burns”); and
III. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Sato in
view of Adler and Haas et al. (US 6,245,696 B1, issued June 12, 2001)
(“Haas”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 3, 6, 10, 12, 14–18, and 20–25 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Action, the Answer, and below.
Despite separate rejections directed to claims 3, 16, and 24
(Rejections II and III), Appellant argues all of the pending claims as a group.
App. Br. 7–9. Appellant also provides additional arguments directed to only
independent claims 21 and 25, which Appellant argues together. Therefore,
we decide the appeal as to claims 3, 6, 10, 12, 14–18, 20, and 22–24 based
on independent claim 12, and decide the appeal as to claims 21 and 25 based
on independent claim 21. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 3, 6, 10, 12, 14–18, 20, and 22–24
As set forth above, claim 12 requires the recited ultrathin laminate
sheet to have a dielectric thickness of from about 0.75 mils to no greater than
1.5 mils. Appellant’s Specification defines “dielectric thickness” as “the
range between the measured minimum and maximum thicknesses of the
resin impregnated woven fabric material portion of the laminate.” Spec. 11.
Appellant’s Specification defines the “minimum dielectric thickness” as the
distance from the tip of the copper tooth or dendrite that extends the furthest
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into the base laminate from the copper layer associated with one side of the
laminate, to the copper tooth or dendrite that extends the furthest into the
base laminate from the copper layer associated with the opposing side of the
laminate. Spec. 11–12. Appellant’s Specification defines the “maximum
dielectric thickness” as the distance from the first copper plane to the
opposing copper plane. Spec. 12.
Sato discloses a method of manufacturing a prepreg used for
producing a printed wiring board. Sato col. 3, ll. 5–7. Sato discloses that
the prepreg comprises a woven fabric backbone material, having a thickness
of 30 microns or less, impregnated with a thermosetting resin. Sato col. 3, ll.
5–7; col. 5, ll. 59–63. Sato further discloses a method of producing a
copper-clad laminate that comprises adhering one side of the resin-
impregnated woven fabric or prepreg to a coper foil. Sato col. 9, ll. 9–38.
The Examiner finds that Example 3 of Sato describes using heat and
pressure to impregnate a woven glass fabric having a thickness of 15
microns with a thermosetting resin to produce a prepreg having a thickness
of 20 microns, and adhering a copper foil onto one side of the prepreg using
heat and pressure. Ans. 8; Sato col. 12, l. 57–col. 13, l. 51.
The Examiner relies on Adler’s disclosure of a laminate used in
fabricating printed circuits that comprises a woven glass cloth impregnated
with a resin. Final Act. 4; Adler col. 2, ll. 27–37. Adler discloses that the
laminate can be clad on one or both sides with copper foil, depending on the
desired use for the laminate. Adler col. 2, ll. 27–37. The Examiner finds
that one of ordinary skill in the art would have been led in certain
circumstances to place a second copper foil onto the copper-clad laminate
disclosed in Sato, in view of Adler’s disclosure that a second copper foil is
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used in some printed circuit board applications. Final Act. 4.
Based on the definition of “dielectric thickness” in Appellant’s
Specification, Appellant argues that determining dielectric thickness
involves taking measurements from portions of copper sheets adhered to two
surfaces of a resin-impregnated fabric core. App. Br. 8. Appellant contends
that Sato discloses a prepreg clad on only one surface with a copper foil, and
argue that because Sato does not disclose a prepreg clad on both surfaces
with a copper foil, it would be impossible to measure the dielectric thickness
of Sato’s prepreg. App. Br. 8; Reply Br. 3–4. Appellant argues that the
thickness disclosed in Sato cited by the Examiner is the thickness of a
prepreg before copper cladding, which is not applicable to dielectric
thickness. Id.
However, the Examiner provides a thorough, reasoned explanation in
the Answer of why one of ordinary skill in the art reasonably would have
understood Sato to disclose a prepreg having a thickness corresponding to
dielectric thickness as defined in Appellant’s Specification and recited in
claim 12. Ans. 8–9. Specifically, as the Examiner correctly finds, Example
3 of Sato discloses the thickness of a resin-impregnated woven fabric or
prepreg (20 microns) before adhering the prepreg to a copper foil using heat
and pressure. Ans. 9; Sato col. 13, ll. 39–52. The Examiner explains that
one of ordinary skill in the art reasonably would have expected that the
lamination process would not change the thickness of the prepreg because 1)
Sato discloses that adhering a copper foil to the prepreg does not add any
material to the prepreg, 2) Sato discloses drying the resin in the prepreg
before adhering the prepreg to the copper foil, so application of heat would
not cause the prepreg to shrink, and 3) Sato discloses that during resin
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impregnation of the woven fabric backbone material, resin permeates
throughout and covers the entirety of the material, and the prepreg therefore
would not contain voids, so application of pressure would not cause the
prepreg to shrink. Ans. 9; Sato col. 5, ll. 28–34; col. 9, ll. 16–38; col. 13, ll.
1–54.
Appellant does not challenge these findings and reasoning in the
Reply Brief. Reply Br. 3–4. Therefore, based on the above uncontroverted
disclosures in Sato, and based on the Examiner’s above undisputed
reasoning, one of ordinary skill in the art reasonably would have expected
that the thickness of the prepreg disclosed in Sato would be the same after
lamination of the prepreg to a single copper foil as disclosed in Sato, and
after lamination of the prepreg to two copper foils as suggested by Adler.
The prepreg thickness disclosed in Sato therefore reasonably corresponds to
“dielectric thickness” as defined in Appellant’s Specification.
As the Examiner correctly finds, the thickness of the prepreg
described in Sato’s Example 3 (20 microns) falls within the range of
dielectric thicknesses recited in claim 12 (about 0.75 mils (19 microns) to no
greater than 1.5 mils (38 microns)). Ans. 8; Sato col. 13, ll. 39–40. The
Examiner also correctly finds that Sato discloses that resin impregnation
adds 5 microns to the thickness of the woven fabric backbone material,
which Sato discloses to be 30 microns or less. Ans. 8; Sato col. 12, ll. 58–
61; col. 13, ll. 39–40. In view of Sato’s these disclosures, one of ordinary
skill in the art would have understood that resin-impregnation of the woven
fabric would yield a prepreg having a thickness of 35 microns or less, which
overlaps the range of dielectric thicknesses recited in claim 12. Sato col. 5,
ll. 59–63.
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Accordingly, Sato’s disclosures as a whole reasonably would have
suggested to one of ordinary skill in the art a resin-impregnated woven
fabric (prepreg) portion of a copper clad-laminate having a thickness (20
microns or 35 microns or less) falling within, and/or overlapping, the range
of dielectric thicknesses recited in claim 12. Because Appellant does not
demonstrate the criticality of the range of dielectric thicknesses recited in
claim 12 (App. Br. 8; Reply Br. 3–4), Appellant’s arguments are
unpersuasive of reversible error in the Examiner’s rejection. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.).
We accordingly sustain the Examiner’s rejections of claims 3, 6, 10,
12, 14–18, 20, and 22–24 under 35 U.S.C. § 103(a).
Claims 21 and 25
As set forth above, claim 21 recites a method that requires, inter alia,
placing a first resin-coated copper foil sheet into contact with a first planar
surface of a woven glass fabric sheet, and placing a second resin-coated
copper foil sheet into contact with a second planar surface of the woven
glass fabric sheet.
Appellant argues that Sato discloses a fabric sheet contacted on only
one side with resin-coated copper, and Appellant contends that Sato does not
disclose or suggest using two resin-coated copper sheets to form an ultrathin
laminate. App. Br. 9. Appellant further argues that “the [E]xaminer has not
set forth any factual basis as to why the claimed method using two resin
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coated copper sheets to prepare a laminate would be obvious from the cited
prior art.” Id.
However, as discussed above, the Examiner relies on Adler’s
disclosure of a laminate used to fabricate printed circuits that comprises a
woven glass cloth impregnated with a resin, which is clad on one or both
sides with copper foil, depending on the desired use for the laminate. In
view of these disclosures, one of ordinary skill in the art would have
understood that the resin-impregnated woven fabric or prepreg disclosed in
Sato, which is clad on one side with coper foil and used to produce printed
wiring boards, could be clad on both sides with copper foil, for certain
applications. Therefore, Appellant’s arguments2 are unpersuasive of
reversible error in the Examiner’s rejection of claim 21. We accordingly
sustain the Examiner’s rejection of claims 21 and 25 under 35 U.S.C.
§ 103(a).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejections of claims 3, 6, 10, 12, 14–18,
and 20–25 under 35 U.S.C. § 103(a).

2 We do not consider the new arguments presented at pages 2 to 3 of
Appellant’s Reply Brief because Appellant could have raised these
arguments in the Appeal Brief, and Appellant does not show good cause for
not doing so. 37 C.F.R. § 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2)
(arguments raised for the first time in the Reply Brief that could have been
raised in the Appeal Brief will not be considered by the Board unless good
cause is shown).

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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).
AFFIRMED