HENKEL IP & HOLDING GMBH et al.

Patent Trials and Appeals Board

Dec 21, 2021

2021005022 (P.T.A.B. Dec. 21, 2021)

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.
16/012,840 06/20/2018 Wenhua ZHANG PT033329 1570
31217 7590 12/21/2021
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
DIAZ, MATTHEW R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
12/21/2021 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte WENHAU ZHANG, QINYAN ZHU,
JOHN G. WOODS, HONG (DOROTHY) JIANG,
JUNJUN WU, and MARK JASON
____________
Appeal 2021-005022
Application 16/012,840
Technology Center 1700
____________
Before CATHERINE Q. TIMM, DEBRA L. DENNETT, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5–15, 20–26, 28–30, 32, and 33 of

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
16/012,840 filed June 20, 2018; the Final Office Action dated Nov. 5, 2020
(“Final Act.”); the Advisory Action dated Jan. 14, 2021 (“Adv. Act.”); the
Appeal Brief filed Mar. 31, 2021 (“Appeal Br.”); the Examiner’s Answer
dated June 21, 2021 (“Ans.”); and the Reply Brief filed Aug. 19, 2021
(“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Henkel IP & Holding GmbH as the real party in interest. Appeal
Br. 2.
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Application 16/012,840, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
The subject matter of the invention relates to conductive compositions
with improved conductivity said to be attributable to the addition of one or
more polymer emulsions as binder and one or more sintering agents in a
conductive composition having metal particles. Spec. ¶ 1.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, represents the claimed subject matter with a key limitation italicized:
1. A sinterable conductive composition comprising:
a metal component having an average particle diameter
of greater than about 150 nm to about 100 μm, said metal
component being made from or doped with silver, aluminum,
gold, germanium or oxides or alloys thereof;
a sintering agent; and
an emulsion comprising water, and at least one
particulate polymer having an average particle diameter
wherein a ratio of average metal component particle diameter
to average particulate polymer particle diameter is between 1:1
and 10:1.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Barnes US 2,647,107 July 28, 1953
Foreman et al.
(“Foreman”)
US 2012/0061623 A1 Mar. 15, 2012
Magdassi et al.
(“Magdassi”)
US 2012/0168684 A1 July 5, 2012
Jablonski et al. US 8,673,049 B2 Mar. 18, 2014
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(“Jablonski”)
Akagawa et al.
(“Akagawa”)
US 2015/0217409 A1 Aug. 6, 2015
REJECTIONS
The Examiner maintains the following rejections of claims under 35
U.S.C. § 103, as modified in the Advisory Action:
A. Claims 1–3, 5, 6, 9–15, and 28 over Magdassi in view of
Jablonski;
B. Claims 7, 8, and 32 over Magdassi in view of Jablonski, further
in view of Barnes;
C. Claims 20–25 over Magdassi in view of Jablonski, further in
view of Akagawa;
D. Claims 26 and 33 over Magdassi in view of Jablonski and
Foreman; and
E. Claims 29 and 30 over Magdassi in view of Jablonski and
Barnes.
Adv. Act. 2–3; Ans. 3.
DISCUSSION
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)); In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (the initial burden is on the PTO to set forth the
basis for any rejection so as to put the patent applicant on notice of the
reasons why the applicant is not entitled to a patent on the claim scope that
they seek). To establish a prima facie case of obviousness, the Examiner
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must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
We focus on the Examiner’s findings and determinations that relate to
Appellant’s contention that the combination of Magdassi and Jablonski do
not teach the claimed particle diameter ratio. See Appeal Br. 6; Reply Br. 2–
3. Because we decide this appeal based on a limitation recited by each of
independent claims 1, 26, and 29, we focus our analysis on claim 1. Our
analysis is equally applicable to each of the independent claims and,
therefore, to all of the dependent claims as well.
The Examiner finds that Magdassi teaches a sinterable conductive
composition comprising a metal component having an average particle
diameter overlapping the claimed range of about 150 nanometers to 100
micrometers, said metal component being made of silver or gold or an alloy
thereof. Ans. 3. The Examiner finds that Jablonski teaches a sinterable
conductive composition comprising metal particles, an acid component to
act as a sintering promoter, and an aqueous solvent comprising an emulsion
in which resin fine particles of a polymerized vinyl-group containing
monomer are dispersed to improve adhesion of the composition. Id. at 4.
The Examiner finds that one of ordinary skill in the art would have
understood the term “fine particles” in Jablonski to mean a nano-sized
particle size, on the order of nanometers. Id. The Examiner finds that claim
1’s requirement that “a ratio of average metal component particle diameter
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to average particulate polymer particle diameter is between 1:1 and 10:1”
means that “the claimed average particle diameter ranges of the particulate
polymer as about 15 nm to 100 μm implied by instant claim 1.” Id.
The Examiner concludes that it would have been obvious to the
ordinarily skilled artisan to provide the aqueous polymer emulsion taught by
Jablonski in the aqueous composition of Magdassi in order to obtain a
sinterable conductive composition having an improved adhesion for
disposition on a substrate. Id. In the alternative, the Examiner determines
that it would have been obvious for the ordinarily skilled artisan to vary or
optimize the polymer particle size of Jablonski’s “fine particles” in order to
sufficiently disperse the polymer particles and obtain an emulsion suitable to
improve adhesion of the composition and silver particles to a base material.
Id.
Appellant contends that it surprisingly discovered that the polymer
emulsion as claimed improves electrical conductivity, but only when the
polymer particles are within a specific range of relative particle size with
respect to the metal particles. Appeal Br. 4–5. Appellant argues, “neither
Magdassi nor Jablonski teach or suggest the claimed particle size
relationship among the metal particles of the metal component and the
particulate polymer particles of the emulsion,” i.e., a ratio of average metal
component particle diameter to average particulate polymer diameter is
between 1:1 and 10:1. Id. at 6.
We agree with Appellant that the claimed ratio is not taught or
suggested by the cited art.
Claim 1 recites “a ratio of average metal component particle diameter
to average particulate polymer particle diameter is between 1:1 and 10:1.”
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Appeal Br. 13 (Claims App.). Thus, claim 1 requires a specific relationship
between the particle size of the metal component and of the polymer
particle, and not merely a size range for the polymer particle. As the
Examiner acknowledges, Magdassi does not disclose a particulate polymer.
See Final Act. 5. Jablonski teaches a composition may include a polymer
obtained by polymerizing a monomer having a vinyl group, and the polymer
“may be a water-soluble polymer which can be directly dissolved in a
solvent, latex which is a system (emulsion) in which resin fine particles are
dispersed in an aqueous solvent, or the like.” Jablonski, col. 6, ll. 62–67.
Jablonski does not further characterize the size of the polymer particle, nor
suggest a relationship between the polymer particle size and metal particle
size. Jablonski discloses that the diameter of silver nanoparticles in the
invention is equal to or less than 100 nm, preferably equal to or less than 50
nm. Id., col. 5, ll. 27–29.
Missing from the record is any evidence of an interdependent
relationship between the diameter sizes of the metal component and the
polymer particle. In addition, nothing in the combined references suggests
or recognizes that the claimed ratio relationship is a result effective variable.
See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (a particular parameter
must first be recognized as a result-effective variable, i.e., a variable which
achieves a recognized result, before the determination of the optimum or
workable ranges of said variable might be characterized as routine
experimentation). Thus, it would not have been obvious to one of ordinary
skill in the art to vary or optimize the polymer particle size based on the size
of the metal particles.
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We “cannot accept general conclusions about what is ‘basic
knowledge’ or ‘common sense’ as a replacement for documentary evidence
for core factual findings in a determination of patentability.” K/S Himpp v.
Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (citing In re
Zurko, 258 F.3d 1379, 1385– 86 (Fed. Cir. 2001)). When the references
cited by the Examiner fail to establish a prima facie case of obviousness, the
rejection is improper and will be overturned. Fine, 837 F.2d at 1074. Here,
the Examiner fails to demonstrate that each and every limitation of claim 1 is
described or suggested by the prior art or would have been obvious based on
the knowledge of those of ordinary skill in the art or the inferences and
creative steps a person of ordinary skill in the art would have employed. See
KSR, 550 U.S. at 417. Therefore, we do not sustain the rejection of claim 1
over Magdassi in view of Jablonski. For the same reasons, we do not sustain
the rejection of claims 2, 3, 5, 6, 9–15, and 28 over these references. The
additional references cited in the other rejections do not cure the deficiency
in the combination of Magdassi and Jablonski, therefore we do not sustain
the rejections of claims 7, 8, 20–26, 29, 30, 32, and 33.
Because the Examiner did not present a prima facie case of
obviousness, we do not reach Appellants’ evidence of unexpected results.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 6,
9–15, 28 103
Magdassi, Jablonski 1–3, 5, 6, 9–15, 28
7, 8, 32 103 Magdassi, Jablonski, Barner 7, 8, 32
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
20–25 103 Magdassi, Jablonski, Akagawa 20–25
26, 33 103 Magdassi, Jablonski, Foreman 26, 33
29, 30 103 Magdassi, Jablonski, Barner 29, 30
Overall
Outcome

1–3, 5–15,
20–26, 28–
30, 32, 33
REVERSED