Isola USA Corp.

Patent Trials and Appeals Board

Sep 24, 2020

15099715 - (D) (P.T.A.B. Sep. 24, 2020)

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.
15/099,715 04/15/2016 Johann R. Schumacher 13-1767-US-DIV 8454
20306 7590 09/24/2020
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
DODDS, SCOTT
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
09/24/2020 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
Appeal 2020-000099
Application 15/099,715
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed April 15, 2016 (“Spec.”); Final Office Action mailed April 17, 2018
(“Final Act.”); Appeal Brief filed December 18, 2018 (“Appeal Br.”);
Examiner’s Answer mailed February 5, 2019 (“Ans.”); and Reply Brief filed
April 5, 2019 (“Reply Br.”).
Appeal 2020-000099
Application 15/099,715

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–14, 16–18, and 20.3 Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellant states the invention concerns resin film products that are
useful in the manufacture of layups used to manufacture printed circuit
boards. Spec. 2. Claim 1, reproduced below, is illustrative of the claimed
subject matter (Appeal Br., Claims Appendix 17):
1. A method comprising:
providing a resin film product having a width dimension and
a length dimension comprising:
a solidified b-staged resin base layer having a first planar
surface and a second planar surface; and
a protective layer disposed on the first planar surface of the
base layer, wherein the base layer has a thickness from about 0.1
to about 1 mil;
heating an exposed innerlayer material surface of a printed
circuit board substrate having a width dimension and a length
dimension;
cutting the width dimension and length dimension of the resin
film product to have substantially the same width dimension and

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies ISOLA USA CORP. as the real party
in interest. Appeal Br. 2.
3 Claim 19 was rejected under 35 U.S.C. §§ 112(b) and (d), but this rejection
was withdrawn as a result of the cancellation of claim 19. See Ans. 12;
Appeal Br. 5.
Appeal 2020-000099
Application 15/099,715

3
length dimension of the heated exposed innerlayer material
surface;
applying the unprotected second planar surface of the base
layer against the heated exposed innerlayer material surface of
the printed circuit board substrate to liquefy the solidified b-
staged resin base layer and form a printed circuit board layup;
and
cooling the printed circuit board layup to form a re-solidified
b-staged resin base layer comprising the protective layer
disposed on the first planar surface.

Independent claim 10 also stands rejected, and is directed to a similar
method as recited in claim 1. Id. at 18–19.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dunsche US 3,717,523 February 20, 1973
Colburn US 3,721,597 March 20, 1973
Del US 4,180,608 December 25, 1979
Lemons US 5,879,498 March 9, 1999
Tani et al.
hereinafter “Tani”
US 2003/0145458 A1 August 7, 2003
Jo et al.
hereinafter “Jo”
US 2006/0248712 A1 November 9, 2006
REJECTIONS
1. The Examiner rejected claims 1–5 and 7–9 under 35 U.S.C. § 103
as unpatentable over Del, optionally in view of Lemons, and Tani,
Colburn and/or Dunsche. Final Act. 5–9.
Appeal 2020-000099
Application 15/099,715

4
2. The Examiner rejected claim 6 under 35 U.S.C. § 103 as
unpatentable over Del, optionally in view of Lemons, and Tani,
Colburn and/or Dunsche, further in view of Jo. Final Act. 9–10.
3. The Examiner rejected claims 10–14 and 16–18 under 35 U.S.C.
§ 103 as unpatentable over Del, optionally in view of Lemons, and
Colburn and/or Dunsche, and Jo. Final Act. 10–14.
4. The Examiner rejected claim 20 under 35 U.S.C. § 103 as
unpatentable over Del, optionally in view of Lemons, and Colburn
and/or Dunsche, and Jo, further in view of Tani. Final Act. 14–15.

OPINION
Rejection 1
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 10–13. Thus, we select
claim 1 as representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv).

The Examiner’s Rejection
At the outset, in view of the discussion below and the Examiner’s
position that Dunsche and Lemons are not strictly necessary to the rejection,
we find it unnecessary to reach the Examiner’s alternative positions with
respect to Dunsche and Lemons and Appellant’s arguments related thereto.
See Final Act. 7–8; Ans. 17, 21; Appeal Br. 13, 15–16, 20–21; Reply Br. 4–
5.
In rejecting claim 1 as unpatentable over Del, Tani, and Colburn, the
Examiner found Del discloses a method including the steps of providing a
Appeal 2020-000099
Application 15/099,715

5
resin film product as recited in claim 1. Final Act. 5–6. In particular, the
Examiner found Del discloses a b-staged resin base layer having a first and a
second planar surface, protective layers on each of the planar surfaces,
removing the protective layer from the second planar surface, and applying
the unprotected second planar surface to a printed circuit board (PCB)
substrate to form a PCB layup. Id.
The Examiner found Del discloses the b-staged resin base layer is
meant to encapsulate the electrical components, but fails to specifically teach
a thickness of 0.1 to 1 mil as recited in claim 1. Id. at 6. The Examiner
found that the thickness of the encapsulant may be thicker or thinner relative
to the size of the components to be encapsulated, such that any thickness
capable of encapsulating the components would have been acceptable. Id.
The Examiner found Tani discloses epoxy encapsulants similar to those in
Del, and Tani further discloses various thicknesses in the examples including
a thickness of 25 microns, which is slightly less than 1 mil. Id. Thus, the
Examiner determined the thickness in claim 1 would have been obvious
because such thicknesses are known to be suitable to encapsulate similar
components known in the art and using thinner layers when suitable would
have reduced the materials needed, and reduce costs. Id.
The Examiner found Del does not explicitly disclose the resin film is
cut to meet the exposed layer of the printed circuit board, but because Del
discloses a discrete product, where the resin film product and the PCB have
matching shapes, Del implies that the film was cut to the shape of the PCB.
Id. at 7. The Examiner found Del is silent on the timing of the cutting, but it
would have been apparent that the cutting could have been reasonably
performed at any time after the PCB size is known. Id. The Examiner
Appeal 2020-000099
Application 15/099,715

6
determined that such cutting would have predictably allowed for the final
shape of the b-staged resin and PCB to match as desired while not restricting
the dimensions when the casted film is originally formed. Id.
The Examiner found Del discloses the resin is heated via nip rollers
upon application to flow and bond the resin to the PCB, but Del fails to
disclose the exposed surface of the innerlayer is heated as recited in claim 1.
Id. The Examiner found it was well known that when heat-bonding
laminates to resin layers via softening/melting of the resin, the laminate
layers to which the resin may be bonded may be pre-heated in order to
provide some or all of the heat required for bonding. Id. at 8, citing Colburn,
col. 3, ll. 2–15. Thus, the Examiner determined it would have been obvious
to preheat the PCB of Del as a suitable way to provide some or all of the
heat necessary to soften/melt the resin during lamination as required to
achieve flow and create the desired bond. Id.

Appellant’s contentions
Appellant contends Tani does not disclose encapsulating wire patterns
with various thicknesses, but rather discloses wiring patterns formed on the
surface of core substrate, and the examples pointed to by the Examiner bear
no relation to a thickness of the resin that is required for encapsulation.
Appeal Br. 11. Appellant contends Colburn does not disclose pre-heating
laminate layers in order to provide some or all of the heat required for
bonding, rather, Colburn discloses heat may be applied to the entire metal
laminae prior to lamination with a structured film. Id. at 12. Appellant
contends the Examiner did not cite any portions of Del that indicated the b-
staged film conforms to the shape of the PCB, and that cutting a continuous
Appeal 2020-000099
Application 15/099,715

7
film as in Del is not the same feature as at issue, because cutting would
occur after the b-staged film was already applied to the PCB. Id. at 12–13.

Issue
Did Appellant demonstrate reversible error in the Examiner’s
determination that the method recited in claim 1 would have been obvious
over the cited prior art of record?

Discussion
We are not persuaded by Appellant’s argument that the base layer
thickness of from about 0.1 to about 1 mil recited in claim 1 would not have
been obvious over Del and Tani. We observe that Del does not disclose any
particular criticality to the thickness of the solid cast resin layer (base layer),
stating that it is “preferably formed with a uniform thickness of between
about 3–6 mil.” Del, col. 3, ll. 1–2. As the Examiner points out, Appellant
has not provided any specific arguments against the Examiner’s position that
the thickness could be varied based on the particular size of components to
be encapsulated. Ans. 14–15.
We are of the view that the Examiner’s position that it would have
been obvious to have adjusted the thickness of the solid cast resin layer as
needed and including the range recited in claim 1 is reasonably supported.
In this regard, Tani’s disclosure of insulating layers including epoxy resin
(Fig. 3c, 20) is not inconsistent with the Examiner’s position as such are
similar to the epoxy resin composite disclosed in Del, which both
encapsulate wiring patterns. Tani ¶ 49, Fig. 3c (20, 11); Del Fig. 5 (10, 42).
Tani discloses several examples where the thickness of the insulating layer is
Appeal 2020-000099
Application 15/099,715

8
different (Tani ¶¶ 72–89), which support the Examiner’s position that the
thicknesses of such layers may be varied. See Ans. 13–14.
We are also not persuaded by Appellant’s arguments that the
Examiner has not provided sufficient support that the step of heating the
exposed innerlayer material surface of the PCB in Del would have been
obvious at least over Colburn. That is, Colburn discloses “heat can be
applied to the metal laminate before they are passed between laminating
rolls.” Colburn, col. 3, ll. 7–12. This disclosure provides support for the
Examiner’s position that it is a well-known technique in forming laminates
that a metal surface to be laminated may be heated in order to cause the resin
material to flow and bond the laminate layers. Appellant’s arguments with
respect to Colburn unduly focus on the specific disclosure in Colburn alone,
rather than what one of ordinary skill in the art would have understood from
the combination of art as a whole.
In this regard, Appellant’s position that Colburn discloses that heat is
only applied to a laminate layer after contact is made between the laminate
layer and the resin layer (Reply Br. 2–4) is plainly inconsistent with the
actual disclosure in Colburn. In particular, as discussed above, Colburn
discloses heat is applied to the metal laminae prior to passing through the
laminating rolls, and Figure 1 of Colburn depicts metal laminae 2 and 3
coming in contact with adhesive layers 4, 6, and 7 at rollers 8 and 9.
Accordingly, heat applied to the metal laminae 2 and 3 would occur prior to
contact with the adhesive layer. To the extent Appellant’s position that
Colburn’s disclosure that heat is applied “to the entire metal laminae” does
not suggest heating only “an exposed innerlayer material surface” as recited
in claim 1, we are of the view that this argument is not commensurate in
Appeal 2020-000099
Application 15/099,715

9
scope with the claims as the claims do not exclude heating the entire printed
circuit board in order to provide the necessary heat to the exposed innerlayer
material surface.
Thus, we are of the view that one of ordinary skill in the art would
have understood from Colburn that an alternative to heating resin material
used for bonding in laminates would be to preheat a metal layer (in Del, an
innerlayer metal structure) in order to obtain the desired flowability for the
resin material. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
(“[T]he test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art.”). In KSR, the
Supreme Court explained, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
We are also not persuaded by Appellant’s arguments that cutting the
width dimension and length dimension of the resin film product such that it
is substantially the same as the width and length dimension of the exposed
innerlayer material surface would not have been obvious. As the Examiner
explains, the claims do not require the cutting to take place at any particular
time of the method recited in claim 1. Ans. 17. As pointed out by the
Examiner, Del discloses a discrete product that includes a PCB laminate
where the resin film product has substantially the same width and length
dimension as the exposed inner layer material surface, which indicates that
Appeal 2020-000099
Application 15/099,715

10
the resin layer had been cut. Del, Figs. 2, 5, 6. Thus, we are unpersuaded
the cutting step as recited in claim 1 would not have been obvious over Del.
As a result, we affirm the Examiner’s rejection of claim 1.

Rejection 2
Claim 6 depends from claim 1 and recites “wherein the innerlayer
material surface of the printed circuit board substrate is heated to a
temperature ranging from about 50 °C to about 60 °C.”

The Examiner’s Rejection
In rejecting claim 6 over Del, Tani, Colburn, and further in view of
Jo,4 the Examiner found the combination of Del, Tani, and Colburn fails to
specifically disclose heating between 50 °C to about 60 °C. Final Act. 9.
The Examiner found Jo discloses the initial heating of an epoxy layer to be
applied to a circuit board is low as 50 °C in a step that is implicitly to soften
the epoxy for bonding prior to curing, the same goal as in Del. Id. citing Jo,
¶ 40. The Examiner determined it would have been obvious to heat the PCB
in Del to between 50 and 60 °C because such temperatures are known to
cause softening of epoxy for similar purposes and would have predictably
assisted with preventing heat loss without overheating or over-curing the
epoxy in Del. Id. at 9–10.

4 As discussed above, we find it unnecessary to reach the Examiner’s
alternative positions with respect to Dunsche and Lemons.
Appeal 2020-000099
Application 15/099,715

11
Appellant’s contentions
Appellant contends Jo discloses the application of heat and pressure
after the resin layer and electromagnetic shield layer are already in contact,
which is not the feature at issue. Appeal Br. 14. Appellant argues Jo does
not disclose the use of heat to liquefy the resin layer. Id.

Discussion
We are not persuaded by Appellant’s arguments. As the Examiner
explains, Jo is relied upon to demonstrate the claimed temperature range is a
known temperature range for heating laminating epoxy, the b-staged resin
taught in Del. Ans. 18–19. The Examiner further explains that Del teaches
epoxy liquefies during laminating, and Jo discloses laminating temperatures
within the claimed range is suitable for epoxy, such that it at least would
have been obvious to have heated the interlayer between 50 to 60 °C,
because doing so would have predictably assisted with providing the epoxy
the heat as needed for facilitating laminating in Del. Id. at 19.
The Examiner’s reasoning is supported by Del, which discloses epoxy
resin system flows around and encapsulates the circuitry of the PCB. Del,
col. 3, ll. 10–19. In addition, Del discloses that the temperature range for
lamination is “preferred,” which does not exclude other temperatures that are
suitable for lamination (Del, col. 5, ll. 54–56) including those temperatures
disclosed in Jo of from 50 to 150 °C (Jo ¶ 40). Thus, Appellant’s arguments
do not address the Examiner’s rejection as a whole.
Accordingly, we affirm the Examiner’s rejection of claim 6.

Appeal 2020-000099
Application 15/099,715

12
Rejections 3–4
For claims 10–14 and 16–18, the subject of Rejection 3, and claim 20,
the subject of Rejection 4, Appellant relies on similar arguments as
discussed above for claims 1 and 6. Appeal Br. 14–15.
Accordingly, we affirm the Examiner’s rejections of claims 10–14,
16–18, and 20 for similar reasons as discussed above for claims 1 and 6.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–9 103 Del, Lemons, Tani,
Colburn, Dunsche
1–5, 7–9
6 103 Del, Lemons, Tani,
Colburn, Dunsche,
Jo
6
10–14, 16–
18
103 Del, Lemons,
Colburn, Dunsche,
Jo
10–14, 16–
18

20 103 Del, Lemons,
Colburn, Dunsche,
Jo, Tani
20
Overall
Outcome
1–14, 16–
18, 20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

Appeal 2020-000099
Application 15/099,715

13
AFFIRMED