Masahiro Aoshima et al.

Patent Trials and Appeals Board

Apr 15, 2020

13624088 - (D) (P.T.A.B. Apr. 15, 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.
13/624,088 09/21/2012 MASAHIRO AOSHIMA 20371-134937 7299
42798 7590 04/15/2020
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
04/15/2020 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 MASAHIRO AOSHIMA, YOSHIHIRO TAKAHASHI,
YUKA YAMAZAKI, YASUO KAMIGATA, and HIKARI MURAI
____________

Appeal 2019-002069
Application 13/624,088
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–3, 5–10, and 17–25 under 35 U.S.C.
§ 103(a) as unpatentable over at least the combined prior art of Scheel (US
2003/0010530A1, Jan. 16, 2003 ), Aizawa (JP 2005-53990, March 3, 2005
and relying on a machine English translation dated July 25, 2014), and Mori

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Hitachi Chemical Company, Ltd. as the
real party in interest (Appeal Br. 2).
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(US 2007/0203308 A1, Aug. 30, 2007)2; and rejecting claims 1–3, 5–10, and
17–25 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
1. A laminate body containing at least one resin composition layer
and at least one glass substrate layer, wherein a resin composition layer, of
the at least one resin composition layer, comprises a resin composition
containing a thermosetting resin and a silica having a mean primary particle
diameter of at most 1 μm, wherein the at least one glass substrate layer
consists of glass, and wherein the content of the silica is from 3 to 20% by
mass of the resin composition not including a solvent.

Independent claim 5 is almost identical to claim 1 except it is directed
to a “laminate plate” rather than to a “laminate body” (Claims Appendix 20).
Appellant’s arguments focus on limitations common to independent claims 1
and 5 (see generally Appeal Brief).

OPINION

2 The Examiner adds Jochym (US 6,747,217 B1, June 8, 2004) to the
rejection of dependent claims 21 and 22. A discussion of this reference is
not needed for disposition of this appeal.
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The § 112, first paragraph, rejection of claims 1–3, 5–10, and 17–25 for
failing to comply with the written description requirement
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
Claims 1 and 5 each recite that the content of silica is “from 3 to 20%
by mass of the resin composition not including a solvent” (Claims
Appendix, Appeal Br. 19, 20). The Examiner acknowledged that while the
Specification described an amount of silica from 3 to 20% by mass of the
resin composition (Spec. 16; e.g., Final Act. 3), there is no explicit written
description that this amount does not include a solvent (Ans. 4, 12–16).
Appellant’s position is that since the Specification discusses the resin
composition without any inclusion of a solvent, and that each instance of
discussing a solvent in the Specification is in the context of preparing a
varnish or evaporating a solvent from a varnish, this shows adequately that
Appellant had possession of a resin composition with a silica content of
from 3 to 20% by mass of the resin composition not including a solvent.
(Appeal Br. 4–8; Reply Br. 2–5).
We agree with Appellant that a preponderance of the evidence
supports Appellant’s position that one of ordinary skill in the art would have
understood that the Specification, as originally filed, encompasses a resin
composition with a silica content of from 3 to 20% by mass of the resin
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composition not including a solvent. Cf. Union Oil Co. of Cal. v. Atl.
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (The claim need not use
the same words as the specification; it is enough that one of ordinary skill in
the art would recognize that the inventor invented what is claimed).
Accordingly, we reverse the Examiner’s § 112 rejection on appeal.

The § 103(a) Rejections
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief and the Reply Br., we determine
that Appellant has not demonstrated reversible error in the Examiner’s
rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66
(Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring
Appellant(s) to identify the alleged error in the Examiner’s rejection). We
sustain the rejections for the reasons expressed by the Examiner in the Final
Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant argues that there is “no apparent reason to combine the
subject matter” of the applied prior art (Appeal Br. 9). Appellant’s main
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contentions are that (1) inclusion of inorganic filler/silica would have
resulted in a product where the glass substrate may be easily broken (id); (2)
the inclusion of silica would have increased the elastic modulus of the resin
composition which would have been contrary to the desire of Scheel to have
the glass film substantially determine the thermal expansion of the final
laminate (Appeal Br. 10–12); and (3) the Examiner’s conclusion of
obviousness is in error because the Declaration submitted on June 27, 20173
provides an explanation of why combining the silica to Aizawa and Mori
into Scheel’s resin layer(s) would have caused the printed board of Scheel to
break (Appeal Br. 12–14). These arguments are reiterated in the Reply
Brief.4

3 Declaration by co-inventor Yoshihiro Takahashi, signed June 26, 2017.
The arguments in the Appeal Brief generally follow those expressed in this
Declaration.
4 The Reply Brief for the first time alleges that the claimed invention
provides unexpected results (Reply Br. 7– 9). It is inappropriate for
Appellant to discuss for the first time in the Reply Brief matters that could
have been raised in the Appeal Brief. 37 CFR § 41.41(b)(2)(2013).
Nonetheless, Appellant has not shown adequate evidence commensurate in
scope with the claims that the use of e.g., 3% of silica in one out of multiple
unspecified resin layers with a minimal or a substantial thickness of
unspecified glass layer(s) in combination with other layers, as encompassed
by claim 1 and 5, yields any unexpected results. It is well established that
the burden of showing unexpected results rests on the person who asserts
them by establishing that the difference between the claimed invention and
the closest prior art was an unexpected difference. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972). The unexpected results must be established by
factual evidence, and attorney statements are insufficient to establish
unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir.
1997). Further, a showing of unexpected result supported by factual
evidence must be reasonably commensurate in scope with the degree of
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Appellant’s arguments are not persuasive of reversible error for the
reasons presented by the Examiner (Ans. 17–22). Appellant’s arguments
and the Declaration fail to consider the applied prior art as a whole and the
inferences that one of ordinary skill in the art would have made therefrom.
Appellant’s arguments also fail to take into account the breadth of claim 1.
Notably, claim 1 uses the open language “comprises” and does not preclude
the use of additional layers. Claims 1 encompasses any resin containing any
amount of a thermosetting resin and any glass. Claim 1 does not require any
minimum (or maximum) dimensions such as thickness of the resin layer or
the glass layer.
There is no dispute that all three applied references are directed to
laminates useful for a printed circuit board (Appeal Br. 5–7; Scheel
Abstract; Aizawa ¶¶ 1, 2; Mori ¶¶ 1, 13). The Examiner has explained why
the applied prior art provides reasons to include silica filler of the claimed
particle size in a resin layer of a printed circuit board (Final Act. 5, 6; Ans.
5–7).5 As aptly pointed out by the Examiner, Appellant has not provided

protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983).

5 Whether the prior art teaches away from the claimed invention is a
question of fact, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is
well established that a prior art reference must be considered in its entirety,
i.e., as a whole, when determining if it would lead one of ordinary skill in
the art away from the claimed invention. W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill
in the art would have readily appreciated that silica may be used as an
inorganic filler as exemplified in either of Aizawa and Mori for a printed
circuit board resin layer in a resin/glass laminate printed circuit board as
exemplified in Scheel. Cf. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971)
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any factual data in the Declaration or otherwise to support their position that
any amount of silica in one resin layer out of multiple resin layers would
have caused undesirable breakage in Scheel, and certainly have not provided
any data to show than an amount as low as 3% of silica in one resin layer
would have undesirably impacted Scheel’s product.  Attorney's arguments in
a brief, even those paralleling a co-inventor’s argument in a declaration,
cannot take the place of evidence. Cf. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977), cert.
denied, 434 U.S. 854 (1977).
Accordingly, Appellant has not shown reversible error in the
Examiner’s determination that it would have been prima facie obvious to use
at least 3% of silica, as exemplified in Aizawa/Mori, in at least one of the
resin layers of the laminate of Scheel. See also KSR, 550 U.S. at 417 (the
predictable use of known prior art elements or steps performing the same
functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an

(Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or non-preferred embodiments); Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005).
(Even a “statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.”).

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ordinary artisan would employ) (emphasis omitted). Appellant’s arguments
fail to account for “the inferences and creative steps that a person of ordinary
skill in the art would employ.” See KSR, 550 U.S. at 418.
For all the reasons explained by the Examiner and above, we do not
find the Declaration explanation persuasive of reversible error. Cf. Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279,
1284 (Fed. Cir. 2010) (factfinder has discretion to give more weight to one
item of evidence over another “unless no reasonable trier of fact could have
done so”).
Appellant’s remarks with respect to dependent claims 24 and 25 do
not amount to separate arguments because they merely allege that the
applied prior art does not teach or suggest the claims’ limitation of a glass
film (Appeal Br. 14). As such, Appellant’s statements are considered to be
nothing more than general allegations of patentability and are not considered
separate patentability arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”)
Appellant does not provide any further argument in support of
separately rejected claims 21 and 22 (Appeal Br. 16, 17).
Accordingly, we sustain the Examiner’s § 103(a) rejections of all the
claims on appeal.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–10,
17–25
112(a) Written
Description
1–3, 5–10,
17–25
1–3, 5–10,
17–20, 23–25
103 Scheel, Aizawa,
Mori
1–3, 5–10,
17–20, 23–
25

21, 22 103 Scheel, Aizawa,
Mori, Jochyn
21, 22
Overall
Outcome
1–3, 5–10,
17–25

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)(1)(iv).

AFFIRMED