NGK Insulators, Ltd.Download PDFPatent Trials and Appeals BoardDec 18, 20202020001164 (P.T.A.B. Dec. 18, 2020) Copy Citation 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. 14/195,087 03/03/2014 Kazuma OHBA 947_135 1053 25191 7590 12/18/2020 BURR & BROWN, PLLC PO BOX 869 FAYETTEVILLE, NY 13066 EXAMINER SHOSHO, CALLIE E ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 12/18/2020 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): tpreston@burrandbrown.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUMA OHBA, TETSUYA KAWAJIRI, and TAKASHI KATAIGI Appeal 2020-001164 Application 14/195,087 Technology Center 1700 Before ERIC B. GRIMES, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, and 4–9. See Final Act. 3, 8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “NGK Insulators, LTD.” Appeal Br. 1. Appeal 2020-001164 Application 14/195,087 2 CLAIMED SUBJECT MATTER “The present invention relates to a member for semiconductor manufacturing apparatuses.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A member for semiconductor manufacturing apparatuses, comprising a ceramic component and a metal component bonded together with a thermosetting sheet, wherein the thermosetting sheet is made of a cured epoxy- acrylic adhesive, the cured epoxy-acrylic adhesive contains (A) an epoxy resin capable of hydrogen transfer polyaddition, (B) an acrylic rubber selected from the group consisting of acrylic rubbers having an epoxy group mainly composed of an alkyl acrylate or an alkyl methacrylate and acrylic rubbers having a carboxy group mainly composed of alkyl acrylate or alkyl methacrylate, and (C) a curing agent, and an amount of the epoxy resin is 4.75 to 36 times greater than an amount of the curing agent, and wherein the cured epoxy-acrylic adhesive, after bonding of the ceramic component and the metal component, has a shear strength of 0.3 MPa or more, a shear strain of 1.4 or more, and a shear elastic modulus Z in a range of 0.048 ≤ Z ≤ 2.350 before and after a thermal history of 150°C for 1000 hours. Claims Appendix (Appeal Br. 14). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Hinterwaldner US 6,720,072 B1 Apr. 13, 2004 Hong US 2009/0162650 A1 June 25, 2009 Yoshioka US 2010/0177455 A1 July 15, 2010 Kawaminami (as translated) JP 10-270540 A Oct. 9, 1998 Appeal 2020-001164 Application 14/195,087 3 REJECTIONS Claims 1, 2, and 4–8 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoshioka in view of Hong, taken in view of evidence by Hinterwaldner. Final Act. 3. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Yoshioka in view of Hong, and further in view of Kawaminami. Final Act. 8. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 12 In rejecting claim 1, the Examiner finds that Yoshioka teaches all recited limitations except “an amount of the epoxy resin is 4.75 to 36 times 2 Appellant argues for the patentability of claims 1, 2, and 4–9 as a group with claim 1 being the representative claim. See Appeal Br. 5–13. These claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appeal 2020-001164 Application 14/195,087 4 greater than an amount of the curing agent” which is taught by Hong. Final Act. 3–4; Ans. 13. More specifically, Hong teaches that the prior art “composition may include . . . about 3 to about 40 wt. % of the epoxy resin, about 3 to about 25 wt. % of the phenolic curing resin.” Hong ¶ 19 (cited in Final Act. 6); see also Hong ¶ 49. Based on Hong’s teaching, the Examiner calculates that the prior art epoxy to curing agent is between 0.12 (3/25) and 13.3 (40/3) which overlaps the recited weight range. Final Act. 6. Appellant does not dispute the Examiner’s findings based on Yoshioka but argues that a skilled artisan would have had no reason to look to Hong because “the adhesive composition of Hong . . . is merely used to bond a miniature semiconductor device to a semiconductor assembly in a non-corrosive environment” and there is no teaching that Hong’s composition “would have been able to withstand the corrosion by the plasma to which the adhesive of the electrostatic chuck disclosed in Yoshioka is exposed when processing a semiconductor wafer.” Appeal Br. 6. We are not persuaded by this argument because it does not address the Examiner’s articulated reasoning which is supported by rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner explains that a skilled artisan would have found it obvious to use the acrylic rubber, the epoxy resin and the phenol hardening agent of Yoshioka with the amounts taught by Hong, in order to sufficiently impart strength to the adhesive, to make the adhesive easy to handle and allowing for the formation of the adhesive with proper adhesive strength, to provide sufficient curability and adhesiveness, to ensure good adhesiveness and curability of the adhesive in the adhesive of Yoshioka[.] Final Act. 5–6. Moreover, Appellant’s argument — directed to certain applications of the prior art composition — is not persuasive because it is Appeal 2020-001164 Application 14/195,087 5 incommensurate in scope with the apparatus claim. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”). Appellant’s argument that the Examiner erred in combining Hong and Yoshioka because Hong’s composition includes a certain amount of silsesquioxane oligomer is not persuasive for multiple reasons. Appeal Br. 6. First and foremost, Appellant’s argument is unpersuasive because it does not address the Examiner’s obviousness analysis which is based on the combined teaching of “the acrylic rubber, the epoxy resin and the phenol hardening agent of Yoshioka” and the amount of epoxy resin taught in Hong. Final Act. 5. In an obviousness analysis based on multiple references, all of the features of one reference need not be bodily incorporated into the other references and the skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Appellant’s argument is unpersuasive also because it does not explain why claim 1 — reciting an apparatus “comprising . . . a cured epoxy-acrylic adhesive” — excludes additional compounds such as silsesquioxane oligomer. See AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1244 (Fed. Cir. 2001) (“When a claim uses an ‘open’ transition phrase, its scope may cover devices that employ additional, unrecited elements.”). Appellant’s argument therefore fails to identify reversible error in the Examiner’s fact findings in support of the rejection. Frye, 94 USPQ2d at 1075 (“Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, Appeal 2020-001164 Application 14/195,087 6 unilaterally review those uncontested aspects of the rejection.”) (cited with approval in Jung, 637 F.3d at 1365 (holding that “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). For these reasons, the Declaration submitted by co-inventor Mr. Kazuma Ohba on April 23, 2018 (“Ohba Declaration” or “Ohba Decl.”) is unpersuasive for failure to identify reversible error. More specifically, Mr. Ohba’s statements that “it is necessary for [Hong’s] adhesive composition to include 0.01 to 3 wt% of an silsesquioxane oligomer” “in order for the adhesive composition to have high strength and reliability” and such silsesquioxane oligomer compositions “are more easily corroded” in certain environments (Ohba Decl. ¶¶ 7, 8; see also id. ¶ 12) bodily incorporate features of the prior art compositions and do not address the Examiner’s obviousness analysis. Phrases such as “high strength and reliability” and “easily corroded” are unspecific and are incommensurate in scope with the apparatus claim. Id. The statement that “[m]odifying the adhesive of Yoshioka based on the teachings of Hong would require the adhesive composition to contain 0.01 to 3 wt% of silsesquioxane oligomer, which would result in reduced plasma resistance and corrosion resistance of the modified adhesive of Yoshioka” (id. ¶ 9) is incommensurate in scope with the apparatus claim which does not recite a specific plasma resistance and corrosion resistance. Likewise, Mr. Ohba’s experiment with “two different silicone resins having a structure similar to the silsesquioxane oligomer disclosed in Hong and the claimed adhesive composition” showing “that the adhesives containing a silicone based resin have a larger weight loss as compared to the claimed adhesive” (id. ¶ 13) is unpersuasive for the same reasons. Moreover, we note that it is unclear what “a structure similar to the Appeal 2020-001164 Application 14/195,087 7 silsesquioxane oligomer” might be and how that is different from the prior art composition. We further note that although Appellant argues that the results shown in Figs. 2-5 of Hong clearly demonstrate that there would have been no reason for a person of ordinary skill in the art to have considered modifying the adhesive disclosed in Yoshioka based on only the amounts of epoxy resin, acrylic adhesive and curing agent included in the adhesive composition of Hong, but then decide to omit the silsesquioxane oligomer from the adhesive composition, as asserted by the Examiner. (Appeal Br. 8), Mr. Ohba does not address Figures 2–5 of Hong and therefore does not support Appellant’s argument. See Ohba Decl. Appellant’s argument is therefore unpersuasive for lack of evidentiary support. Appellant next argues that the Examiner reversibly erred in finding that Hong teaches or suggests the recited “amount of the epoxy resin is 4.75 to 36 times greater than an amount of the curing agent.” Appeal Br. 9. Appellant acknowledges that “Hong discloses the amounts of epoxy resin and curing agent in the adhesive composition as weight %” but argues that “Hong discloses that the amount of epoxy resin and curing agent included in the adhesive composition is in the range of from 0.6:1 to 1.6:1 based on the ratio between the epoxy equivalent weight of the epoxy resin and the hydroxyl equivalent weight of the curing agent.” Appeal Br. 8–9. Appellant’s argument is not persuasive because it does not address — and therefore does not dispute — the Examiner’s findings based on paragraphs 19 and 49 of Hong. Compare id., with Final Act. 6 (citing Hong ¶¶ 19, 49). Appeal 2020-001164 Application 14/195,087 8 Mr. Ohba likewise does not address these portions of Hong. Ohba Decl. ¶¶ 5, 7 (discussing Hong ¶¶ 8, 9, 15, 20, 21, 45, 69 of Hong only). Nor does Mr. Ohba address the Examiner’s findings in support of the rejection. More specifically, the Examiner finds that Hong teaches or suggests an overlapping weight ratio of epoxy resin and curing agent between 0.12 and 13.3. Final Act. 6. Mr. Ohba states only: there is nothing to teach or suggest that an adhesive composition having a ratio of epoxy equivalent weight of the epoxy resin to hydroxyl equivalent weight of the phenolic curing resin of 0.6:1 to about 1.6:1 would have resulted in the amount of epoxy resin being 4.75 to 36 times greater than the amount of phenolic curing resin in the adhesive composition. Ohba Decl. ¶ 6. Mr. Obha, however, does not address and therefore does not dispute the Examiner’s finding of the overlapping range. Because that finding is reasonable and the Appellant has not challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). In any event, Hong discloses no more than that “[i]t is preferable that the ratio of the epoxy equivalent weight of the epoxy resin to the hydroxyl equivalent weight of the phenolic curing resin is about 0.6:1 to about 1.6:1 (epoxy equivalent weight of the epoxy resin:hydroxyl equivalent weight of the phenolic curing resin).” Hong ¶ 69. Hong provides that such preferred embodiments are “not for purpose of limitation.” Id. ¶ 107. Appellant does not sufficiently explain why Hong’s teachings in paragraphs 19 and 49 should be ignored based on certain non-limiting embodiments in Hong. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (holding that when Appeal 2020-001164 Application 14/195,087 9 determining obviousness, “the prior art as a whole must be considered”). No reversible error has been identified in the Examiner’s findings here. Appellant’s argument that the Examiner engaged in impermissible hindsight (Appeal Br. 12) is unpersuasive because Appellant does not show that the rejection is based on “knowledge taught only by the inventor of the challenged patent.” See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant’s argument that “Appellant disagrees with” (Appeal Br. 12) the Examiner (i.e., the inclusion of silsesquioxane oligomer) is not based on the Examiner’s analysis and does not identify error in the Examiner’s fact findings in support of the rejection for the reasons provided supra. CONCLUSION The Examiner’s rejections are affirmed. Appeal 2020-001164 Application 14/195,087 10 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–8 103 Yoshioka, Hong, Hinterwaldner 1, 2, 4–8 9 103 Yoshioka, Hong, Kawaminami 9 Overall Outcome 1, 2, 4–9 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). AFFIRMED Copy with citationCopy as parenthetical citation