Seigo Yokochi et al.

Patent Trials and Appeals Board

Aug 26, 2019

13981820 - (D) (P.T.A.B. Aug. 26, 2019)

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.
13/981,820 09/06/2013 Seigo Yokochi 20374-134998 5440
42798 7590 08/26/2019
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
CARLSON, KOURTNEY SALZMAN
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
08/26/2019 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 SEIGO YOKOCHI, MASARU FUJITA, and HIROKI HAYASHI
____________

Appeal 2018-009019
Application 13/981,820
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicants1 (“Appellants”) appeal under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 2–6 and 8–18.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Applicants identify “Hitachi Chemical Company, Ltd.” as the real
party in interest (Appeal Brief filed December 14, 2017 (“Appeal Br.”), 1).
2 Appeal Br. 4–15; Reply Brief filed September 17, 2018 (“Reply Br.”), 1–5;
Final Office Action entered October 19, 2016 (“Final Act.”), 4–22;
Examiner’s Answer entered July 17, 2018 (“Ans.”), 3–26.
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I. BACKGROUND
The subject matter on appeal relates to a conductive adhesive
composition (Specification filed July 25, 2013 (“Spec.”), ¶ 1).
Representative claim 15 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
15. A conductive adhesive paste comprising:
conductive particles (A) containing metal having a melting point
of equal to or lower than 210°C; a resin (B) having a softening
point of equal to or lower than the melting point of the metal of
the conductive particles and being solid at a room temperature; a
flux activator (C); and a solvent (D) having a boiling point equal
to or higher than 162°C and equal to or lower than 300°C.
(Appeal Br. 3–4 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) as
follows:
A. Claims 2–6, 8, 15, and 16 as unpatentable over Katsurayama et
al.3 (“Katsurayama”), Bolger,4 and Technical Data Sheet: Dow
BUTYL CELLOSOLVETM Ethylene Glycol Monobutyl Ether
(March 2004) (“Dow”);
B. Claims 9–11, 13, 17, and 18 as unpatentable over Tsunomura et

3 WO 2007/125650 A1, published November 8, 2007. As an English
language translation, the Examiner relies on the corresponding US
publication, namely US 2010/0155964 A1, published June 24, 2010, based
on Application 11/884,491, filed April 24, 2007, which is based on the same
PCT application that published as the applied prior art reference (Ans. 3).
Therefore, our citations to Katsurayama are to the US document.
4 US 5,667,884, issued September 16, 1997.
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al.5 (Tsunomura”), Katsurayama, Bolger, and Dow; and
C. Claims 12 and 14 as unpatentable over Tsunomura,
Katsurayama, Bolger, Shiotsuka et al.6 (“Shiotsuka”), and Dow.
(Ans. 3–26; Final Act. 4–22).
III. DISCUSSION
Although the Appellants provide arguments under different headings,
the arguments are substantially the same for all rejections and claims on
appeal (Appeal Br. 4–15). Therefore, we confine our discussion to claim 15,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv),
and that discussion controls the outcome for all other claims.
The Examiner finds that Katsurayama describes a conductive adhesive
including every limitation recited in claim 15 except it does not explicitly
disclose (i) the adhesive to be in a paste form and (ii) a solvent with “a
boiling point equal to or higher than 162°C and equal to or lower than
300°C” (Ans. 3–4). The Examiner finds further, however, that Bolger
teaches a conductive adhesive paste including, inter alia, a combination of
low and high boiling point solvents such as butyl cellosolve acetate, which is
identified as a suitable solvent in the Appellants’ Specification (Spec. ¶ 72)
and is described in Bolger as providing a “benefit to prevent rapid dry-out
during manufacture” (Ans. 4). Based on these findings, the Examiner
concludes:
[I]t would have been obvious to one of ordinary skill in the
art to utilize the butyl CELLOSOLVE™ solvent as in BOLGER
as a solvent proposed by KATSURAYAMA et al because

5 US 2009/0038675 A1, published February 12, 2009.
6 US 6,175,075 B1, issued January 16, 2001.
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BOLGER discloses the use of the butyl CELLOSOLVE™ to
provide a prevention of rapid dry-out of the paste during
manufacture due to its higher boiling point, which will assist in
processing and achieve greater stability prior to use, as identified
by KATSURAYAMA et al.
(Id. at 5).
The Appellants contend that Katsurayama discloses an adhesive tape,
not a conductive adhesive paste as required by the claims (Appeal Br. 5).
According to the Appellants, Katsurayama “teaches that using an adhesive
paste makes the process troublesome” and, therefore, teaches away from a
conductive adhesive paste as recited in the claims (id. (citing Katsurayama
¶¶ 8–9)). The Appellants also argue that “the tape of Katsurayama . . . is not
disclosed as containing a solvent” because Katsurayama teaches using low
boiling point solvents so that the varnish used to make the tape is easily
dried at a sufficient temperature (id. at 6). The Appellants urge that,
therefore, “one of ordinary skill in the art would not have had any apparent
reason to use a solvent (D) having a boiling point equal to or higher than
162°C and equal to or lower than 300°C in place of the solvents described
Katsurayama” (id.). Regarding Bolger, the Appellants argue that Bolger
teaches highly electrically conductive metal fillers having a high melting
point (over 961°C) and, therefore, “is not concerned with the temperature
when removing solvents,” whereas, in Katsurayama, solder powder having a
low melting point is used and, therefore, the temperature cannot be raised
above the low melting point of the solder powder to remove the high boiling
point solvent such as butyl cellosolve acetate (id. at 7–9).
The Appellants’ arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Katsurayama describes an adhesive tape for forming an electrical
connection between conductive members, wherein the tape contains: a resin
(e.g., a thermosetting epoxy resin such as a liquid epoxy resin); a solder
powder containing a lead-free solder that is preferably an alloy of at least
two metals (e.g., Sn, Ag, Bi, In,7 Zn, and Cu) and has a preferred melting
point of 130°C or higher or, e.g., 250°C or lower; and a curing agent having
flux activity (Katsurayama, ¶¶ 44, 48, 49, 53, 64, 70). Katsurayama teaches
that the tape is produced from a varnish prepared by dissolving the resin,
solder powder, and curing agent having flux activity in an aromatic solvent,
an ester organic solvent, or a ketone organic solvent, and then applying the
varnish on a polyester sheet that is dried at a sufficient temperature to
evaporate the organic solvent (id. ¶ 127 (referring to Tables 1–5)). Thus,
although Katsurayama uses the term “varnish” to describe the adhesive
material, the adhesive material includes the same or similar components as
the Appellants’ claimed “conductive adhesive paste.” Consistent with the
Examiner’s position (Ans. 18), the Appellants do not direct us to sufficient
evidence or technical reasoning establishing that a person having ordinary
skill in the art would not have considered Katsurayama’s “varnish” to be a
“paste” as recited in claim 15.
The main difference, then, between Katsurayama’s adhesive material
and the claimed conductive adhesive paste is that Katsurayama does not
specifically identify a solvent having a boiling point of 162–300°C as a
suitable solvent. Katsurayama, however, does not place any particular
limitation on the solvent (e.g., an ester organic solvent) other than that it

7 Indium has a melting point of 156.6°C. See http://www.rsc.org/periodic-
table/element/49/indium.
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must be capable of being “dried at a sufficient temperature to evaporate”
(Katsurayama ¶ 127).
Bolger describes an adhesive sheet material comprising a multiplicity
of electrically conductive adhesive members, each separated transversely
from each other by a non-conductive adhesive region (Bolger, col. 3, ll. 46–
50). According to Bolger, “the sheet material is produced by forming a
multiplicity of conductive adhesive members on a release film,” which is
“preferably accomplished by passing an electrically conductive adhesive
paste through a screen or stencil or other suitable device to form a desired
pattern” (id. at col. 4, ll. 53–57). Bolger also teaches that the non-volatile
portion of the conductive adhesive members comprises a mixture of
adhesive resins, curing agents, and other additives known to those skilled in
the art of formulating solid adhesives, e.g., adhesive tapes (id. at col. 8, ll.
25–29). Bolger further teaches that “[t]he volatile solvent needs to be easily
removable from the thixotropic paste” but “[h]igher boiling solvents such as
butyl cellosolve acetate may also be added to minimize too rapid dry-out
during manufacture” (id. at col. 11, l.. 18–29).8
Given these teachings in the prior art, we conclude that a person
having ordinary skill in the art would have found it obvious to add a suitable
amount of butyl cellosolve acetate as a high boiling solvent in Katsurayama
with a reasonable expectation of minimizing “too rapid dry-out” during the

8 Butyl cellosolve acetate, which is identified as a suitable solvent in the
Appellants’ Specification (Spec. ¶ 72), has a boiling point of 191.7°C
(http://msdssearch.dow.com/PublishedLiteratureDOWCOM/dh_08ad/0901b
803808ad65d.pdf?filepath=oxysolvents/pdfs/noreg/110-
00974.pdf&fromPage=GetDoc).
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manufacture of Katsurayama’s adhesive tape. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416–17 (2007).
We disagree with the Appellants that a person having ordinary skill in
the art would not have used a high boiling point solvent in Katsurayama in
which, according to the Appellants, low melting point solder powder is used
and “the temperature cannot be raised above the low melting point of the
solder powder” (Appeal Br. 7–8). Katsurayama teaches that the solder
powder may have a melting point preferably higher than 130°C for fully
ensuring flowability and, e.g., lower than 250°C to prevent deterioration in
an element mounted in the bonded material (Katsurayama, ¶ 65). Therefore,
Katsurayama would not have precluded using a high boiling solvent organic
ester solvent such as butyl cellosolve acetate, which has a boiling point of
191.7°C.
We also find no persuasive merit in the Appellants’ argument that
Katsurayama teaches away from a conductive adhesive paste (Appeal Br. 5).
On this point, we are in complete agreement with the Examiner’s position
(Ans. 17–18), which we adopt as our own. As the Examiner finds, we do
not read the background discussion in Katsurayama (Katsurayama, ¶¶ 2–4,
8, 9) as constituting a “teaching away” from formulating a conductive
adhesive paste. Dystar Textilfarben GmbH & Co. Deutschland KG v. C. H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”).
For these reasons and those given by the Examiner, we uphold the
Examiner’s rejections.

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IV. SUMMARY
Rejections A through C are sustained. Therefore, the Examiner’s final
decision to reject claims 2–6 and 8–18 is affirmed.
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