The Boeing Company

Patent Trials and Appeals Board

Jun 11, 2020

2019004086 (P.T.A.B. Jun. 11, 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.
14/938,444 11/11/2015 Jonathan B. Vance 10-0567-US-DIV2 1038
67059 7590 06/11/2020
Felix L. Fischer-The Boeing Company
C/O Felix L. Fischer, Attorney at Law
4525 Holman St.
Golden, CO 80403
EXAMINER
PAGHADAL, PARESH H
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
felixfischer@fischeriplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN B. VANCE

Appeal 2019-004086
Application 14/938,444
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, and 10–14. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 The Boeing
Company. Appeal Br. 3.
Appeal 2019-004086
Application 14/938,444

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Appellant’s invention is directed to electronic circuits including
deposited dielectric and conductive materials in combination with microwire
conductors (Spec. ¶ 2; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A microwire circuit comprising:
a first dielectric layer printed as a first stripe shape on a
substrate using a first printing engine;
a drawn microwire trace positioned on the first dielectric
layer by a microwire spooling machine connected to track the
first printing engine and incorporating a tension guide to
position the microwire trace onto the first dielectric layer while
still tacky from printing to provide an adhesive effect in
constraining the microwire trace; and,
a second dielectric layer printed as a plurality of second
stripe portions using a second printing engine connected to
track the microwire spooling machine to interruptibly deposit
the second dielectric layer over the drawn microwire trace.

Appellant appeals the following rejections:
1. Claims 1–3, 6, 8, and 11–14 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Casey ‘693 (US 2005/0156693
A1, published July 21, 2005) in view of Casey ‘841 (US
2004/0258841 A1, published Dec. 23, 2004), Tanaka (US
2001/0040490 A1, published Nov. 15, 2001), Chen (US
8,236,154 B2, issued Aug. 7, 2012), and Erika (US
2008/0099759 A1, published May 1, 2008).
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Casey ‘693, in view of Casey ‘841, Tanaka, Chen, Erika
and Conlon (US 5,035,939 July 30, 1991).
3. Claims 5 and 10 are rejected under 35 U.S.C. § 103(a) as
Appeal 2019-004086
Application 14/938,444

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unpatentable over Casey ‘693, in view of Casey ‘841, Tanaka,
Chen, Erika, and Deckelmann (US 4,689,270, issued Aug. 25,
1987).
FINDINGS OF FACT & ANALYSIS
Rejections (1)
Claim 1 recites in relevant part “a drawn microwire trace positioned
on the first dielectric layer by a microwire spooling machine. . . .”
The Examiner finds that Casey ‘693 teaches the subject matter of
claim 1 including a drawn microwire trace referring to reference numbers
204 and 206 (Final Act. 2). The Examiner determines that no patentable
weight should be given to, inter alia, the use of a first printing engine or
microwire spooling machine (Final Act. 3). The Examiner determines that
the process limitations do not patentably distinguish the resulting product
from the product taught or suggested by the applied prior art (Final Act. 3).
The Examiner finds that the combined teachings of Casey ‘693, Casey ‘841,
Tanaka, Chen, and Erika would have suggested a microwire circuit having
the same structure as required by claim 1 (Final Act. 3-4; Ans. 5). The
Examiner determines that claim 1 does not recite specific structure and
material(s) (Ans. 6). The Examiner finds that a structure such as “a
microwire trace positioned on the first dielectric layer” can be made by
different, well-known processes such as screen printing, stencil printing,
coating, spraying, deposition of conductor, or track etc. (Ans. 7).
Appellant argues that none of the applied prior art teaches a drawn
microwire trace or the ability to create a functional circuit with a drawn
microwire trace by any process (Appeal Br. 7). Appellant contends that the
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Application 14/938,444

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drawn microwire trace has a specific structural connotation wherein the
drawn microwire is adhesively constrained in the dielectric layers (Appeal
Br. 8). Appellant argues that the structural limitation would not be possible
without the specific process limitations of the claims where the microwire is
positioned on the dielectric layer while the dielectric layer is still tacky from
printing (Appeal Br. 8). We agree.
Product-by-process claims are generally not limited by the process
used to make the product. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
However, the structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims over the prior
art where the manufacturing process steps would be expected to impart
distinctive structural characteristics to the final product. See, e.g., In re
Garnero, 412 F.2d 276, 279 (CCPA 1969).
Claim 1 requires a “drawn microwire trace positioned on the first
dielectric layer by a microwire spooling machine . . . .” Appellant describes
the microwire as including a copper wire (Spec. ¶ 13). The copper wire, as
shown in Appellant’s Figures 1 and 3, is a metal wire 18 on a spool that is
applied to the tacky dielectric layer 12 (Spec. ¶ 15). Appellant contrasts the
resistance properties of a copper metal wire with a printed on silver layer
(Spec. ¶ 13). Appellant states that the printed on silver layer has a much
higher resistance (1kOhm) as compared to the copper wire (i.e., 2 Ohms)
(Spec. ¶ 13). The recitation in claim 1 that a spooling machine is used to
apply the microwire implies that a solid microwire is wound around the
spool and applied to the dielectric layer. We construe claim 1 as requiring a
structure where the microwire trace is a solid metal microwire.
Appeal 2019-004086
Application 14/938,444

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In light of our construction, the Examiner has not established that
structure taught or suggested by the combined teachings of Casey ‘693,
Casey ‘841, Tanaka, Chen, and Erika would have included a solid metal
microwire. Casey ‘693 teaches that the conductors 204 and 206 are formed
of conductive paste (¶ 24). Casey ‘841 discloses that the conductor may be
formed as disclosed in another application of Casey (i.e., US 2004/0256350
A1) (¶ 22). Casey ‘350 discloses using a paste (e.g., DuPont QG150 as
taught by Casey ‘693 in paragraph 24) to form the conductors (¶¶ 14, 17).
Although the Examiner finds that Tanaka’s electrode 22c is a drawn
microwire trace, Tanaka is silent about how the strip line electrodes are
formed (Final Act. 5, Tanaka generally). The Examiner has not established
that Tanaka teaches or would have suggested a circuit that includes a drawn
microwire as a recited in claim 1. Chen teaches an electrode formed by
coating, which the Examiner does not explain why that should be considered
a drawn microwire made of metal, such as copper (Final Act. 5; Chen col. 4,
ll. 64–67, col. 5, ll. 52–56). The Examiner does not rely on Erika to teach a
drawn microwire (Final Act. 6).
Each of the applied references either teaches using a paste to form the
electrodes or is silent as to how the electrodes are formed. In light of our
claim construction above, we find that the Examiner has not established that
the applied prior art would have suggested a microwire circuit having a
drawn, solid metal microwire as required by claim 1. The structure in the
applied prior art has not been shown to be the same as that required by claim
1. On this record, we reverse the Examiner’s § 103(a) rejection over Casey
‘693 in view of Casey ‘841, Tanaka, Chen, and Erika. For the same reasons,
we reverse the § 103 rejections of dependent claims 4, 5, and 10 over the
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Application 14/938,444

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combined teachings of Casey ‘693, Casey ‘841, Tanaka, Chen, and Erika
and further in view of either Conlon or Deckelmann.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–3, 6, 8, 11–14 103 Casey ‘693,
Casey ‘841,
Tanaka,
Chen, Erika
1–3, 6, 8, 11–
14
4 103 Casey ‘693,
Casey ‘841,
Tanaka,
Chen, Erika,
Conlon
4
5, 10 103 Casey ‘693,
Casey ‘841,
Tanaka,
Chen, Erika,
Deckelmann
5, 10
Overall
Outcome
1–6, 8, 10–14

REVERSED