Dylan J. Boday et al.

Patent Trials and Appeals Board

Nov 6, 2019

14871870 - (D) (P.T.A.B. Nov. 6, 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.
14/871,870 09/30/2015 Dylan J. Boday ROC920130124US2 1032
104161 7590 11/06/2019
Matthew J. Bussan
1048 Dove Way
Cary, IL 60013-6092
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
11/06/2019 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 DYLAN J. BODAY, JOSEPH KUCZYNSKI, JASON T. WERTZ,
and JING ZHANG
____________

Appeal 2019-002484
Application 14/871,870
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 19 and 20. (Appeal Br. 11.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We REVERSE.

1 This Decision includes citations to the following documents:
Specification filed September 30, 2015 (“Spec.”); Final Office Action
mailed April 17, 2018 (“Final Act.”); Appeal Brief filed September 17, 2018
(“Appeal Br.”); Examiner’s Answer mailed December 4, 2018 (“Ans.”); and
Reply Brief filed February 4, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
International Business Machines Corporation. (Appeal Br. 3.)
Appeal 2019-002484
Application 14/871,870

2
RELATED CASE
Appellant identifies Appeal No. 2018-004771 (Application Serial No.
14/156,635) as being related to the instant appeal. (Appeal Br. 4.)
According to the Specification, the instant application is a continuation of
Application 14/156,635. (Spec. ¶ 1.) A decision in Appeal No. 2018-
004771 was mailed on April 26, 2019, in which the Board reversed the
Examiner’s rejection of the claims.

THE INVENTION
Appellant states the invention relates to a polymer conformal coating
composition containing metal particles providing corrosion protection for
metal surfaces against corrosion by environmental sulfur components.
(Spec., ¶ 2.)
Claim 19 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
19. An apparatus, comprising:
a substrate;
an electronic component mounted on the substrate;
metal conductors electrically connecting the electronic
component; and
a conformal coating overlying the metal conductors and the
substrate, wherein the conformal coating comprises a polymer and
metal nanoparticles blended with the polymer, wherein the metal
nanoparticles have an average diameter within a range of 5 nm to
200 nm, and wherein the concentration of the metal nanoparticles
in the conformal coating is approximately 5 wt% of the conformal
coating and provides a level of electrical conduction sufficiently
below the electric conducting percolation threshold to avoid
shorting of the electronic component and the substrate.
(Appeal Br. (Claims Appendix) 23.)
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Application 14/871,870

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Claim 20 is also independent and recites an apparatus comprising a
conformal coating including metal nanoparticles, where the metal
nanoparticles are copper nanoparticles having a diameter of approximately
100 nm. (Id. at 24.)

REJECTION
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103 as
obvious over Boday et al. (US 2011/0189381 A1, published August 4, 2011,
hereinafter “Boday”), Virtanen et al. (US 2013/0048917 A1, published
February 28, 2013, hereinafter “Virtanen”), and Horikoshi et al. (US
2004/0242762 A1, published December 2, 2004, hereinafter “Horikoshi
’762”). (Ans. 3–5.)
We limit our discussion to independent claim 19, which is sufficient
for disposition of this appeal.

ISSUE
The Examiner found Boday discloses an apparatus including a
substrate, an electronic component mounted on the substrate, metal
conductors electrically connecting the electronic component, and a
conformal coating overlying the metal conductors and the substrate. (Ans.
3, citing Boday, ¶ 23.) The Examiner found Boday fails to disclose a
conformal coating including a polymer and metal nanoparticles blended with
the polymer. (Id.) The Examiner found Virtanen discloses a flowable
material formed into a coating composition, where metal nanoparticles in an
amount of 0.00001% by weight to about 95% by weight are blended with the
polymer and provide anticorrosion properties for metal. (Id. at 3–4, citing
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Application 14/871,870

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Virtanen, ¶¶ 36, 37, 46, 49, and 50.3) The Examiner determined it would
have been obvious to include a polymer and metal nanoparticles, including
the amount and types of metal nanoparticles presently claimed blended in
the conformal coating of Boday in order to provide anticorrosion properties
for metal. (Id. at 4.) In this regard, the Examiner stated that because the
claimed range overlaps or is inside ranges disclosed by the prior art, a prima
facie case of obviousness exists. (Id. citing MPEP 2144.05, In re Wertheim,
541 F.2d 257 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).
The Examiner cited Horikoshi ’762 for teaching a room temperature
vulcanizable silicone rubber composition and copper metal nanoparticles.
(Id.) The Examiner stated that because Boday in view of Virtanen and
Horikoshi ’762 discloses “polymer and type and amount of metal
nanoparticles identical to that presently claimed, it is clear that the
concentration of the metal nanoparticles in the conformal coating
intrinsically provides a level of electrical conduction as presently claimed,
absent evidence to the contrary.” (Id. at 5.)
Appellant argues the Examiner has not considered the conformal
coating recited in the claims and in Boday must be non-conductive to avoid
shorting the underlying electronic component and substrate in applying the
prior art cited in the rejection. (Appeal Br. 12–13.) In particular, Appellant
argues Virtanen discloses compositions without a requirement for electrical
insulation and discloses carbonaceous material and other additives for

3 The Examiner erroneously cited Virtanen, paragraph 13 for the amount of
metal nanoparticles in the coating composition. (Ans. 3–4.) However, we
find this error to be harmless as the Examiner cites also to paragraph 46 of
Virtanen, which discloses the amounts of metal nanoparticle referred to by
the Examiner.
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Application 14/871,870

5
providing electrical conductivity between the metal particles and underlying
metal substrate. (Id. at 13, 16–17.) As a result, Appellant argues the
conductive nature of the coating composition disclosed in Virtanen would
not have led one of ordinary skill in the art to have applied Virtanen’s
teachings to Boday, even though both references are drawn to anti-corrosion
coating compositions. (Id. at 14–15.) Appellant argues Horikoshi ’762
discloses metal powder in applications where electrical insulation is not
required such that one of ordinary skill in the art would not have used metal
powder in the amount recited in claim 19 in the conformal coating disclosed
in Boday in view of the totality of evidence on the record, because one of
ordinary skill in the art would not have wanted to make the conformal
coating conductive. (Id. at 15, 18–21.)
Accordingly, the dispositive issue with respect to this rejection is:
Has Appellant identified a reversible error in the Examiner’s
determination that it would have been obvious to have included metal
nanoparticles in amount of approximately 5 wt% of the conformal coating as
recited in claim 19 in Boday view of the evidence of record?

DISCUSSION
We have considered the evidence of record and agree with Appellant,
that when viewed as a whole, there is insufficient support for the Examiner’s
position that including a conformal coating with metal nanoparticles in the
amounts as claimed would have been obvious. In this regard, although we
agree with the Examiner that Boday does not expressly disclose
nonconductive coatings (Ans. 6), Boday discloses an apparatus having an
electronic component mounted to a substrate with metal conductors
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electrically connecting the electronic component and a conformal coating
overlying a metal conductor. (Boday, ¶ 23.) Boday discloses the addition of
a phosphine compound to the conformal coating, which reacts with any
corrosion inducing sulfur component in the air and prevents the sulfur
component from reacting with the underlying metal conductors. (Id. at
¶ 15.) As pointed out by Appellant, Horikoshi ’762 discloses that in
electrically insulating compositions, metal oxides are used for heat
dissipation, and that when electrical insulation is not required metal powders
such as silver or gold may be used. (Horikoshi ’762, ¶¶ 3, 4.) Although the
Examiner responds that Horikoshi ’762 is used only for the concept of room
temperature-vulcanizable (RTV) silicones and that claims 19 and 20 only
broadly recite a polymer (Ans. 7–8), Horikoshi ’762 is of record and part of
the rejection on appeal. Horikoshi ’762 provides support for Appellant’s
position that one of ordinary skill in the art would not have added metal
powders to conformal coatings in the amount of approximately 5% by
weight for corrosion control in electronic parts. Although also directed to
corrosion protection, Virtanen is mainly concerned with corrosion of iron
due to oxidation to form rust. (Virtanen, ¶¶ 5, 6.) In addition, Virtanen is
focused on preventing a decrease in electrical conductivity of iron or other
metal substrates. (Virtanen ¶¶ 6, 37, 53.)
Thus, while the Examiner relies on corrosion resistance as motivating
the combination, without regard to whether the disclosed coatings of Boday
and Virtanen are conductive or not, the Examiner’s reasoning overlooking
the characteristic conductivity of the references falls short where both claims
are directed to an apparatus including “a conformal coating overlying . . .
metal conductors [connecting an electronic component mounted on a
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Application 14/871,870

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substrate] and the substrate.” Accordingly, we are persuaded that one of
ordinary skill in the art would not have had a sufficient reason to employ
metal nanoparticles in an amount of 5% by weight in a conformal coating as
recited in claim 19 in order to overlay metal conductors as disclosed in
Boday when the evidence of record is viewed as a whole.
In sum, we reverse the Examiner’s rejection of claims 19 and 20.

CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
19, 20 103 Boday,
Virtanen,
Horikoshi
’762
19, 20

REVERSED