Ex Parte Campbell et al

Patent Trial and Appeal Board

Sep 28, 2016

12979038 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/979,038 12/27/2010 Steven Campbell
66228 7590 09/30/2016
NIXON PEABODY LLP
INTELLECTUAL PROPERTY GROUP- PATENTS
70 WEST MADISON STREET
SUITE 3500
CHICAGO, IL 60602-4224
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
292710-007019 2322
EXAMINER
LA VILLA, MICHAEL EUGENE
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
IPDOCKET@NIXONPEABODY.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN CAMPBELL and JOHN SCOTT
Appeal2014-009042
Application 12/979,038
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009042
Application 12/979,038
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 5, 6, and 15-20. Oral arguments were waived in this appeal on September
6, 2016. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' claimed invention is directed to a wire with a channel
formed in it in which a flux solution is deposited therein for use in joining
two similar or dissimilar metals in industrial applications (Spec. i-f 2; Fig. 5).
Claim 1 is illustrative:
1. A wire for use in a brazing or soldering operation, the wire
compnsmg:
an elongated wire of a metallic material reformed into a ring having a
substantially C-shaped cross-sectional shape;
a channel having an opening formed along an inner wall of the ring,
the opening having a width of about 30% to 70% of a major axis of a cross-
section of a starting diameter of the elongated wire;
a cured flux solution formed by curing a flux solution comprising a
polymer-based binder material and a flux material within the channel with a
surface of the cured flux solution being exposed through the opening in the
channel wherein the cured flux solution within the channel forms a portion
of the inner wall of the ring.
Appellants appeal the following rejections:
1. Claims 1, 5, 6, 15, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Norton et al. (US 400,869, issued Apr. 2, 1889)
("Norton") in view of Lack et al. (US 6,264,062 Bl, issued July 24,
2001) ("Lack") and Seseke-Koyro et al. (US 6,432,221 Bl, issued
Aug. 13, 2002) ("Seseke-Koyro").
2. Claims 1, 5, 6, 15, and 18-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Norton in view of Seseke-Koyro.
2
Appeal2014-009042
Application 12/979,038
3. Claims 1, 5, 6, and 15-20 are rejected on the ground ofnonstatutory
obviousness-type double patenting as unpatentable over claims 1-7
and 10-17 of copending US Patent Application No. 12/176, 126 (now
US Patent 8,274,014 issued Sept. 25, 2012).
4. Claims 1, 5, 6, and 15-20 are rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-14
of US Patent No. 7,858,204.
5. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Norton in view of Seseke-Koyro and Gagnon Jr. (US 2007/0251602
published Nov. 1, 2007).
6. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Norton in view of Lack, Seseke-Koyro and Gagnon Jr.
7. Claims 17 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Norton in view of Seseke-Koyro and Jossick (US
5, 781,846 issued Jul. 14, 1998).
8. Claims 17 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Norton in view of Lack, Seseke-Koyro and Jossick.
Regarding rejections (1) and (2), Appellants argue claim 1 only (Br.
5---6). Appellants' arguments regarding rejection (2) are the same as those
made regarding the combination of Norton and Seseke-Koyro with regard to
claim 1. Therefore, the claims under rejection (2) will stand or fall with our
analysis of the rejection of claim 1 under rejection (1 ).
Although Appellants list rejections (3) to (8) in the Status of Claims
section of the Brief, Appellants provide no argument against these rejections
(Br. 2-3, 5---6). Rather, Appellants only list rejections (1) and (2) as being
3
Appeal2014-009042
Application 12/979,038
appealed (Br. 4). Appellants, however, do argue that the rejection of claim
16 should be reversed in their listing of the claims (i.e., 1, 5, 6, and 15-20)
along with the statement that the listed claims should be allowed (Br. 6).
Because Appellants provide no argument regarding rejections ( 4) to (8)
separate from the arguments made regarding claim 1, we decide these
rejections on the basis of argued claim 1.
Regarding rejection (3), we note that US Patent Application
12/176, 126 has since issued as US Patent 8,274,014. Because the scope of
the claims in the issued patent may be different than the claims in the
application used in the provisional obviousness-type double patenting
rejection, we decline to reach the merits of rejection (3). We leave it to the
Examiner to determine the propriety of the rejection upon return of
jurisdiction to the Examiner. Ex parte Jerg, 2012 WL 1375142, *3 (BPAI
2012) (informative) ("Panels have the flexibility to reach or not reach
provisional obviousness-type double-patenting rejections.").
FINDINGS OF FACT & ANALYSIS
Appellants argue that Norton fails to teach a wire formed into a ring
wherein the ring has a channel having an opening that has a width of about
30% to 70% of a major axis of a cross-section of starting diameter of the
elongated wire (Br. 5). Appellants contend that Norton's opening in the
channel formed in the wire is very small. Id. Appellants argue that Norton
does not use a cured flux solution as claimed. Id. Appellants argue that
Lack does not teach wire formed into a ring and does not teach cured flux
solution. Id. Appellants argue that Seseke-Koyro fails to teach the
4
Appeal2014-009042
Application 12/979,038
advantage of cured flux solution and instead teaches electrostatic spraying
the flux solution onto aluminum components. Id.
Appellants' arguments are not persuasive because they improperly
attack the references individually instead of addressing what the combined
teachings would have suggested to the ordinarily skilled artisan. Norton
teaches forming a channel in the solder wire and filling the channel with flux
material (Norton 1: 18--45). The flux may be in powder or liquid form
(Norton 1 :41--42). The channel opening is then either fully or partially
closed (Norton 1 :26-28). Norton teaches that the channel size depends on
the size of the solder wire and the kind of fluxing material employed (Norton
1 :84--87). The Examiner finds that Norton teaches that fully closing the
channel opening is preferred when a powdered flux is used because the
powdered form is harder to retain (Ans. 7). The Examiner finds that Norton
impliedly teaches that more easily retained fluxing materials would require
less closure of the channel opening. Id. In other words, the Examiner finds
that Norton would have suggested leaving the channel opening unsealed to
an extent of about 30% to 70% when the flux is easily retained.
Claim 1 recites "a channel having an opening formed along an inner
wall of the ring, the opening having a width of about 30% to 70% of a major
axis of a cross-section of a starting diameter of the elongated wire"
(emphasis added). The Examiner construes this claim language as merely
requiring that the channel opening has width of about 30% to 70% for the
initial diameter of a cross-section of the wire before any further processing
or shaping (Ans. 8). The Examiner finds that the claim places no restrictions
on the transformations that may occur between the starting diameter of the
wire and the wire which forms the claimed article. Id. In other words, it
5
Appeal2014-009042
Application 12/979,038
would have been obvious to have Norton's channel opening in the starting
wire be about 30% to 70% as depicted in Figure 2 depending upon the flux
material and size of the wire. Indeed, Norton's channel opening may be
sized depending on the type of flux used and the size of the wire (Norton
1 :84--87). Appellants do not respond specifically to these findings and
conclusions of the Examiner regarding Norton.
Regarding Lack, the Examiner finds that Lack is not limited to stamp
forming the ring structure (Ans. 9). The Examiner finds that Lack teaches to
use extrusion, grooving or cutting processes as does Norton. Id. The
Examiner finds that Lack discloses embodiments where a solder wire similar
to Norton is shaped into a ring (Ans. 10). The Examiner finds that Lack
discloses a Figure 4A embodiment where the flux is exposed along an inner
edge of the ring. Id. The Examiner concludes that it would have been
obvious to form the wire of Norton as a ring in light of Lack's teachings
since Norton and Lack teach similar solder wire that can be formed into
rings with the flux opening on the inner surface of the ring for soldering a
structure where such a solder arrangement is desirable. Id. Appellants do
not respond to or show reversible error with these specific findings or
conclusions of the Examiner (Br. 5).
Appellants argue that Seseke-Koyro fails to teach the advantage of a
cured flux solution within a channel (Br. 5). Appellants contend that
Seseke-Koyro teaches electrostatic spraying the fluxing agent or application
of an aqueous or organic suspension or a paste which is not a cured flux
within a channel (Br. 5).
Appellants fail to address the Examiner's stated rejection in which the
Examiner concludes that it would have been obvious to use the paste form of
6
Appeal2014-009042
Application 12/979,038
Seseke-Koyro's flux as the flux material in Norton's solder wire because
Norton teaches that any flux may be used (Ans. 11 ). Therefore, the
combination ofNorton's and Seseke-Koyro's teachings would have
suggested using Seseke-Koyro's cured flux solution in Norton's channel in
the solder wire. The Examiner finds that "cured" in the context of the phrase
"cured flux solution" includes drying the flux solution as described by
Appellants in i-f 58 of the Specification (Ans. 9). Appellants do not dispute
this interpretation of the Examiner. We note that the Examiner makes
additional findings that Seseke-Koyro's flux includes acrylic polymers (i.e.,
methacrylates) in the flux, which are disclosed by Appellants as suitable
polymers for use in the flux solution (Spec. i-f 53). In other words, Seseke-
Koyro teaches similar materials in the flux solution as disclosed by
Appellants so that it is reasonable to find that the flux solution would cure as
required by the claims.
On this record, we affirm the Examiner's§ 103 rejections over Norton
in view of Seseke-Koyro and Lack and over Norton in view of Seseke-
Koyro alone. Accordingly, we affirm all of the Examiner's decisions
rejecting all claims in rejections (1 ), (2), and ( 4) to (8).
DECISION
The Examiner's decision 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)(l).
ORDER
AFFIRMED
7