Ex Parte Coomer

Board of Patent Appeals and Interferences

Sep 26, 2007

10335187 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BOYD L. COOMER
____________

Appeal 2007-2047
Application 10/335,187
Technology Center 1700
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Decided: September 26, 2007
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1)
(2006) is made for further consideration of a rejection. Accordingly,
37 C.F.R. § 41.50(a)(2) applies if a Supplemental Examiner’s Answer is
written in response to this remand by the Board.
Appeal 2007-2047
Application 10/335,187

The appeal involves claims 1-3, 5-8, 10-21, and 31-37. Claims 1 and
16 are illustrative and are reproduced below.
1. A method comprising:

coating a core surface with an A-stage thermoset resin to
produce an A-stage thermoset resin layer, wherein the A-stage
thermoset resin is a material combined with a solvent, the material
selected from the group consisting of epoxy resins, polyimide epoxies,
bismaleimide epoxies and any combination thereof;

partially curing the A-stage resin layer to produce a partially
cured thermoset resin layer;

imprinting a plurality of conductor features into the partially
cured thermoset resin layer to produce an imprinted substrate;

completely curing the imprinted substrate to produce a fully
cured resin layer having an exposed surface;

chemically roughening the exposed surface to produce a
chemically roughened exposed surface;

applying a seed layer to the chemically roughened exposed
surface; and

plating the chemically roughened exposed surface to produce a
plated surface.

16. A method comprising:

providing a core having an upper surface and a lower surface;

coating the upper surface and lower surface with an A-stage
thermoset resin to produce upper and lower A-stage thermoset resin
layers, wherein the A-stage thermoset resin is a material combined
with a solvent, the material selected from the group consisting of
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Appeal 2007-2047
Application 10/335,187

epoxy resins, polyimide epoxies, bismaleimide epoxies and any
combination thereof;

partially curing the upper and lower A-stage resin layers to
produce upper and lower partially cured thermoset resin layers;

imprinting a pattern into the upper and lower partially cured
thermoset resin layer to produce an imprinted substrate;

completely curing the imprinted susbstrate to produce upper
and lower fully cured resin layers, each having an exposed surface;

chemically roughening each exposed surface;

applying a seed layer to each chemically roughened exposed
surface; and

plating each chemically roughened exposed surface to produce
plated surfaces.

The appeal is not ripe for review as a result of several inconsistencies
and other deficiencies in the Examiner’s Answer mailed November 22,
2006. In particular, we note that the Examiner’s Answer includes, inter alia,
a rejection of appealed claims 1-3, 7, 8, 10-12, 14-18, 19-21 and 31-37 over
Carey (U.S. Patent No. 5,091,339) in view of Lauffer (U.S. Patent No.
6,156,221) (Answer 3). However, the Examiner further discusses a
combination of Carey, Morita (U.S. Patent No. 6,156,870), and Shimoto
(U.S. Patent No. 5,830,563) with respect to appealed claims 14-18 and 21, as
if the latter combination of references was being applied in rejecting claims
14-18 and 21 (Answer 5) under 35 U.S.C. § 103(a) albeit no such rejection
appears in the Answer or the Final Rejection.
This inconsistency in the Examiner’s discussion and identification of
the references being relied upon in rejecting at least some of the appealed
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Appeal 2007-2047
Application 10/335,187

claims is further magnified by the Examiner’s seemingly conflicting
statements as to what Carey (U.S. Patent No. 5,091,339), a reference relied
upon in all of the Examiner’s stated rejections, teachings or suggests relative
to the claimed subject matter. In describing Carey for example, the
Examiner states that: “A seed layer can be applied to aid in the deposition of
the conductive coatings (Answer 3). In the next paragraph, the Examiner
states that “Carey (5,091,339) fails to teach chemically roughening the
epoxy layer, applying a seed layer and plating to produce a plated surface”
(id.). This is significant because the Examiner maintains that Lauffer (U.S.
Patent No. 6,156, 221) describes chemical roughening, seeding and plating
steps in forming printed wiring boards and asserts that the addition of such
steps as disclosed by Lauffer to Carey would have been obvious to one of
ordinary skill in the art at the time of the invention. The obviousness of this
modification is contested by Appellant in the Briefs.
However, a review of Carey reveals that this applied patent includes a
description of eight preferred embodiments for furnishing conductor
channels and vias in multilayer metal interconnects (Carey, col. 3, l. 10 - col.
8, l. 21). The Examiner refers to the sixth preferred embodiment of Carey in
rejecting the appealed claims (Answer 3; Carey, col. 6, l. 36- col. 7, l. 8).
The sixth embodiment is concerned with forming vias and channels using a
stamping step wherein a soft or liquid polyimide is impacted with a plate
leaving via and channel indentations therein. An alternative epoxy material
is also taught by Carey for use in this embodiment. As for any metallization
steps that follow the formation of the vias and channels, Carey presents these
steps in a portion of the patent description following the described eight
different conductor channel formation and via formation embodiments.
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Appeal 2007-2047
Application 10/335,187

Carey teaches several embodiments of applying conductive layers to the
formed vias and channels. For example, Carey teaches the application of a
seed layer to the formed vias and channels followed by an electrolytic
deposition (plating) of an electrically conductive layer (Carey, col. 8, l. 22 -
col. 9, l. 3). Other methods of forming the conductive layer are also
disclosed by Carey in the passages that follow.
However, the Examiner has not articulated in the Answer why these
latter portions of the disclosure of Carey describing metallization steps
would or would not apply to all of the via and channel formation
embodiments of Carey, including the sixth via formation embodiment of
Carey, as they seemingly appear to. Similarly, Appellant does not address
these specific teachings of Carey in arguing against the Examiner’s
rejections.
Indeed, it appears to us that Carey would have reasonably taught or
suggested to one of ordinary skill in the art that the use of seeding and
plating steps can follow via formation in a manner that would apply to the
sixth embodiment via and channel formation method. Hence, a modification
in accordance with Lauffer’s teachings as asserted by the Examiner in the
Answer would not appear to be necessary for establishing the obviousness of
the seeding and plating steps, albeit an issue with respect to Appellant’s
claimed roughening step may remain.
Furthermore, we note that Carey discloses the formation of stacked
vias, which disclosure appears to relate to several of Appellant’s contested
rejected claims (Carey, col. 10, ll. 49-51; Appealed claims 13-21 and 34-37).
Moreover, Appellant appears to acknowledge that multilayer imprinting of
features useful for conductive layers is known in the art (Specification 8).
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Appeal 2007-2047
Application 10/335,187

Also, Shimoto discloses the formation of conductor patterns on opposite
sides of a printed wiring board (col. 13, ll. 1-4). However, the Examiner has
not presented a detailed analysis of the overall teachings of Carey and the
any other applied references vis-a-vis each of the rejected claims and all of
the required steps thereof together with a consideration of any admissions by
Appellant in rejecting the claims. As another example, we note that the
Examiner has not explained whether the sixth embodiment of Carey teaches
or suggests the use of a solvent as required in the claim 1 core coating with
an A-stage resin step. In this regard, Morita discloses the use of a solvent in
applying a resin composition coating on a substrate (col. 10, ll. 29-33).
However, Morita is not listed among the references applied in the rejection
of claim 1.
In essence, the Examiner simply does not furnish an explicit
explanation referring to the separately applied references by column and line
and drawing figures and elements, showing where in those applied
references subject matter that corresponds to the claimed subject matter
exists. This should have been done on a claim by claim basis at least for the
separately argued claims. Consequently, at this time, it would be premature
for us to resolve all of the patentability issues raised by the references
generally referred to by the Examiner in the Answer.
In light of the foregoing, we remand this application to the Examiner
to resolve the inconsistencies in the references being relied upon in rejecting
some of the appealed claims, as noted above. The Examiner must clarify the
application file record to consistently and unambiguously specify which
references are being applied in the rejection of each of the appealed claims
with regard to any rejections that are maintained in responding to this
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Application 10/335,187

remand. References not being relied upon in rejecting a claim should not be
discussed in explaining the rejection of that claim. Additionally, for all
maintained rejections, the Examiner must explicitly identify the respective
portion of the applied reference disclosures which are thought to satisfy each
of the limitations of the argued claims on appeal.
In this regard, the Examiner must explain where each limitation of
each contested claim that is asserted to be taught by Carey can be found in
Carey by pointing to column and line and/or drawing figure for each taught
limitation, if that reference continues to be relied upon by the Examiner as
the primary reference. Furthermore, the Examiner must set forth how each
contested rejected claim differs from Carey in any obviousness rejection
maintained. Then, the Examiner must articulate why it would have been
obvious to one of ordinary skill in the art to modify the Carey process based
on the combined teachings of the references relied upon so as to arrive at the
subject matter of each contested claim rejected under § 103(a). Of course,
the Examiner must explicitly respond to each argument presented by
Appellant in the Briefs by explaining with specificity why the argument is
considered to be unpersuasive. This is necessary so that we may better
understand the Examiner’s positions regarding the prior art rejections.
Of course, upon review of the claimed subject matter and the
disclosure of the currently applied references, the Examiner may determine
some claims are allowable or that reopening prosecution is appropriate to
introduce new evidence and grounds of rejection based thereon.
An appeal conference must be convened to discuss the merits of the
rejections and positions taken by the Examiner in this application prior to
submitting any Supplemental Answer. Any such Supplemental Answer
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Appeal 2007-2047
Application 10/335,187

must indicate the appeal conference has been held and the Examiner’s
Answer has been reviewed, the conferees’ names and initials must appear on
the Examiner’s Answer.
CONCLUSION
In summary, we remand this appealed application to the jurisdiction
of the Examiner for action not inconsistent with our comments made above.
This application, by virtue of its special status, requires immediate
action by the Examiner. See MPEP § 708.01(d) (Rev. 5, August 2006). The
Board of Patent Appeals and Interferences must be informed promptly of
any action affecting the appeal in this case, including reopening of
prosecution, allowance and/or abandonment of the application.

REMANDED

tf/ls

SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
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