Ex Parte Cordes et al

Board of Patent Appeals and Interferences

Mar 30, 2004

10131803 (B.P.A.I. Mar. 30, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN A. CORDES, PETER A. GRUBER, JAMES L. SPEIDELL,
and THOMAS G. FERENCE
__________

Appeal No. 2004-0704
Application No. 10/131,803
___________

ON BRIEF
___________

Before WARREN, OWENS, and DELMENDO, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 23 through
26 (final Office action mailed Mar. 26, 2003, paper 6), which
are all the claims pending in the above-identified application.
The subject matter on appeal relates to an electronic
substrate. Further details of this appealed subject matter are
recited in representative claim 23 reproduced below:
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23. An electronic substrate comprising:
a substrate formed of a substantially insulating
material,
at least one surface groove in said substrate
filled with a conductive metal, and
at least one aperture in said substrate filled
with said conductive metal providing electrical
communication to said at least one surface groove.

The examiner relies on the following prior art reference as
evidence of unpatentability:
Kitamura et al. 5,480,048 Jan. 2, 1996
(Kitamura)

Claims 23 through 26 on appeal stand rejected under 35
U.S.C. § 102(b) as anticipated by Kitamura. (Examiner’s answer
mailed Sep. 23, 2003, paper 12, pages 3-4.)
We affirm.1
Kitamura describes an insulation film 107 (corresponding to
the appellants’ recited “substrate formed of a substantially
insulating material”), which is part of a multilayer wiring
board. (Column 6, line 59 to column 7, line 43; Figures 1a-1h.)
Kitamura further teaches a horizontal wiring conductor 101,
which defines a filled surface groove on the insulation film
107, and a vertical via conductor 102, which defines a filled

1 The appellants state: “The rejection of claims 23-26 are
contested as a group.” (Appeal brief filed Aug. 26, 2003, paper
11, p. 4.) Accordingly, we select claim 23 from the group of
rejected claims and decide this appeal as to the examiner’s
ground of rejection on the basis of this claim alone. See 37
CFR § 1.192(c)(7) (1995)(effective Apr. 21, 1995).
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aperture in the insulation film 107 and is in electrical
communication with the horizontal wiring conductor 101.
Given this disclosure in the prior art, we agree with the
examiner that, prima facie, Kitamura discloses each and every
limitation of the invention recited in appealed claim 23. In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997).
While Kitamura’s combination of the insulation film 107,
horizontal wiring conductor 101, and vertical via conductor 102
is produced by a method that may be different from the
appellants’ disclosed method, the appellants fail to identify
any evidence establishing that the claimed product and the prior
art combination differ structurally. In this regard, when a
product recited in a product-by-process claim reasonably appears
to be the same as or obvious from a product of the prior art,
the burden is on the applicants to show that the prior art
product is in fact different from the claimed product, even
though the products are made by different processes. In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
The appellants argue (appeal brief, pages 5-6):
It is clear from both Figs. 1A-1E and the
description by Kitamura that the horizontal wiring
conductors 101 are first provided on a top surface of
the substrate 100. There is no groove formed in the
substrate, let alone a groove formed in the substrate
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and is filled with a conductive metal such as that
taught by the present invention.

The appellants then urge that “Kitamura [] does not teach at
least one surface groove in a substrate” and that “[t]he base
substrate 100 of Kitamura [] is clearly shown with a smooth top
surface.” (Id. at page 6.)
The appellants’ position lacks merit. While Kitamura does
not state that insulation film 107 is a “substrate,” we note
that the present specification places no limitation on the type
of substantially insulating material that may be used to form
the “substrate.” Nor does the present specification limit the
structure of the “substrate” in any way. Absent any special
definition in the specification,2 we construe the term
“substrate” to encompass or read on Kitamura’s insulation film
107.3

2 See, e.g., In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997).

3 The appellants contend that Kitamura’s insulation film
107 “is not a substrate[] and cannot be interpreted as such in
the common sense of semiconductor structures.” (Appeal brief,
p. 8.) The appellants, however, fail to point to any evidence
in the record to substantiate this unsupported allegation. It
has long been held that mere lawyer’s arguments and conclusory
statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984);
In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); In
re Lindner, 457 F.2d 506, 508-09, 173 USPQ 356, 358 (CCPA 1972).
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Because the appellants have not successfully rebutted the
examiner’s prima facie case of anticipation, we affirm the
examiner’s rejection under 35 U.S.C. § 102(b) of appealed claims
23 through 26 as anticipated by Kitamura.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Charles F. Warren )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Terry J. Owens )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

rhd/
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