Ex Parte DANDO

Board of Patent Appeals and Interferences

Aug 15, 2003

08858022 (B.P.A.I. Aug. 15, 2003)

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for publication and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROSS S. DANDO
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Appeal No. 2003-0014
Application No. 08/858,022
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ON BRIEF
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Before COHEN, ABRAMS, and FRANKFORT, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 66-88,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2003-0014
Application No. 08/858,022
Page 2
BACKGROUND
The appellant's invention relates to a method of processing a flexible substrate.
An understanding of the invention can be derived from a reading of exemplary claim 66,
which has been reproduced below.
The single prior art reference of record relied upon by the examiner in rejecting
the appealed claims is:
Iwamoto 5,869,150 Feb. 9, 1999
Claims 66-88 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Iwamoto.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 30) and the final rejection (Paper No. 26) for the examiner's complete
reasoning in support of the rejection, and to the Brief (Paper No. 29) and Reply Brief
(Paper No. 31) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Appeal No. 2003-0014
Application No. 08/858,022
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1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
(continued...)
The appellant’s invention is directed to the manufacture of flexible printed wiring,
which has been accomplished in the prior art by removably coupling the substrate upon
which the conductor will be deposited to a carrier during manufacture. According to the
appellant, problems present in the prior art techniques are alleviated by his inventive
method. Representative claim 66 sets for the invention in the following manner:
66. A method of processing a flexible substrate comprising:
providing a processing carrier having a silicone-comprising
surface;
providing a flexible substrate having a pair of opposing
surfaces, the opposing surfaces being a first surface and a
second surface;
cleaning the first surface of the flexible substrate;
adhering the first surface of the flexible substrate to the
silicone-comprising surface of the processing carrier after
the cleaning; and
processing the second surface of the flexible substrate while
the first surface of the flexible substrate is adhered with the
silicone-comprising surface of the processing carrier.
The standing rejection is that the subject matter of claims 66-88 would have
been obvious1 to one of ordinary skill in the art under 35 U.S.C. § 103 in view of
Appeal No. 2003-0014
Application No. 08/858,022
Page 4
1(...continued)
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Iwamoto. It is the examiner’s finding that all of the subject matter recited in the claims
is disclosed by Iwamoto except (1) cleaning the first surface of the flexible substrate,
(2) providing a coupling member with an adhesive layer and a silicone-containing
surface, and (3) applying the coupling member to the carrier using a roller. However,
the examiner is of the view that one of ordinary skill in the art would have found it
obvious to add these features to the Iwamoto system based upon suggestion implicit in
the reference (Paper No. 26, pages 2-4). The appellant argues that this is not the case,
a conclusion with which we agree. Our reasoning follows.
Iwamoto is directed to the same technology as the appellant’s invention.
Looking first to claim 66, as the examiner has admitted, Iwamoto does not include the
step of cleaning the first surface of the flexible substrate prior to adhering that surface
to the processing carrier, as required by this claim. Rather, Iwamoto teaches cleaning
the surface of the processing carrier prior to adhering the flexible substrate thereto.
However, the examiner takes the position that one of ordinary skill in the art “would
have realized that cleaning the first surface of the substrate prior to adhering it to the
carrier would provide the same advantage [as cleaning the surface of the processing
carrier], and would have found it obvious to do so” (Paper No. 26, sentence bridging
Appeal No. 2003-0014
Application No. 08/858,022
Page 5
pages 2 and 3). We assume, from this statement of the rejection, that the examiner
intends to modify the Iwamoto system by cleaning the first surface of the flexible
substrate instead of cleaning the surface of the processing carrier. We do not agree
with this reasoning.
We first point out that the examiner has failed to provide evidence in support of
this proposition, and so it stands merely as the examiner’s unsubstantiated opinion.
Second, Iwamoto intends to re-use the processing carrier a number of times, and for
this reason teaches that it must be cleaned after each use. To eliminate cleaning the
processing carrier would adversely impact the operation of the Iwamoto system.
Further in this regard, it is significant that Iwamoto never mentions cleaning the surface
of the substrate in the specification, although cleaning the surface of the processing
carrier is recited several times. There is no basis to assume, as the examiner has
done, that cleaning the surface of the substrate “would provide the same advantage” as
cleaning the surface of the processing carrier for, in fact, it clearly would not. Thus,
suggestion to modify Iwamoto in the manner proposed by the examiner is not present.
We further observe that there is no support in the reference for cleaning the surface of
the substrate in addition to cleaning the surface of the processing carrier.
It therefore is our opinion that the teachings of Iwamoto fail to establish a prima
facie case of obviousness with regard to the subject matter recited in claim 66, and we
Appeal No. 2003-0014
Application No. 08/858,022
Page 6
will not sustain the rejection of this independent claim or, it follows, of claims 67-71,
which depend therefrom.
Independent claims 84 and 85 contain the same limitation regarding cleaning the
surface of the flexible substrate, and we also will not sustain the rejection of these
claims on the same basis as claim 66. Since claims 86-88 depend from claim 85, the
rejection of those claims also is not sustained.
Independent claim 72 includes the steps of providing a processing carrier,
providing a coupling member having an adhesive layer and a silicone-comprising
surface, first adhering the adhesive layer with the surface of the processing carrier, and
then adhering the first surface of a flexible substrate to the silicone-comprising layer of
the coupling member. The examiner has admitted that Iwamoto fails to disclose or
teach a coupling member with an adhesive layer and a silicon-containing surface, but
expresses the view that for one of ordinary skill in the art to modify the Iwamoto method
so it was in accordance with the claim would have been “an obvious matter of design
choice” since the appellant has not disclosed that the claimed arrangement solves any
stated problem “and it appears that both arrangements would perform equally as well”
(Paper No. 26, page 3). As the appellant has argued, the examiner sets forth no
motivation for making the proposed modification to the Iwamoto method, and therefore
the rejection is fatally defective on this basis. Moreover, as the appellant points out, he
has asserted in the specification that the claimed method does offer an improvement to
Appeal No. 2003-0014
Application No. 08/858,022
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the Iwamoto method, which refutes the examiner’s contention on that matter. We also
again note that Iwamoto desires to re-use the processing carrier without replacing the
adhesive layer, and there is no evidence to support a conclusion that the modification
proposed by the examiner would not subvert this objective, which in our view would
operate as a disincentive for the artisan to make such a change.
A prima facie case of obviousness is lacking, and the rejection of independent
claim 72 and dependent claims 73-78 cannot be sustained.
Independent claim 79 requires, inter alia, that the coupling member be applied to
the surface of the processing carrier “using a roller.” It is the examiner’s position that,
although such a teaching is lacking in Iwamoto, it would have been obvious to do so “to
ensure uniform bonding of the sticky layer to the carrier,” because the reference
teaches that it is known to apply sheet-like material to a surface using a roller (Paper
No. 26, page 3). We are not persuaded that it would have been obvious to apply one
item by means of a roller simply because the reference discloses the application of
another item by means of a roller, and we further note that no evidence has been
adduced by the examiner in support of this position. Especially when considering the
differences in the method disclosed in Iwamoto and that recited in claim 79, we fail to
perceive any teaching, suggestion or incentive which would have led one of ordinary
skill in the art to use a roller to apply the coupling member to the surface of the
Appeal No. 2003-0014
Application No. 08/858,022
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processing carrier. This being the case, we will not sustain the rejection of claims 79-83.
CONCLUSION
The rejection is not sustained.
The decision of the examiner is reversed.
IRWIN CHARLES COHEN )
Administrative Patent Judge )
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)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
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)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
NEA/lbg
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GREGORY & MATKIN, P.S.
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