Ex Parte DangelmaierDownload PDFPatent Trial and Appeal BoardJun 19, 201311776184 (P.T.A.B. Jun. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/776,184 07/11/2007 Jochen Dangelmaier I550.155.101/2006P51551US 6336 25281 7590 06/19/2013 DICKE, BILLIG & CZAJA FIFTH STREET TOWERS 100 SOUTH FIFTH STREET, SUITE 2250 MINNEAPOLIS, MN 55402 EXAMINER ZIMMERMAN, JOHN J ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 06/19/2013 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 JOCHEN DANGELMAIER ____________ Appeal 2012-003547 Application 11/776,184 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and BEVERLY A. FRANKLIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003547 Application 11/776,184 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 2, 7, 11-17, 19-25, 29, 33, 34, and 35.1 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellant claims a component comprising a connection region having a Ni/NiP/Pd/Au coating or a Ni/NiP/Ag/Au coating (independent claims 1 and 33; see also independent claims 19, 20, and 24). A copy of representative independent claims 1 and 33, taken from the Claims Appendix of the Appeal Brief, is set forth below: 1. A component having a connection wire comprising: a first connection region for connecting a first workpiece; and a second connection region for connecting a second workpiece, the second connection region having a Ni/NiP/Pd/Au coating or a Ni/NiP/Ag/Au coating. 33. A component comprising: a leadframe comprising a connection wire; and a semiconductor device coupled to the leadframe, wherein the connection wire comprises: a first connection region for electrically connecting the semiconductor device; and a second connection region for connecting a printed circuit board, the second connection region comprising a Ni/NiP/Ag/Au coating. 1 The Examiner indicates that previously rejected dependent claims 8- 10, 30-32, and 36-38 are now objected to but otherwise allowable (Ans. 3- 5). Accordingly, these dependent claims are not before us in this appeal. Appeal 2012-003547 Application 11/776,184 3 Under 35 U.S.C. § 103(a), the Examiner rejects: independent claims 1, 19, 20, and 24 as unpatentable over Herklotz (US 5,486,721, issued Jan. 23, 1996) in view of Sirinorakul (US 2006/0097366 A1, published May 11, 2006) or Inujima (US 6,652,160 B2, issued Nov. 25, 2003) and independent claim 33 as unpatentable over these references and further in view of Seki (US 2006/0125073 A1, published Jun. 15, 2006); independent claims 1, 19, 20, and 24 as unpatentable over Lau (US 2007/0052105 A1, published Mar. 8, 2007) in view of Sirinorakul or Inujima or Ling (US 6,445,069 B1, issued Sep. 3, 2002) and independent claim 33 as unpatentable over these references and further in view of Seki; and independent claims 1, 19, 20, and 24 as unpatentable over Haketa (US 2005/0048309 A1, published Mar. 3, 2005) in view of Sirinorakul or Inujima or Ling and independent claim 33 as unpatentable over these references and further in view of Seki. The dependent claims on appeal are similarly rejected over the above references alone or in combination with other prior art. Appellant does not present separate arguments specifically directed to the dependent claims under rejection including the separately rejected dependent claims. As a consequence, the dependent claims on appeal will stand or fall with their parent independent claims of which claims 1 and 33 are representative. We sustain the above rejections for the reasons expressed in the Answer. The following comments are added for emphasis. Appeal 2012-003547 Application 11/776,184 4 Appellant argues that the applied references use a maximum of three layers to provide a coating and accordingly that an artisan would not have combined the references in the manner proposed by the Examiner to provide the four layer coatings required by the independent claims (App. Br. 9, 11, 14-15, 17, 20, and 23). When assessing the obviousness of claims to a combination of prior art elements, the question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). It is undisputed that the applied references show the coating layers required by the independent claims were known in the prior art as alternatives for providing a connecting function. Therefore, an artisan would have combined these prior art layers in the claimed manner so as to obtain the predictable use of these layers according to their established functions. See id. Furthermore, an artisan would have combined Ling with Lau and Haketa in order to obtain the diffusion barrier advantage taught by Ling as explained by the Examiner (Ans. 12 and 15).2 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 C.F.R. §1.136(a). AFFIRMED 2 In the record of this appeal, Appellant does not contest with any meaningful specificity the Examiner's diffusion-barrier rationale for combining Ling with Lau and Haketa. Appeal 2012-003547 Application 11/776,184 5 kmm Copy with citationCopy as parenthetical citation