Ex Parte Dangler et al

Patent Trial and Appeal Board

Mar 20, 2014

12101449 (P.T.A.B. Mar. 20, 2014)

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.
12/101,449 04/11/2008 John Richard Dangler ROC920070125US1 8243
7590 03/20/2014
Matthew C. Zehrer
IBM Corporation, Dept. 917
3605 Highway 52 North
Rochester, MN 55901-7829
EXAMINER
ROSSOSHEK, YELENA
ART UNIT PAPER NUMBER
2851
MAIL DATE DELIVERY MODE
03/20/2014 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 JOHN RICHARD DANGLER and
MATTHEW STEPHEN DOYLE
________________

Appeal 2012-000472
Application 12/101,449
Technology Center 2800
________________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000472
Application 12/101,449

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a multilayer electronic structure and a method
for making it. Claims 1 and 11 are illustrative:
1. A method of multilayer electronic structure
manufacture, comprising:
providing a core with at least one signal trace thereupon;
applying non-conductive characterized fill to the core,
adjacent to the at least one signal trace; and
laminating a dielectric layer to the core.
11. A multilayer electronic structure comprising:
a core layer having at least a first location with at least
one signal trace thereupon, and at least a second location with
no signal traces thereupon; and
a non-conductive characterized fill applied upon the core
layer within the second location.
The Reference
Dutta US 2007/0066126 A1 Mar. 22, 2007
The Rejections
Claims 1-13 stand rejected under 35 U.S.C. § 102(b) over Dutta.
OPINION
We reverse the rejection. We need to address only the independent
claims, i.e., claims 1 and 11. Claim 1 requires applying a non-conductive
characterized fill to a core adjacent to at least one signal trace on the core,
Appeal 2012-000472
Application 12/101,449

3
and claim 11 requires a non-conductive characterized fill on a core layer
having at least one signal trace thereupon, within a location of the core layer
having no signal traces thereupon.
Dutta discloses a high-speed flex printed circuit board comprising a
core layer (12) to which a signal line (16B) is affixed by adhesive (14A) and
to which also is affixed by adhesive (14, 14A) a core layer (12) having
therein trenches (24A) filled with air or dielectric material (¶ 0059; Fig. 4).
Dutta’s listed dielectric materials include two of the Appellants’ dielectric
materials, i.e., FR4 and epoxy (¶ 0064; Spec. ¶¶ 0034-36).
The Examiner argues that Dutta discloses “applying
adhesive/dielectric material to fill the space in between two signal lines 16B
on the core layer 12 as shown on the Fig. 4 (¶¶ [0059], [0063], [0028])”
(Ans. 5-6) and that Dutta’s “core layer 12 includes trenches 24A having first
location with signal line 16B and second location without signal 16B as
space next/adjacent to signal line 16B, which will be filled with the air
(dielectric) or dielectric/non-conductive material or liquid crystal material
(dielectric material) having particular dielectric characteristic, such a lower
dielectric loss (paragraph [0059])” (Ans. 10).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ Specification
indicates that the characterized fill is not a gas (“Characterized fill 46 is
dispersed in locations effectively normalizing the distance variation from the
top of bonding film 24 to the plane coincident to the top of signal trace 18”
(¶ 0035)). Hence, the Examiner’s interpretation of the Appellants’ claim
Appeal 2012-000472
Application 12/101,449

4
term “characterized fill” as including air (Ans. 8, 10) is an unreasonably
broad interpretation in view of the Appellants’ Specification.
The Appellants’ independent claims require application of the
characterized fill both 1) to (claim 1) or upon (claim 11) a core with at least
one signal trace thereupon and 2) adjacent to the at least one signal trace
(claim 1) or within a location of the core having no signal traces thereupon
(claim 11). To meet both of those claim requirements, dielectric material in
Dutta’s Figure 4 embodiment relied upon by the Examiner (Ans. 4-6) must
be applied to the core in the space between the edge of a signal line (16B)
and the adhesive (14). The Examiner has not established that Dutta
discloses dielectric material in that space or would have rendered application
of dielectric material in that space prima facie obvious to one of ordinary
skill in the art.
The Examiner, therefore, has not carried the burden of establishing a
prima facie case of anticipation or obviousness of the Appellants’ claimed
method or structure. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (with any ground of rejection, the examiner bears the initial burden of
establishing a prima facie case of unpatentability).
DECISION/ORDER
The rejection of claims 1-13 under 35 U.S.C. § 102(b) over Dutta is
reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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