Ex Parte Deram

Board of Patent Appeals and Interferences

Aug 19, 2008

11366523 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN T. DERAM
____________

Appeal 2008-4031
Application 11/366,523
Technology Center 1700
____________

Decided: August 19, 2008
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-10 (Appeal Brief filed on April 26, 2007, hereinafter “Br.”). We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-4031
Application 11/366,523

We AFFIRM. Because we are in complete agreement with the
Examiner’s factual findings and legal conclusions, we adopt them as our
own and add the following for emphasis.
Appellant states that “[t]he present invention relates to low-cost solder
compositions for bonding electronic devices or parts to printed wiring
boards (PWBs)” and “to solder compositions that prevent or minimize the
dissolution of copper into the solder during the soldering process”
(Specification, hereinafter “Spec.,” 1).
Claim 1 on appeal read as follows:
1. A lead-free solder composition consisting essentially
of 0.2 to 0.9% by weight of copper, 0.006 to 0.07% by weight
of nickel, 0.03 to 0.08% by weight of bismuth, less than 0.5%
by weight of silver, less than 0.010% by weight of phosphorus,
and the balance of tin.
The Examiner relied upon the following documents as evidence of
unpatentability:
Carey 5,695,822 Dec. 9, 1997
Yamashita 6,365,097 B1 Apr. 2, 2002
Miura JP 2002-373824 Dec. 26, 2002
(English language translation of record)
Zhao CN 1390672A Jan. 15, 2003
(English language translation of record)
(Examiner’s Answer mailed on August 7, 2007, hereinafter “Ans.,” 2-3).
The Examiner rejected claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Yamashita, Zhao, Miura, or Carey (Ans. 3-6).

ISSUE
Has Appellant demonstrated reversible error in the Examiner’s
determination that a person having ordinary skill in the art would have found
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it obvious to arrive at the claimed subject matter in view of each of the
applied prior art references?

FINDINGS OF FACT
1. Appellant’s Specification states (Spec., paragraph bridging 7-
8):
U.S. Patent 1,437,641 describes a well-known tin-
zinc solder alloy with acceptable melting temperature,
but unacceptably rapid oxidation and corrosion problems.
U.S. Patent 4,670,217 describes solder compositions for
joining copper that contain up to 4% zinc added to solder
compositions containing tin, silver, and antimony.
However, for automated applications, such as wave
soldering, tin alloys containing zinc (Zn) are subject to
very rapid oxidation while being pumped to generate a
standing wave of solder, resulting in a large production
of dross, i.e., a mixture of metal oxides and metal
particles that float on the surface of the melted solder.
There is much concern about the potential galvanic
corrosion of solder joints made with solders containing
zinc.
2. Yamashita describes a solder alloy containing tin, as a major
component, and 21 wt. % or less bismuth, 4 wt.% of less silver,
2 wt.% or less (inclusive of zero) copper, and 0.2 wt.% or less
nickel (col. 1, ll. 63-67).
3. Yamashita discloses working examples of alloys containing
various amounts of Bi, Ag, Cu, Ni, Ge, and Sn, including an
alloy composition of 2 wt.% Bi, 2 wt.% Ag, 0.5 wt.% Cu, 0.1
wt.% Ni, and the balance Sn (Table 1).
4. Zhao describes lead-free solder compositions containing 5-10
wt.% Zn, 0.05-1 wt.% rare earth element (one or more of La,
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Application 11/366,523

Ce, Pr, and Nd), 0-6 wt.% Bi, 0-3 wt.% Cu, 0-3 wt.% In, 0-1
wt.% Ni, 0-1 wt.% P, and the remainder Sn and inevitable
impurities (Zhao 1, ll. 4-5).
5. Miura describes a lead-free alloy containing 0.5-0.25 wt.% Zn,
0.1-5 wt.% Cu, and the rest Sn, in which Sn is partly replaced
with 0.01-1.0 wt.% Ni, 0.005-0.5 wt.% GaO, 0.01-2.5 wt.%
AgO, 0.001-0.2 wt.% P, 0.005-0.2 wt.% Al, 0.001-0.2 wt.% Si,
0.01-3 wt.% Bi (¶¶0012-0013).
6. Carey describes a metal alloy of 15-90 wt.% Sn, 10-85 wt.%
Zn, 0-2.0 wt.% Mg, 0-2.0 wt.% Ni, 0-2.0 wt.% Cu, 0-1.0 wt.%
Ti, 0-2.0 wt.% Al, 0-2.0 wt.% Sb, 0-1.7 wt.% Bi, 0-1.0 wt.%
Fe, 0-0.5 wt.% Pb (col. 28, ll. 17-29).
7. The formulations of the claimed and prior art compositions (in
terms of contents by weight percent) are summarized as
follows:
Claim
1
Yamashita Zhao Miura Carey
Cu 0.2-
0.9%
0-2% 0.1-
3%
0.1-
5%
0-2%
Ni 0.006-
0.07%
< 0.2% 0.01-
1%
0.01-
1.0%
0-2%
Bi 0.03-
0.08%
< 21% 0.1-
6%
0.01-
3%
0-
1.7%
Ag < 0.5% < 4%
P <
0.010%
0.001-
1%
0.001-
0.2%

Zn 5-
10%
0.5-
0.25%
10-
85%
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Appeal 2008-4031
Application 11/366,523

Mg 0-2%
Ti 0-1%
Sb 0-2%
Fe 0-1%
Pb 0-
0.5%
AgO 0.01-
2.5%

GaO 0.005-
0.5%

Si 0.001-
0.2%

La,
Ce,
Pr,
Nd
0.05-
1%

In 0.5-
3%

Al 0.1-
1%
0.005-
0.2%
0-2%
Sn bal Bal bal Bal 15-
90%

PRINCIPLES OF LAW
It has long been held that the transitional phrase “consisting
essentially of” in a claim permits the inclusion of unrecited components,
provided that these unrecited components do not materially affect the basic
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and novel characteristics of the claimed invention. PPG Indus. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); In re Janakirama-Rao,
317 F.2d 951, 954 (CCPA 1963).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR reaffirms the analytical framework set out in Graham v. John
Deere Co. of Kan. City, 383 U.S. 1 (1966), which states that an objective
obviousness analysis includes: (1) determining the scope and content of the
prior art; (2) ascertaining the differences between the prior art and the claims
at issue; and (3) resolving the level of ordinary skill in the pertinent art.
KSR, 127 S. Ct. at 1734. Secondary considerations such as commercial
success, long felt but unsolved needs, or failure of others “‘might be utilized
to give light to the circumstances surrounding the origin of the subject
matter sought to be patented.’” Id. (quoting Graham, 383 U.S. at 17-18).
“When the PTO shows prima facie obviousness, the burden then shifts
to the applicant to rebut.” In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir.
1997). “Such rebuttal or argument can consist of a comparison of test data
showing that the claimed compositions possess unexpectedly improved
properties or properties that the prior art does not have . . . .” In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990)(en banc).
When ranges recited in a claim overlap with ranges disclosed in the
prior art, a prima facie case of obviousness typically exists and the burden of
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proof is shifted to the applicant to show that the claimed invention would not
have been obvious. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005)(“[A]
prima facie case of obviousness arises when the ranges of a claimed
composition overlap the ranges disclosed in the prior art.”); accord In re
Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003).

ANALYSIS
Appellant relies on the same arguments for all appealed claims, i.e.,
claims 1-10 (Br. 9-10). Consistent with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 1 as representative and confine our discussion to this selected
claim.
Appellant does not dispute the Examiner’s factual findings that each
of the applied prior art references describes alloy compositions with the
same elements in amounts that substantially overlap those recited in
appealed claim 1 (Facts 2-7; Ans. 3-5; Br. 9-10). Rather, Appellant
contends: (1) the phrase “consisting essentially of” limits the scope of the
claims to exclude zinc, which is disclosed in the prior art; and (2) “there is
no motivation from the cited prior art to make the necessary selection to
arrive at the presently claimed invention” in view of the “thousands of
possible choices taught by [the] prior art” (Br. 9-10).
Neither argument is persuasive to demonstrate reversible error on the
part of the Examiner. Appellant is correct that the phrase “consisting
essentially of” excludes any components that materially affect the basic and
novel characteristics of the claimed invention. PPG, 156 F.3d at 1354.
But other than conclusory, unsubstantiated statements, Appellant has
not directed us to any persuasive evidence (e.g., comparative experiments)
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establishing that the presence of zinc as described in Zhao, Miura, or Carey,
materially affects the basic and novel characteristics of Appellant’s claimed
invention. While Appellant refers to a discussion in the Specification
concerning the alleged shortcomings of United States Patents 1,437,641 and
4,670,217 (Fact 1), that discussion is insufficient to demonstrate that zinc
materially affects Appellants’ claimed invention. In this regard, mere
attorney arguments or conclusory statements do not take the place of
evidence. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Moreover, as pointed out by the Examiner (Ans. 5), Yamashita’s
compositions do not contain zinc (Facts, 2, 3, and 7). Thus, Appellant’s
argument concerning the exclusion of zinc is unpersuasive.
As to Appellant’s argument concerning the “thousands of possible
choices taught by [the] prior art” (Br. 9-10), we have not been directed to
any meaningful discussion supporting Appellant’s characterization of the
prior art teachings. But even if we assume that Appellant’s characterization
is correct, that does not by itself demonstrate reversible error on the part of
the Examiner. In re Harris, 409 F.3d at 1341 (“[A] prima facie case of
obviousness arises when the ranges of a claimed composition overlap the
ranges disclosed in the prior art.”); Ex parte Fu, 2008 WL 867826 (BPAI
2008)(mere fact that prior art discloses a broad genus does not render
claimed invention per se patentable).
For these reasons, we uphold the Examiner’s rejections.

CONCLUSION
On this record, we determine that Appellant has failed to demonstrate
any error in the Examiner’s conclusion that a person having ordinary skill in
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the art would have found the claimed subject matter obvious over
Yamashita, Zhao, Miura, or Carey.

DECISION
The Examiner’s decision to reject appealed claims 1-10 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)(1)(iv).
AFFIRMED

tf/ls

HARVEY S. KAUGET
PHELPS DUNBAR, LLP
100 S. ASHLEY DRIVE
SUITE 1900
TAMPA, FL 33602-5311
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