Ex Parte Hayton et alDownload PDFPatent Trial and Appeal BoardDec 27, 201611720979 (P.T.A.B. Dec. 27, 2016) Copy Citation United States Patent and Trademark Office 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. 11/720,979 11/02/2007 Carl Hayton Q102052 5285 23373 7590 12/29/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 12/29/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARL HAYTON, HENNING SIRRINGHAUS, TIMOTHY VON WERNE, and SHANE NORVAL1 Appeal 2014-005827 Application 11/720,979 Technology Center 1700 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s maintained rejection under 35 U.S.C. § 103 of claims 2-27 and 30-32. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. BACKGROUND Appellants’ claimed invention relates to a method of producing an electronic device that includes providing a body having a conductive 1 Appellants state that the real party of interest is Plastic Logic Limited. Appeal Br. 2. Appeal 2014-005827 Application 11/720,979 element separated from a first surface by a portion of the body, removing a selected portion of the body to define a recess extending from the first surface to the conductive element, putting into the recess a liquid medium containing a material that is deposited on the surfaces that define the recess to provide a connection. Spec. Abstract. Claim 2 is the sole independent claim on appeal. 2. A method of producing an electronic device including the steps of: (i) providing a body including a first, conductive element separated from a first surface of said body by a portion of said body; (ii) removing a selected portion of said body to define a recess in said body extending from said first surface and via which a portion of said first element is exposed; (iii) putting into said recess a liquid having wetting properties for the exposed inner surface of said body and comprising a first material and a solvent; and (iv) evaporating the solvent to leave a deposit of said first material on the exposed inner surface of said body defining said recess up to a first level without said recess being filled to said first level with said first material, wherein the deposit of said first material is used to provide a connection between said first element and a second conductive element located within said body or later deposited over said first surface of said body. Appeal Br. (Claims Appendix) 25. 2 Appeal 2014-005827 Application 11/720,979 REJECTIONS The Examiner maintains the following grounds of rejection under 35 U.S.C. § 103(a): I. Claims 2, 4-6, 8-19, 22-27, and 30-32 over Nakano2 in view of Maharshak;3 II. Claim 3 over Nakano in view of Maharshak and Brannon;4 III. Claims 20 and 21 over Nakano in view of Maharshak, Brannon, and Michaelis;5 and IV. Claim 7 in view of Nakano in view of Maharshak in view of Xue.6 DISCUSSION7 Upon consideration of the record, we are not persuaded that the Examiner erred in determining that one of ordinary skill in the art, armed with the knowledge of cited prior art, would have been led to the subject matter of the claims as obvious within the meaning of 35 U.S.C. § 103(a). 2 Nakano, US 5,260,169, issued November 9, 1993. 3 Maharshak et al., US 2005/0226995 Al, published October 13, 2005. 4 J. H. Brannon, Excimer-Laser Ablation and Etching, IEEE Circuits and Device Magazine, Vol. 6, No. 5, pp. 18—24 (Sept. 1990). 5 Michaelis et al., US 5,189,437, issued February 23, 1993. 6 Fengliang Xue et al., Conducting Polypyrrole-based field Effect Transistors Fabricated by Spin Coating and Inkjet Printing, Mat. Res. Soc. Symp. Proc., Vol. 814,110.20.1-5 (2004). 7 We refer to the Final Office Action mailed June 27, 2013, the Appeal Brief filed November 27, 2013, the Examiner’s Answer mailed February 13, 2014, and the Reply Brief filed April 11, 2014. 3 Appeal 2014-005827 Application 11/720,979 To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner’s rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, it has long been the Board’s practice to require an appellant to identify the alleged error in the examiner’s rejection); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing that the error is harmful normally falls upon the party attacking the agency’s determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))). On this record, we affirm the Examiner’s decision on the basis of factual findings and legal conclusions set forth by the Examiner in the Final Office Action and the Examiner’s Answer. We add the following for emphasis and completeness. We begin our analysis by determining the meaning of the claims, giving terms the broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. 4 Appeal 2014-005827 Application 11/720,979 As to the “deposit of said first material on the exposed inner surface ... up to a first level without said recess being filled to said first level with said first material” (claim 2), we must consider the proper meaning of “first level” and of “without said recess being filled to said first level.” Turning to the plain meaning of the recited terms, we discern no limitation as to the “first level” that prevents it from extending to the top of the recess. As to the proper meaning of the phrase “recess not being filled to said first level” in conjunction with the requirement that there is a “deposit... on the exposed inner surface ... up to a first level,” it is simply that some portion of the volume of the recess below the first level is not occupied by the first material. Claim 2. It follows that the plain and ordinary meaning of these terms requires merely that the exposed inner surface of the recess has a coating that extends at least partially up the inner surface of the recess and that there is some portion of the volume of the recess below the level to which the coating extends that is not occupied with the first material. While Appellants argue for a particular, more narrow meaning of these claim terms (Appeal Br. 7-9; Reply Br. 4-5), we are not directed to any particular support in the Specification that is contrary to or would exclude the meaning for these terms set forth above (generally Appeal Br.; Reply Br.). To the limited extent attention is directed to the Specification (Appeal Br. 5, 7-9, 16), we find the corresponding disclosure to describe an embodiment, or aspects of various embodiments, rather to provide the necessary definition to further limit the meaning of the claim. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (Explaining that the court “has expressly rejected the contention that if a 5 Appeal 2014-005827 Application 11/720,979 patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”). Turning to the prior art rejections, the Examiner relies on Nakano in view of Maharshak (Rejection I), and in further view of Brannon (Rejection II), Brannon and Michaelis (Rejection III), or Xue (Rejection IV). Rejection I As relied on by the Examiner (Final Act. 2-3), Nakano discloses a method of producing a semiconductor [electronic] device that includes the steps of providing a body having an electrode layer separated from a surface of the body by layer(s), forming a via hole [recess] through the layers separating the surface of the body from the electrode to expose part of the electrode, and coating the inner surface of the via hole, without filling the hole, with a metal film by electroless plating to connect the electrode to other metal layers (Nakano col. 3,1. 41 to col. 4,1. 5, col. 4,11. 5, 11-33, Fig. 1 (a)—1 (])). In doing so, the Examiner de facto finds Nakano discloses applying a coating of conductive material to the inner surface of a recess to provide a connection from the underlying conductor—a first conductive element—up to an overlying conductive element—a second conductive element. Final Act. 2—3. Maharshak discloses applying conductive material in fluid form to provide connections, including through small holes to connect conductive areas on one side of a board to another. Maharshak Abstract. The Examiner finds Maharshak to disclose the use of solution coating and its application using inkjet and other means. Final Act. 3, 7-8; Maharshak Abstract, ^ 30. 6 Appeal 2014-005827 Application 11/720,979 In doing so, the Examiner de facto finds Maharshak to disclose the use of solution coatings in which evaporation of solvent leaves a deposit of conductive material. The Examiner then concludes, in essence, that one of ordinary skill in the art at the time of the invention would have found it obvious to have provided a conductive coating of the inner surfaces of a recess by an alternative method, by applying a solution coating to the inner surface, to provide “the desired coated via hole.” Final Act. 3, 8; Ans. 3. Appellants contend that the combination of Nakano and Maharshak fails to teach or suggest the claimed method because there is no teaching in which only a part of the wall surface is coated—in either Nakano or Maharshak—and Maharshak does not teach forming a conductive connection without completely filling the via hole. Appeal Br. 8-16. Appellants’ arguments, which are grounded on the cited prior art not teaching or suggesting a method in which only a portion of the wall surface is coated, are without persuasive merit because, as explained above, the claims do not exclude coating the entire wall surface. See, e.g., In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self 671 F.2d 1344, 1348 (CCPA 1982). As to Maharshak’s disclosure being limited to forming conductive connections by completely filling the via hole (Appeal Br. 15- 16), Appellants’ arguments fail to address the rejection as set forth by the Examiner in which Maharshak is not relied on for the structure of the conductive connection, but rather for the composition of material—a conductive material provided in a solvent—and its method of application— applying the material to the inner surface of the recess and evaporating solvent (Final Act. 3, 7-8; Ans. 3). 7 Appeal 2014-005827 Application 11/720,979 Proffering various contentions, Appellants argue that the substitution of Maharshak into Nakano is unsupported. Appeal Br. 13-15. We do not find these persuasive for reasons expressed by the Examiner (generally Final Act.; Ans.), and as explained below. First, Appellants contend that Maharshak teaches away from plating, the technique used in Nakano, because plating is identified as being in the prior art. Appeal Br. 14 (citing Maharshak Fig. 1). There is, however, nothing cited by Appellants that reasonably leads the skilled artisan away from the invention. DyStar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists.”). Second, Appellants contend that there is insufficient technical information in Maharshak to achieve a via hole coating. Appeal Br. 14. Appellants’ contention, however, is unsupported by any persuasive evidence or supportive reasoning. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take the place of evidence.”). Third, Appellants contend that the Examiner’s rejection is grounded on impermissible hindsight. Appeal Br. 14. Appellants’ contention is unfounded, however, where we are not persuaded of any deficiency in the Examiner’s rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Fourth, Appellants contend that the combination of Nakano and Maharshak would not lead to the claimed invention because it would still be an electroless plating technique and so would not use a liquid having good wetting properties and evaporate solvent to deposit material on 8 Appeal 2014-005827 Application 11/720,979 the inner surface of the via hole. Appeal Br. 14-15. Appellants’contention is without persuasive merit because it does not address the Examiner’s proffered combination of teachings in which the coating material of Maharshak is applied as generally taught by Maharshak to provide a coated via wall structure as taught by Nakano. Cf. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of a primary reference . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”). Appellants further contend that Maharshak lacks both “reliance on wettability of a surface to be coated” and “reliance on evaporation of a solvent.” Appeal Br. 15. Appellants highlight the “exemplary technique” described in the Specification in which enhanced wetting properties of a surface are obtained and contend there is no such disclosure in Maharshak. Appeal Br. 16. On this record, Appellants’ “wetting properties” argument is not persuasive of reversible error because there is no particular limitation as to the recited wetting properties (claim 2) and, furthermore, as noted by the Examiner, Maharshak discloses forming holes by laser ablation. Ans. 3; Maharshak 128. Likewise, Appellants’ “solvent evaporation” argument is not persuasive because it fails to rebut the Examiner’s reasonable inference that Maharshak’s solution coatings disclosure or suggest coating methods which require evaporating the solvent. See, e.g., In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). 9 Appeal 2014-005827 Application 11/720,979 Appellants further contend that neither Nakano nor Maharshak provide enabling disclosure for the claimed method (Appeal Br. 16-17), however, the arguments proffered are grounded on an interpretation of the claims that is narrower than warranted, lack sufficient evidentiary support, and fail to properly “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Appellants further contend that the Examiner has failed to establish a prima facie case of obviousness because the proffered ground of rejection lacks any reason why Nakano would have been modified by the teaching of Maharshak. Appeal Br. 17-19 (citing Leo Pharmaceutical Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013)). Appellants argue that the Examiner’s reasoning is merely conclusory (Appeal Br. 17-18) and that there is no proper basis for the combination where both Nakano and Maharshak work for their intended purposes (Appeal Br. 18-19). In light of this, Appellants further contend that the Examiner relies improperly on Appellants’ disclosure in combining the teachings of the cited references. Appeal Br. 10, 14, 17-19; Reply Br. 5-6. On this record, we find Appellants’ arguments unpersuasive of reversible error because the Examiner has reasonably found that Nakano discloses a particular conductive via structure, i.e., conductive coating on the walls (and bottom) of a recess, and that known methods for forming conductive coating structures included applying a solution coating. KSR, 550 U.S. at 421 (“When there is a design need ... to solve a problem and there are a finite number of identified, predictable solutions, a person of 10 Appeal 2014-005827 Application 11/720,979 ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). Appellants’ reliance on Leo Pharmaceuticals does not support that the Examiner erred because the motivation found lacking in that case was not grounded on a limited number of known, predictable options. Leo Pharmaceuticals, 726 F.3d at 1357 ((“This court and obviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions’”) (quoting KSR, 550 U.S. at 421)). For these reasons, and those set forth by the Examiner in the Final Office Action and Answer, we are unpersuaded of reversible error in the Examiner’s rejection of the claims and, accordingly, affirm the Examiner’s rejection of claims 2, 4-6, 8-19, 22-27, and 30-32. See Jung, 637 F.3d at 1365-66. Rejection II Dependent claim 3 adds the further limitation that “the recess in said body is defined by laser ablation of said body.” While the Examiner finds that Maharshak discloses the use of laser ablation to form holes (Ans. 3; Maharshak 128), the Examiner relies on Brannon for this limitation in the Final Office Action (Final Act. 5, citing Brannon p. 24). Appellants contend the claimed process relies on a unique quality of holes created by laser ablation that is described on pages 15 to 22 of the Specification where the via holes are formed by laser ablation in an oxidative atmosphere to generate high surface energy on the side walls that 11 Appeal 2014-005827 Application 11/720,979 aids in the wetting process and the adhesion of conductive liquids. Appeal Br. 20. Appellants’ argument is unpersuasive of error because the claim does not recite the properties of the via holes formed or that the laser ablation is conducted in an oxidative atmosphere. See, e.g., Hiniker, Co., 150 F.3d at 1369; Self, 671 F.2d at 1348. Accordingly, we affirm the Examiner’s rejection of claim 3. Rejection III Claim 20 adds the step of “treating the exposed inner surface of said body defining said recess so as to increase the wettability thereof for said liquid comprising said first material and said solvent.” Claim 21 adds the limitation that the additional treating step of claim 20 is carried out simultaneously with the step of removing of removing a portion of the body to define the recess. The Examiner relies on Michaelis for its disclosure that laser ablation of material to form holes, in particular inkjet nozzles, simultaneously increases the surface energy and wettability of the nozzles. Final Act. 6 (citing Michaelis col.3,11. 15-25, col. 5,11. 16-19). Appellants contend the Examiner has impermissibly relied on: [Hjhindsight to suggest that a technique for creating inkjet nozzles would be relevant to the creation of via holes so that their wall can be effectively lined with a conductive liquid so that a conductive deposit is formed on the wall due to evaporation of a solvent in the liquid. Appeal Br. 22. Appellants’ argument is not persuasive of reversible error where the Examiner is in essence relying on Michaelis as evidence that holes formed by laser ablation have the properties of increased surface energy and 12 Appeal 2014-005827 Application 11/720,979 wettability and has already established that it would have been obvious to have formed the holes using laser ablation based on the teachings of Brannon (Final Act. 5-6), as well as the teaching of Maharshak (Ans. 3). Further, on this record, Appellants’ contention that the teaching of Michaelis is not relevant is not sufficient to establish that the art is not analogous art where it is not clear that is in fact the argument and also because it fails to explain how Michaelis is not reasonably pertinent to the particular problem to be solved where Michaelis, like the instant invention, relates to forming holes in a material by laser ablation. See, e.g., In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Accordingly, we affirm the Examiner’s rejection of claims 20 and 21. Rejection IV Claim 7 adds the limitation that the “first material is deposited by spin coating or blade coating.” The Examiner relies on Xue for its disclosure of spin coating and that it provides better device performance than inkjet printed devices, and concludes one of ordinary skill in the art at the time of the invention would have found it obvious to use spin coating instead of inkjet printing as taught by Maharshak. Final Act. 6-7 (citing Xue Abstract). Appellants contend that “there is no teaching or suggestion in Xue that would lead one skilled in the art to apply spin coating or blade coating techniques to . . . [the methods] of Nakano or . . . Maharshak to only coat a portion of a recess.” Appeal Br. 23. We find no persuasive merit in Appellants’ contention as it is no more than a naked assertion that the prior art does not disclose or suggest the claim’s limitations and, thus, is not an argument in support of separate 13 Appeal 2014-005827 Application 11/720,979 patentability of a claim pursuant. 37 C.F.R. § 41.37(c)(l)(iv). Cf. In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). Accordingly, we affirm the Examiner’s rejection of claim 7. CONCLUSION The Examiner’s decision rejecting claims 2-27 and 30-32 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation