12913839 (P.T.A.B. Mar. 29, 2016)

Ex Parte Hertel

Patent Trial and Appeal BoardMar 29, 2016

12913839 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/913,839 116344 7590 Joel G Landau Aerojet Rocketdyne PO Box 7922 RLB70 FILING DATE 10/28/2010 03/31/2016 Canoga Park, CA 91304 FIRST NAMED INVENTOR Thomas A. Hertel 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 ATTORNEY DOCKET NO. PA14317U; 67397-162PUS1 CONFIRMATION NO. 4687 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 03/31/2016 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): joel.landau@rocket.com nicole.holieway@rocket.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte THOMAS A. HERTEL Appeal2014-004240 Application 12/913,839 Technology Center 1700 Before CHUNG K. PAK, ROMULO H. DELMENDO, and MONTE T. SQUIRE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 seeks our review under 35 U.S.C. Â§ 134(a) of a final decision of the Primary Examiner to reject claims 1-9, 11, 13-16, and 23-26 under 35 U.S.C. Â§ 103(a) as unpatentable over Hu et al. (US 20015/0136640 Al published June 23, 2005; hereinafter "Hu") in view of Hertel et al. (US 2009/0020876 Al published January 22, 2009; hereinafter "Hertel").2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The Appellant states that the Real Party in Interest is "Aerojet Rocketdyne, Inc." (Appeal Brief field July 30, 2013, hereinafter "Appeal Br.," 2). 2 Final Office Action mailed February 27, 2013. Appeal2014-004240 Application 12/913,839 BACKGROl.J1'-JD The subject matter on appeal relates to a substrate including a metal portion and an underplate that is "laser sintered" to the metal portion (Abst.). The Appellant's Figure 1 is illustrative of the claimed subject matter and is reproduced as follows: c==='-26 ' -28 ~ 30""''{ ~i;~~~,.~~~:~~i~~;_"<;l~~;:ir,.~~'.(';~"":;:t-;~i~,.~~~.::~~;~~i:~;'l~~~;:r,.~~~;~~;l;~;~~~~Â·~ c:;<-~i.~~" .,JI! ~x < "~ <'" <Â·...: <- -c't- .:''Â· .(_ "~ <''-. < "~ -c~,.-.: , ... ~ ..:'~ <''- < "~-.c" <--.: .e. -c"~~ <'-...: ~ -c ~- 20 J"' r~-!'~.;~~> ... 1.,..~~);..;~;....,::..Â·t~~+> ..... ~~':t .;~:~::.d .. -~-!'~.;~;...~.-:t .... ~""");. .. ~"'t.Â·t.;i.::.-t>> .. ,,(_o?!Â·J:_ ... ~::-.::.-!.?" ... :::."""~.;to!lo~.;!.,..~~);. .. ~ ... ,::..Â·~~ .. ~ i 22.!".._t ______________ _... flG.1 Figure 1 above depicts an example of a bonded structure 20 that includes the substrate (Specification, hereinafter "Spec.," i-fi-13, 8). Specifically, the bonded structure 20 is described as including a structural member 22 having a metal portion (e.g., Al), an underplate in the form of a metallic (Ni) layer 24, and another component 26 that is bonded to the metallic layer 24 via a bonding material 28 (id. i-fi-18, 9, 11). Furthermore, the metallic layer 24 is described as having "a sintered interface 30 that serves to facilitate formation of a robust interface between the structural member 22 and the component 26 that can withstand subsequent processing temperatures that are greater than 350Â°C without delamination" (id. i-f 10). Representative claim 1 is reproduced from page 7 of the Appeal Brief (Claims App.), with key limitations highlighted in italicized text, as follows: 1. A substrate comprising: a metal portion; and 2 Appeal2014-004240 Application 12/913,839 a metallic underplate of nickel metal that is laser sintered to the metal portion such that the metallic underplate has a sintered interface with the metal portion, the sintered interface having a microstructure that is characteristic of being laser- applied and does not crack, blister or delaminate at a processing temperature greater than 350Â°C, wherein the metal portion has a melting point that is lower than a sintering temperature of the metallic underplate. DISCUSSION The Examiner found that Hu describes a semiconductor package having the same components recited in claim 1, but acknowledged that Hu "does not explicitly teach laser sintering or that the sintered interface has a microstructure that is characteristic of being laser-applied and does not crack, blister, or delaminate at a processing temperature greater than 305QC [sic]" (Examiner's Answer entered November 7, 2013, hereinafter "Ans.," 3--4). The Examiner found further, however, that Hertel teaches a semiconductor package that is suitable for use at high temperatures (i.e.; about 300QC or higher) by using layers of bonding metals that are laser- deposited onto a first component or substrate (id. at 4--5). According to the Examiner (id. at 5), the resulting "interface would have a microstructure that is characteristic of being laser-applied and does not crack, blister, or delaminate at a processing temperature greater than 305QC." The Appellant contends, inter alia, that even if Hu and Hertel are combined in the manner as proposed by the Examiner, "there is no reason that one of ordinary skill in the art would have an expectation of achieving a sintered interface that has a micro structure that is characteristic of being laser-applied and does not crack, blister or delaminate at a processing temperature greater than 350Â°C, as claimed" (Appeal Br. 5). See also Reply 3 Appeal2014-004240 Application 12/913,839 Brief filed January 7, 2014 at 2) ("[W]hether laser deposition or some other deposition technique, one would not expect to form a laser sintered interface as claimed because in Hertel the materials are diffused together, thus evidently altering whatever the prior structure was."). According to the Appellant, the Examiner's rejection failed to establish "any connection between the mere process of laser deposition and the [disputed] claim features" (Appeal Br. 5---6). We agree with the Appellant that the Examiner's rejection of claim 1 is not well-founded. Hertel's Figure 1 is reproduced below: Hertel' s Figure 1 above depicts an electronic device 10 including a substrate 12 and a plurality of electronic components 14 mounted thereon, wherein the components 14 include a first component 16 and a second component 18 (Hertel, i-f 12). Hertel teaches the use of a first bond 20 and a second bond 22 to secure the first and second components 16, 18 to substrate 12 (id. i-f 13). According to Hertel, the first and second bonds 20, 22 are formed from a plurality of layers 32 (bonding metals), as depicted in Figure 2 (not reproduced here), that include one metal that will be comprised in the desired composition of the alloy making up the first and second bonds 20, 22, as shown in Figure 1 above, and that the layers 32 are deposited onto the first component 16 or the substrate 12 by various techniques including laser 4 Appeal2014-004240 Application 12/913,839 deposition (ii 14). Hertel teaches further: "After deposition of the layers 32 onto the first component 16 or onto the substrate 12, the layers 32 are heated at a predetermined diffusion temperature, such as at a temperature near the eutectic temperature of the desired alloy" (i-f 16). Hertel' s teachings, however, are insufficient to demonstrate that the resulting combination would result in a Ni metallic underplate having "a [laser] sintered interface with the metal portion" (emphasis added), as required by claim 1. As we found above, Hertel' s first and second bonds 20, 22 are formed by laser depositing a plurality of layers 32 of individual metals that make up the alloy composition of the bonds 20, 22 and then heating to diffuse layers 32 together. Although the Examiner is correct that product-by-process limitations are limited and defined by the product itself rather than the process (Ans. 10), the Examiner failed to provide sufficient facts in support of a finding that, when Hertel' s bonding technique is implemented in Hu, "a sintered interface" between a metallic underplate of Ni and a metal portion would necessarily be formed. That failure constitutes reversible error. Because the other independent claims (i.e., claims 5, 13, and 14) also recite the same or similar disputed limitations, we reverse the rejection of all claims on appeal on the same basis as given for claim 1. The Examiner's decision to reject to claims 1-9, 11, 13-16, and 23- 26 under 35 U.S.C. Â§ 103(a) as unpatentable over Hu in view of Hertel is reversed. REVERSED 5