Ex Parte Hirano et al

Patent Trial and Appeal Board

Apr 24, 2018

12923319 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/923,319 09/14/2010 Naohiko Hirano
27649 7590 04/24/2018
MICHAEL TOBIAS
1629 K STNW
SUITE 300
WASHINGTON, DC 20006
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. CONFIRMATION NO.
1142/HIROSE 4926
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
MAILDATE DELIVERY MODE
04/24/2018 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 NAOHIKO HIRANO, AKIRA TANAHASHI,
YOSHITSUGU SAKAMOTO, KAICHI TSURUTA,
T AKASHI ISHII, and SATOSHI SOGA
Appeal2016-006898
Application 12/923 ,319
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
April 8, 2015 decision finally rejecting claims 1, 4, 6-8, and 10-18. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ). An oral hearing
was held on March 22, 2018. A transcript of that hearing will be made part
of the record.
WeREVERSE.
1 Appellants identify the real party in interest as Senju Metal Industry Co.,
Ltd. (Br. 1.)
Appeal 2016-006898
Application 12/923 ,319
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to a solder preform wherein high
melting point metal particles are uniformly dispersed in the solder preform,
no voids or flux are present at all in the solder preform, and the surfaces of
the high melting point particles are metallically bonded to solder (Abstract).
Details of the claimed invention are set forth in independent claims 1 and 14,
which are reproduced below from the Claims Appendix of the Appeal Brief:
1. A solder preform for providing a clearance between
portions to be soldered comprising high melting point metal
particles uniformly dispersed in solder in an unordered manner
and metallically bonded to the solder and having their upper
and lower portions covered by solder, the high melting point
metal particles having a melting point higher than the solder
and a particle diameter of at least 20 µm and at most 90% of the
thickness of the solder preform.
14. A solder preform having top and bottom surfaces and
consisting of solder and a plurality of high melting point metal
particles uniformly dispersed in the solder in an unordered
manner and metallically bonded to the solder and spaced from
the top and bottom surfaces of the preform, the high melting
point metal particles having a melting point higher than the
solder and a particle diameter of at least 20 µm and at most
90% of a thickness of the preform.
REJECTIONS
1. Claims 13 and 15-18 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
2
Appeal 2016-006898
Application 12/923 ,319
2. Claims 1, 4, 6-8, 10, and 14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Jin2 in view of Tiedema. 3
3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jin and Tiedema, and further in view of Hack. 4
DISCUSSION
Rejection 1. With regards to claim 13, the Examiner finds that the
requirement that "every high melting point metal particle in the preform is
spaced from top and bottom surfaces of the preform" is not described in the
Specification within the meaning of§ 112 (Final Act. 4).
To satisfy the written description requirement of§ 112, the
specification must allow a person of ordinary skill in the art to recognize that
the inventor invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012
(Fed. Cir. 1989). The specification must reasonably convey to a person of
ordinary skill in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ralston Purina Co. v. Far-Mar-Co, Inc.,
772 F.2d 1570, 1575 (Fed. Cir. 1985); see also Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). The specification, however, need not
describe the claimed subject matter word-for-word. In re Wertheim, 541
F.2d 257, 262 (CCPA 1976).
In this instance, page 16 of the Specification states that:
However, if the thickness of the solder preform and the
diameter of the metal particles are the same, at the time of
forming a solder preform, the metal particles end up being
exposed on the surface of the solder preform, and solder does
2 Jin et al., EP 0 612 577 Al, published August 31, 1994.
3 Tiedema, US 3,472,365, issued October 14, 1969.
4 Hack, US 3,056,195, issued October 2, 1962.
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Application 12/923 ,319
not adhere to the exposed portions. As a result, a part is not
metallically bonded to the exposed portions of the metal
particles at the time of soldering. In the case of a thick solder
preform, the diameter of metal particles is preferably made at
most 90% of the thickness of the solder preform in order to
leave molten metal which covers the upper and lower portions
of the particles with solder in the thickness direction of the
solder preform.
(Spec. 16, emphasis added). The passage quoted above shows that the
inventors intended for the solder to cover the molten metal particles (i.e.
"every high melting point metal particle in the preform is spaced from top
and bottom surfaces of the preform"). As correctly noted by the Examiner
(Final Act. 4), the Specification does not explicitly state that every particle is
spaced from the top and bottom of the preform and is covered by solder on
its upper and lower portions. However, we find that a person of ordinary
skill in the art, reading the passage quoted above, would have understood
that having each particle covered by solder would achieve the goal described
therein (avoiding exposed metallic particles) and, therefore, the passage
"describes" this element of the claimed invention within the meaning of§
112, first paragraph. Ralston Purina Co., 772 F.2d at 1575.
Claims 15 and 17 stand rejected under§ 112, first paragraph, because
the Examiner finds that the requirement that "each of the high melting point
metal particles is covered with a solder layer over its entire surface" is not
described in the Specification within the meaning of§ 112 (Final Act. 5).
We find that this limitation is also described in the Specification, for
essentially the same reasons as discussed above in connection with claim 13.
That is, page 16 of the Specification describes, within the meaning of§ 112,
first paragraph, that each of the metal particles is covered by solder (i.e., "is
covered with a solder layer over its entire surface").
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Appeal 2016-006898
Application 12/923 ,319
Claims 16 and 18 are rejected under§ 112, first paragraph, because,
according to the Examiner, the Specification does not describe that the metal
particles are present as discrete particles and not in the form of chains (Final
Act. 5). We agree with Appellants (see Br. 57-61) that a preponderance of
the evidence of record (including the Specification, Figures 1 and 2, and the
Rule 132 Declarations) supports a finding that the Specification inherently
discloses that the metal particles are present as discrete particles without
being formed into chains.
Accordingly, we reverse the rejections under 35 U.S.C. § 112, first
paragraph.
Rejections 2 and 3. The dispositive limitations for these rejections
are common to all of the claims and, according to the Examiner, are
suggested by Jin. Therefore, we will consider Rejections 2 and 3 together.
Claims 1 and 14 each recite that the metal particles are "uniformly
dispersed in solder in an unordered manner." The Examiner finds that this
limitation is disclosed by the chains of particles taught by Jin (Ans. 9, citing
Jin, Fig. 3). However, as explained by Appellants (e.g. Br. 13-14), the
chains shown in Jin are either in a vertical orientation (Jin, Fig. 2), or by
being connected to each other to form chains which extend from the bottom
to the top surfaces of the molten solder matrix (Jin, Fig. 3). When the
particles are connected in the form of chains, they cannot be said to be
present in an unordered manner as the location of each particle in the chain
is dictated by the presence of the other particles. In fact, Jin itself describes
that the particles in its material are "arranged[ d] ... into an ordered
distribution or pattern" (Jin 3 :47-50).
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Application 12/923 ,319
In order to properly reject the claims under§ 103(a), the Examiner
must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417-18 (2007). In this instance, the preponderance of the
evidence does not support the Examiner's finding that Jin (or the secondary
references) discloses or otherwise renders obvious a preform containing
metal particles present in an unordered manner. Accordingly, we reverse the
rejection of claims 1 and 14. As the remaining claims depend from either
claim 1 or 14, we also reverse their rejection under§ 103(a).
CONCLUSION
We REVERSE the rejection of claims 13 and 15-18 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
We REVERSE the rejection of claims 1, 4, 6-8, 10, and 14 under
35 U.S.C. § 103(a) as unpatentable over Jin in view ofTiedema.
We REVERSE the rejection of claims 11and12 under 35 U.S.C. § 103(a)
as unpatentable over Jin and Tiedema, and further in view of Hack.
REVERSED
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