Ex Parte KawamuraDownload PDFPatent Trial and Appeal BoardMar 1, 201611909349 (P.T.A.B. Mar. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111909,349 06/03/2010 Noriaki Kawamura 22850 7590 03/03/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 315151USOPCT 4244 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NORIAKI KAWAMURA Appeal 2014-005611 Application 11/909 ,349 Technology Center 1700 Before PETER F. KRATZ, CATHERINE Q. TIMM, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1 and 4--8. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellant's claimed invention is directed to a metal substrate-metal impregnated carbon composite structure wherein the metal impregnated carbon composite is brazed and soldered onto an upper surface of the metal substrate. Claim 1 is illustrative and reproduced below: 1. A metal substrate-metal impregnated carbon composite structure comprising a metal substrate and a metal impregnated carbon composite brazed and soldered onto an upper surface of the metal substrate, Appeal 2014-005611 Application 11/909,349 wherein the metal impregnated carbon composite has a thickness of 0.1 to 2 millimeters, wherein a metal of the metal substrate is copper, aluminum, or alloys of these, and wherein the properties in any one direction of three axial directions of the metal impregnated carbon composite are a thermal conductivity of 100 W/m· Kor more, a thermal expansion coefficient of 4 x 10-6 /degrees centigrade to 15 x 1 o-6 I degrees centigrade, and a Young's modulus of 25 GPa or less. The Examiner relies on the following prior art reference as evidence in rejecting the appealed claims: Kiyotaka (as translated) JP 2003-133492 May 9, 2003 The Examiner maintains the following grounds of rejection: Claims 1, 4, and 6-8 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kiyotaka. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kiyotaka. We reverse the stated rejections for reasons substantially as argued by Appellant in the Appeal Brief. For each of the stated rejections, the Examiner bears the initial burden of presenting a prima facie case establishing the non-patentability of the rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Anticipation Rejection In order for the Examiner to carry the burden of establishing a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found in a single prior art reference, either expressly or under the principles of 2 Appeal 2014-005611 Application 11/909,349 inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, the Examiner has not established that Kiyotaka describes a structure corresponding to a metal substrate-metal impregnated carbon composite structure comprising a substrate that is copper, aluminum, or alloys of these metals, and a metal impregnated carbon composite that is brazed and soldered onto an upper surface of the metal substrate having all of the characteristics as required by Appellant's independent claim 1. Thus, the Examiner has not established how the cited portions of Kiyotaka describe a structure that includes elements/features that correspond to all of the recited elements/features of independent claim 1 arranged as required by claim 1, as Appellant argues (Br. 4--7). In particular, the Examiner relies on a substrate of a metal carbon complex as described in paragraphs 27 and 33 of Kiyotaka as corresponding to the metal-impregnated carbon composite of Appellant's claim 1 and a subsequently applied copper layer 9 as described in paragraph 27 of Kiyotaka as corresponding to the metal substrate of claim 1 (Ans. 3--4). As argued by Appellant, however, Kiyotaka discloses that the base material carbon complex A and copper layer 9 of Kiyotaka are adhered to each other via intervening layers, including a molybdenum layer 7 rather than describing the metal impregnated composite (base material carbon complex) as being brazed and soldered onto an upper surface of the metal substrate (copper layer 9 of Kiyotaka) so as to correspond to all of the recited elements/features of independent claim 1 arranged as required by claim 1 (Br. 4; Kiyotaka i-fi-127, 33). In this regard, and for example, the Examiner relies on the thickness of the base material A reported in 3 Appeal 2014-005611 Application 11/909,349 paragraph 33 of Kiyotaka for a description of a thickness that satisfies the claim 1 requirement for the thickness of the metal impregnated carbon composite thickness. Thus, the Examiner has not carried the burden to establish how each and every element of the claimed invention, arranged as required by Appellant's claim 1, are described in the cited and applied disclosures of Kiyotaka. It follows that we reverse the Examiner's anticipation rejection. Obviousness Rejection Dependent claim 5, as subject to the obviousness rejection maintained by the Examiner, requires the features of independent claim 1. In the stated obviousness rejection, the Examiner addresses the additional feature required by dependent claim 5 without further specifying how Kiyotaka would have suggested the features of independent claim 1, which are included in claim 5 by virtue of its dependency on claim 1 (Ans. 5---6). For reasons discussed above, the Examiner's separate rejection of dependent claim 5 falls short because the Examiner has not articulated how the obviousness position advocated for the additional feature added by claim 5 overcomes the deficiencies in the base anticipation rejection upon which the obvious rejection of claim 5 is predicated. Accordingly, we reverse the Examiner's obviousness rejection on this appeal record. CONCLUSION The Examiner's decision to reject the appealed claims is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation