Ex Parte Kuramoto et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201711793054 (P.T.A.B. Feb. 24, 2017) 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. 11/793,054 02/29/2008 Takeo Kuramoto 1104 8947 27649 7590 02/24/2017 MTfTTAFJ. TORT AS EXAMINER 1629 K ST NW SHEIKH, HUMERA N SUITE 300 WASHINGTON, DC 20006 ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 02/24/2017 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 TAKEO KURAMOTO and KAICHI TSURUTA Appeal 2015-008284 Application 11/793,054 Technology Center 1700 Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and JULIA HEANEY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 8—11 and 16—28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on February 13, 2017. STATEMENT OF THE CASE Claim 8 is illustrative of Appellants’ subject matter on appeal and is set forth below (with disputed limitations in bold for emphasis): 8. A solder precoating method comparing: applying an adhesive atop substrate; Appeal 2015-008284 Application 11/793,054 dispersing a solder powder atop the adhesive in an amount greater than an amount necessary to completely cover the adhesive and adhering a single layer of solder powder to the adhesive; removing from the substrate excess solder powder not in the single layer; coating a surface to be soldered of a workplace with flux; stacking the surface of the substrate to which solder powder is adhered and the flux-coated surface of the workpiece and applying pressure; heating the stacked substrate and workpiece to adhere the solder adhered to the areas to be soldered of the workpiece; and removing adhered solder from locations on the workpiece other than the areas to be soldered of the workpiece. THE REJECTIONS 1. Claims 8—11, 16 and 18—19 are rejected under 35 U.S.C. §103(a) as being unpatentable over Jin et al. (US 5,846,366, issued Dec. 8, 1998, hereafter “Jin”) in view of Kuramoto et al. (US 5,928,440, issued July 27, 1999, hereafter “Kuramoto”). 2. Claims 17 and 20-28 are rejected under 35 U.S.C. §103(a) as being unpatentable over Jin, Kuramoto, and further in view of Kulesza et al. (US 6,138,348, issued Oct. 31, 2000, hereafter “Kulesza”). ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPA1 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. 2 Appeal 2015-008284 Application 11/793,054 Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After having considered the evidence presented in this Appeal and each of Appellants’ contentions, we are persuaded that Appellants have identified reversible error for the reasons stated in the record by Appellants. We add the following for emphasis only. Notwithstanding the Examiner’s position to the contrary, we agree with Appellants that Jin’s objective is to provide a solder particle coverage that is restricted to particular areas of a carrier sheet rather than to the entire area of a carrier sheet as required by Appellants’ claims (e.g., the solder particles 20 shown in Jin’s Figure 4 are not melted together). Appeal Br. 16, 18—20; see also Jin col. 5,11. 12—32. Kuramoto also provides no basis to alter Jin’s objective in forming such solder particle coverage on the carrier sheet to minimize undesirable electrical shorting between adjacent contact pads. We thus agree with Appellants that there is insufficient motivation to make the modification as proposed by the Examiner. “If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); see also Ex parte Hartman, 186 USPQ 366, 367 (Bd. App. 1974)(“Reynold cannot properly be combined with Graham et al relative to the employment of continuous monofilaments since to do so would destroy that on which the invention of Graham et al is based, namely , the use of very short fibers.”) In view of the above, we reverse each rejection. 3 Appeal 2015-008284 Application 11/793,054 DECISION Each rejection is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation