Ex Parte Liu et al

Patent Trial and Appeal Board

Dec 10, 2014

11567525 (P.T.A.B. Dec. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WEIPING LIU
and NING-CHENG LEE
__________

Appeal 2013-004753
Application 11/567,525
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3–21. An oral hearing was held on November 4, 2014. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a lead-free solder alloy. Claim 1
is reproduced below from the Claims Appendix of the Appeal Brief dated
September 27, 2012 (“App. Br.”).
1. A lead-free solder alloy consisting essentially of an
amount of Ag greater than 0 wt.% and less than or equal to about 2.6
wt.%, 0.01-1.5 wt.% of Cu, and at least one of the following additives:
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Mn in an amount of 0.001-1.0 wt.%, and Ti in an amount of 0.001-0.8
wt.%, and the remainder of Sn.
App. Br. 27 (emphasis added).
Claim 14, the other independent claim on appeal, recites a lead-free solder
alloy similar to the lead-free solder alloy recited in claim 1 plus at least one of the
following additional additives: “Ce in an amount of 0.001-0.8 wt.%, Y in an
amount of 0.001-1.0 wt.%, and Bi in an amount of 0.01-1.0 wt.%.” App. Br. 28;
see also App. Br. 3 (“Claim 14 differs from claim 1 in explicitly requiring at least
one of the further additives, Ce, Y, or Bi.”).
According to the Appellants, “the addition of Mn or Ti in the claimed
amounts unexpectedly improves the drop test performance of Sn-Ag-Cu based
solders.” App. Br. 1.
The claims on appeal stand rejected as follows:
(1) claims 1 and 3–21 under 35 U.S.C. § 103(a) as unpatentable over
Takeda1 in view of JP 3862;
(2) claims 1, 3–5, and 7–21 under 35 U.S.C. § 103(a) as unpatentable
over JP 5963;
(3) claims 1, 3, 5, and 8–13 under 35 U.S.C. § 103(a) as unpatentable
over JP 0764 or JP 5915;

1 US 6,228,322 B1, issued May 8, 2011.
2 JP 2179386 (A), published July 12, 1990. According to the bibliographic data of
JP 2179386 (A), this document was also published as “JP 2667690 (B2).” In this
Decision on Appeal, we cite to the English translation of “JP, 2667690, and B”
dated November 22, 2011, which is of record in the instant Application.
3 JP 2002248596 (A), published September 3, 2002. In this Decision on Appeal,
we cite to the English translation dated June 18, 2009, which is of record in the
instant Application.
4 JP 2005-014076 (A). In this Decision on Appeal, we cite to the English
translation dated January 5, 2009, which is of record in the instant Application.
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(4) claim 6 under 35 U.S.C. § 103(a) as unpatentable over JP 596 in view
of Takeda; and
(5) claims 4, 6, 7, and 14–21 under 35 U.S.C. § 103(a) as unpatentable
over JP 596, JP 076, or JP 591 in view of Takeda.
B. DISCUSSION
1. Rejection (1)
There is no dispute on this record that the Sn-Ag-Cu solder alloy disclosed
in Takeda does not contain Mn and/or Ti as recited in the claims on appeal. The
Examiner, however, finds that JP 386 “discloses that Mn, Ti, and/or Cr improve
wettability and tensile/mechanical strength of Ag-Sn based solder in the same field
of endeavor.” Ans. 3.6 Based on this finding, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art “to provide solders of
Takeda with Mn and/or Ti as taught by JP [386] because the set forth benefits and
function entail the motivation of one skilled in the art to make a claimed
compound, in the expectation that compounds similar in structure will have similar
properties.” Ans. 3.
The Appellants argue that the solders disclosed in Takeda and JP 386 “have
significant compositional and structural differences” that would have led one of
ordinary skill in the art “to expect that the teachings of JP [386] with respect to
addition of Mn or Ti would not apply to the solders of Takeda.” App. Br. 9. More
specifically, the Appellants argue:
Takeda discloses solders having a base of Sn-Ag-Bi-Cu composition
of less than 6.0 wt.% Ag . . . . Takeda teaches that when the amount
of Ag is raised above 6.0 wt.%, the structure of the solder changes.

5 JP 11-216591 (A). In this Decision on Appeal, we cite to the English translation
dated January 5, 2009, which is of record in the instant Application.
6 Examiner’s Answer dated December 21, 2012.
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Above about 6.0 wt.% Ag, needle crystals precipitate in the solder,
causing the melting point to increase and the mechanical strength to
decrease. As Takeda’s solders are limited to less than 6.0 wt.% Ag,
Takeda’s solders do not have the precipitated needle crystal structure.
By comparison, JP [386] is limited to Sn-Ag solders having Ag
content between 10 to 30 wt.%. According to Takeda’s teachings,
solders with this high an Ag content have a precipitated needle crystal
structure.
App. Br. 9 (citations omitted).
Based on the compositional and structural differences between the solders of
Takeda and JP 386, the Appellants argue that “one of ordinary skill would not be
motivated to combine the two references to arrive at the claimed invention.” App.
Br. 10.
The Examiner does not address the Appellants’ arguments relating to the
compositional and structural differences between the solder alloys disclosed in
Takeda and JP 386. Rather, the Examiner maintains that the “[A]ppellants failed
to point out the ‘structural differences’ and provide reason to support their
position.” Ans. 8.
To the contrary, the Appellants direct us to specific portions of the record
which demonstrate, by a preponderance of the evidence, that the solder alloys
described in Takeda and JP 386 have compositional and structural differences.
The Examiner does not direct us to any evidence or provide any technical
reasoning showing that, despite these differences, one of ordinary skill in the art
would have expected the claimed amounts of Mn and/or Ti to improve the
tensile/mechanical strength and wettability of the Sn-Ag-Cu solder alloy disclosed
in Takeda. In this regard, we note that the evidence of record demonstrates that
adding Mn or Ti to Sn-Ag-Cu based solders in amounts within the ranges claimed
actually reduces the tensile strength of the solder. See Liu Declaration dated
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September 15, 2011, Ex. A, Table 2.7 Moreover, JP 386 merely discloses that the
solder “shows good wetting to Cu and Ni.” JP 386, Abstract. As pointed out by
the Appellants, “‘[g]ood wetting’ does not imply, let alone teach, improved
wetting.”8 App. Br. 11.
In sum, the Examiner has failed to show that the solder alloys recited in
claims 1 and 14 are rendered prima facie obvious by the combined teachings of
Takeda and JP 386.9 Therefore, the § 103(a) rejection of claims 1 and 3–21 is not
sustained.
2. Rejections (2) and (3)
The rejections based on JP 596, JP 076, and JP 591 are stated as follows:
JP [596] discloses the features including the claimed Sn based solder
ball, paste, or BGA containing Cu, Ag, Bi, Mn, Ti, Ce, and etc.[10] . . .
JP [076] discloses the features including the claimed Sn based solder

7 The Examiner points out that the Abstract of Exhibit A teaches that an
“ascending” elastic modulus can be obtained with “a larger quantity of additives.”
The Examiner finds that “[e]lastic modulus is a ratio of stress over strain. So
elastic modulus increases when stress increases at constant strain.” Ans. 9.
Although the additives referred to in the Abstract appear to be Mn and Ti, the
Examiner has failed to show that tensile/mechanical strength is improved by
quantities of Mn and Ti that fall within the ranges recited in claims 1 and 14. See
Ans. 9.
8 Referring to the Table in JP 386, the Examiner finds that “wet ability [sic,
wettability] . . . of solders with Mn, Cr, and/or Ti is [the] same as Sn-Pb solders.”
Ans. 11 (emphasis added); see also Ans. 12. However, the Examiner’s conclusion
of obviousness is based on the finding that Mn, Ti, and/or Cr improve wettability
of Ag-Sn based solders.
9 Since the Examiner has failed to set forth a prima facie case of obviousness, it is
not necessary to consider the Appellants’ evidence of unexpected results.
10 JP 596 discloses a Sn-Zn-X solder comprising at least one of Cr, Nb, Mn, B, Si,
Ti, Zr, Hf, Ba, Li, Ca, Ce, Sr, Mg, and Al, wherein X is at least one of Cu, In, Bi,
Ge, and Ag. JP 596, Abstract.
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containing Cu, Ag, and Mn . . . .[11] JP [591] discloses the features
including the claimed Sn based solder . . . .[12] As stated in In re
Peterson, 315 F.3d 1325, 1329-30 . . . (Fed. Cir. 2003), . . . “A prima
facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art”.
Therefore, it would have been obvious to one of ordinary skill in the
art to select any portion of range, including the claimed range, from
the broader range (Ex parte Fu, 2008 WL 867826 (BPAI 2008)
disclosed in a prior art reference because the prior art reference finds
that the prior art composition in the entire disclosed range has a
suitable utility. Also see MPEP § 2131.03 and § 2123.[13]
Ans. 4. In other words, the Examiner concludes that the claimed solder alloys are
rendered prima facie obvious solely because the broad genera disclosed in JP 596,
JP 076, and JP 591 encompass the claimed alloys. See Ans. 13–14, 17.
The Appellants argue “the rejection fails to provide the requisite explanation
of the differences between the prior art and the claims and the modifications
necessary to arrive at the claimed subject matter.” App. Br. 13, 17, 19. Without
these findings, the Appellants argue the Examiner has failed “to provide the
required articulated reasoning to support the legal conclusion of obviousness.”
App. Br. 13, 17, 19.
In response, the Examiner maintains that the Appellants have failed to point
out which elements recited in the claims on appeal are not disclosed by the prior
art. Ans. 13, 16. However, the Appellants contend that the Examiner’s response

11 JP 076 discloses a solder comprising 0.02-12 % of at least one of Cu, Ag, Au,
Co, and Ni, 0.02-1.2 % of at least one of Mn, Pd, and Pt, and the balance Sn. JP
076, Abstract.
12 JP 591 discloses a Sn based solder comprising at least one of 0.1-1 wt.% Co,
0.01-0.2 wt.% Fe, 0.01-0.2 wt.% Mn, 0.01-0.2 wt.% Cr, 0.01-2 wt.% Pd, at least
one of 0.05-9 wt.% Ag, 0.5-2 wt.% Cu, 0.5-5 wt.% Sb, and the balance Sn. JP
591, Abstract.
13 These portions of the Manual of Patent Examining Procedure relate to
anticipation, not obviousness.
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“demonstrates a misunderstanding of the requirements of a prima facie case of
obviousness.” Reply Br. 13, 16, 20.14
It is well-settled that an Examiner bears the initial burden of presenting a
prima facie case of obviousness. See In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993)
(“The PTO bears the burden of establishing a case of prima facie obviousness.”).
To satisfy that burden, “[t]he patentability of a claim to a specific . . . subgenus
embraced by a prior art genus should be analyzed no differently than any other
claim for purposes of 35 U.S.C. 103.” MPEP § 2144.08(II) (8th ed., Rev. 9, Aug.
2012); see also In re Papesch 315 F.2d 381, 385 (CCPA 1963) (“The section 103
requirement of unobviousness is no different in chemical cases than with respect to
other categories of patentable inventions.”). That analysis includes determining
the scope and content of the prior art, ascertaining the differences between the
prior art genus and the claimed subgenus, determining the level of skill in the art,
and determining whether one of ordinary skill in the art would have been
motivated to select the claimed subgenus based on the disclosed prior art genus.
MPEP § 2144.08 (II) (A).
In determining the scope and content of the prior art, the Manual of Patent
Examining Procedure instructs that an Examiner should make findings as to, inter
alia, “the structure of the disclosed prior art genus and that of any expressly
described species or subgenus within the genus” and “the number of species
encompassed by the genus taking into consideration all of the variables possible.”
MPEP § 2144.08 (II) (A) (1). In determining whether one of ordinary skill in the
art would have been motivated to select the claimed subgenus from the teachings
of the prior art, the Manual of Patent Examining Procedure instructs that an
Examiner should focus on, inter alia, the size of the prior art genus, the express

14 Reply Brief dated February 21, 2013.
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teachings of the prior art, and any structural similarity between the prior art and the
claimed invention. MPEP § 2144.08 (II) (A) (4); see also In re Baird, 16 F.3d 380,
382 (Fed. Cir. 1994) (“The fact that a claimed compound may be encompassed by
a disclosed generic formula does not by itself render that compound obvious.”); In
re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (declining to extract from Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 806-09 (Fed. Cir. 1989), the rule that
“regardless of how broad, a disclosure of a chemical genus renders obvious any
species that happens to fall within it”).
In this case, the Examiner does not identify the differences between the
genera described in JP 596, JP 076, or JP 591 and the subgenera recited in claims 1
and 14, including the differences in size between the genera of the prior art and the
claimed subgenera.15 Likewise, the Examiner does not identify the modifications
in the genera described in JP 596, JP 076, or JP 591 which are necessary to reach
the claimed solder alloys. For these reasons, the Examiner has failed to provide
sufficient reasoning supported by an adequate factual basis to explain why the
disclosures of JP 596, JP 076, or JP 591 would have led one of ordinary skill in the
art to a solder alloy within the scope of claims 1 and 14.16 See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”).

15 The Appellants argue, and the Examiner does not dispute, that the genus
disclosed in JP 596 “encompasses over a million distinct elemental combinations”
and the genera disclosed in JP 076 and JP 591 encompass “a total of 217 different
elemental combinations.” App. Br. 14, 18, 20.
16 In contrast to this case, there was no dispute in Ex parte Fu, 89 USPQ2d 1115
(BPAI 2008), that the claimed surfactant was disclosed in the prior art. Id. at 1121
n.1.
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Based on the foregoing, rejections (2) and (3) are not sustained.17
3. Rejections (4) and (5)
The Examiner’s reliance on Takeda in rejections (4) and (5) does not cure
the deficiencies discussed above in connection with rejections (2) and (3).
Therefore, rejections (4) and (5) are not sustained.
C. CONCLUSION
The decision of the Examiner is reversed.

REVERSED

cdc

17 Since the Examiner has failed to set forth a prima facie case of obviousness, it is
not necessary to consider the Appellants’ evidence of unexpected results.