Ex Parte Macover

Board of Patent Appeals and Interferences

Mar 23, 2007

10083588 (B.P.A.I. Mar. 23, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ERAN MACOVER
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Appeal 2007-0888
Application 10/083,588
Technology Center 1700
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Decided: March 23, 2007
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Before CHARLES F. WARREN, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 3 and 4. We have jurisdiction under 35 U.S.C. § 6 (2006).
We AFFIRM.
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Appellant invented a wire bonding capillary for pressing a metal wire
against an electrode pad (Specification 1). This claimed wire bonding
capillary is defined by independent claim 3 as follows:
3. A method for preparing a wire bonding capillary comprising the
steps of:

(a) providing a wire bonding capillary for pressing a metal wire
against an electrode pad comprising a capillary tip having a
pressing face; and

(b) coating all of said pressing face of said capillary tip with a layer of
polymeric material, said polymeric material including at least one
thermoplastic polymer.
The prior art set forth below is relied upon by the Examiner as
evidence of obviousness:
Gilding US 4,049,506 Sep. 20, 1977
Evans US 4,950,365 Aug. 21, 1990
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilding in view of Evans.
The Examiner finds that claim 3 distinguishes from the method for
preparing a wire bonding capillary of Gilding in that the protective coating
on the titanium carbide layer is a silicone material and not a thermoplastic
polymer (Answer 4). The Examiner finds that Evans describes the use of
thermoplastic polymers comprising poly-p-xylene as coatings over hard
metal layers such as titanium carbide for corrosion resistance (Answer 4).
The Examiner concludes that it would have been obvious for one of ordinary
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skill in this art to utilize the thermoplastic polymers comprising poly-p-
xylene as a protective layer in the wire bonding capillary of Gilding
(Answer 4).
The Appellant argues that the Examiner’s conclusion of obviousness
is incorrect as the present invention is not utilizing parylene coatings for
wear resistance and corrosion resistance properties described by Evans, and
therefore, is not solving the same problem as the presently claimed invention
(Br. 8). Appellant further argues that since the parylene composition is worn
away from the surface and results in a residual parylene composition that
inhibits corrosion, the resulting invention would not achieve the object of the
present invention to inhibit the buildup of contaminant deposits on the
surface of the wire bonding capillary (Br. 9).
Issue
Would one with ordinary skill in this art have reasonably expected
success in combining the teachings of Gilding and Evans in the manner
proposed by the Examiner?
Findings of Fact
Appellant invented a method of preparing a wire bonding capillary for
pressing a metal wire against an electrode pad (Specification 1). The wire
bonding capillary has at least a part of the pressing face of the capillary tip
coated with a layer of polymeric material, said polymeric material includes
at least one thermoplastic polymer such as parylene (Specification 6: 23-25).
Gilding describes coatings for microstructural capillary type bonding
tools (col. 2, ll. 57-59). Gilding further describes the application of a
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silicone rust-protective coating to bonding tools formed of a material subject
to rusting such as titanium carbide and tool steel (col. 8, ll. 35-46).
Evans describes a method for the coating substrates of tools that
receive some physical wear during use so that the substrate is wear-resistant,
decorative, and corrosion free even after substantial use (col. 3, ll. 59-64).
Evans discloses the corrosion resistance protective thermoplastic polymer
coating comprising parylene, a generic term for unsubstituted and
substituted poly-p-xylenes, for hard metal layers such as titanium carbide
(col. 2, ll. 30-36; col. 3, l. 66 to col. 4, l. 10; col 5, ll. 44-54).
Principles of Law
Obviousness under 35 U.S.C. § 103 does not require absolute
predictability of success. In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988). For obviousness under § 103, all that is
required is a reasonable expectation of success. Id.
The motivation to combine or modify the references does not have to
be identical to that of Appellant to establish obviousness. In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
Analysis
Appellant argues that the Examiner’s conclusion of obviousness is
incorrect as the present invention is not utilizing parylene coatings for wear
resistant and corrosion resistant properties described by Evans, and
therefore, is not solving the same problem as the presently claimed invention
(Br. 8). The motivation to combine or modify the references does not have
to be identical to that of Appellant to establish obviousness. Since parylene
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coatings have corrosion resistant properties, a person of ordinary skill in this
art who was interested in the corrosion resistance property would have been
motivated to use the parylene coating in place of the silicone corrosion
resistant composition in the method of coating a bonding capillary described
in Gilding.
Appellant further argues that since the parylene composition is worn
away from the surface and results in a residual parylene composition that
inhibits corrosion, the resulting invention would not achieve the object of the
present invention to inhibit the buildup to contaminate deposits on the
surface of the wire bonding capillary (Br. 9). Appellant’s argument is not
persuasive because the cited references provide motivation for applying a
parylene composition to the bonding tool of Gilding. The coated bonding
tool would have the same properties as argued by Appellant. The motivation
to combine or modify the references does not have to be identical to that of
Appellant’s to establish obviousness.
We are convinced by these circumstances that a reasonable
expectation of success exists for the Examiner’s proposed combination of
the Gilding and Evans teachings. Therefore, the record before us, on
balance, establishes an unpersuasively-rebutted prima facie case of
obviousness with respect to each of the Examiner’s rejection.
Conclusion of Law
Based on the record of this appeal, one with ordinary skill in this art
would have had a reasonable expectation that a method for preparing a wire
capillary tip having a pressing face, wherein the pressing face of the
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capillary tip is coated with a layer of polymeric material as disclosed in
Gilding could comprise a corrosion resistant protective thermoplastic
polymer coating comprising parylene for the hard metal layers such as
titanium carbide as described by Evans in the manner proposed by the
Examiner.
Order
The decision of the Examiner rejecting claims 3 and 4 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
AFFIRMED

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