Ex Parte Morita et al

Patent Trial and Appeal Board

Jan 31, 2019

13816206 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/816,206 03/18/2013
42798 7590 02/01/2019
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Masaki Morita
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.
20371-134953 1010
EXAMINER
MCCLURE, CHRISTINA D
ART UNIT PAPER NUMBER
1718
MAIL DATE DELIVERY MODE
02/01/2019 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 MASAKI MORITA, KONATSU NAKAMURA, and
SHIN TAKANEZA WA
Appeal2018-000612
Application 13/816,206
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 12 and 28-34. 3 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed February 8,
2013 ("Spec."); Final Office Action dated October 6, 2016 ("Final Act.");
Advisory Action dated January 23, 2017 ("Adv. Act."); Appeal Brief filed
May 19, 2017 ("Br."); and Examiner's Answer dated August 24, 2017
("Ans.").
2 Appellants identify Hitachi Chemical Company, Ltd. as the real party in
interest. Br. 2.
3 Claims 1-7, 26, and 27 are withdrawn and claims 8-11, 13-25, 29, and 30
canceled. Br. 5, 27-29.
Appeal2018-000612
Application 13/816,206
The Claimed Invention
Appellants' disclosure relates to a method for manufacturing a wiring
board, the wiring board having an insulating resin layer formed from a resin
composition. Spec. ,r 1. Claim 12 is illustrative of the claimed subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (Br. 27-28):
12. A method for manufacturing a wiring board having
an insulating resin layer formed from a resin composition
containing an epoxy resin having two or more epoxy
groups in one molecule thereof and having a structural
unit derived from an alkylene glycol having a carbon
number of from 3 to 10 in a main chain thereof, an active
ester group-containing compound, and an epoxy resin
curing accelerator, which performs successively
a laminate forming step of forming a laminate
having the insulating resin layer and a support such that
the insulating resin layer faces a wiring circuit of a
circuit-provided insulating substrate,
a hole forming step of providing a hole in the
laminate,
a desmearing treatment step of removing a smear
within the hole with a desmearing treatment liquid,
a support removal step of removing the support
from the laminate, and
a wiring forming step of forming wiring on the
surface of the insulating resin layer from which the
support has been removed, wherein
a step of irradiating ultraviolet rays on the
insulating resin layer is included after the laminate
forming step and before the wiring forming step, the
irradiation with ultraviolet rays performed using an
ultraviolet ray lamp, and wherein the insulating resin
layer is not treated with an oxidizing roughening liquid
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Application 13/816,206
during the step of irradiating ultraviolet rays on the
insulating resin layer.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Sugioka et al.,
("Sugioka")
Lake
Kondo et al.,
("Kondo")
Heishi et al.,
("Heishi")
us 5,733,823
us 5,987,739
US 2009/0288870 Al
WO 2010/024391 Al
The Rejections
Mar. 31, 1998
Nov. 23, 1999
Nov. 26, 2009
Mar. 4, 2010
On appeal, the Examiner maintains (Ans. 4) the following rejections4:
1. Claims 12, 29, 31, and 33 rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kondo in view of Lake and Heishi ("Rejection 1 ").
Ans. 3.
2. Claims 28, 30, 32, and 34 rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kondo in view of Lake, Heishi, and Sugioka
("Rejection 2"). Ans. 11.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
4 For both Rejections 1 and 2, the Examiner's citations to the Heishi
reference are to the English translation, Heishi et al., US 2011/0217512 A 1,
published Sep. 8, 2011. Ans. 4, 11.
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Application 13/816,206
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below.
Reiection 1
Appellants argue claims 12, 29, 31, and 33 as a group. Br. 5. We
select claim 12 as representative, and the remaining claims subject to this
rejection stand or fall with claim 12. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Kondo, Lake, and
Heishi suggests a method for manufacturing a wiring board satisfying all of
the steps of claim 12 and thus, concludes that the combination would have
rendered the claimed subject matter obvious. Ans. 4--8 ( citing Kondo,
Abstract, Figs. 4A--4C, 5A-5C, 6A---6C, ,r,r 8, 26, 43--45, 48, 53, 54, 61, 65;
Lake, Abstract, 7:26-28, 7:42--44, 8:26--44, 10:2---6, 13:37--42; Heishi,
Abstract, ,r,r 1, 14, 15, 26, 39, 41, 50, 51, 104, 105, 128, 169, 177,179,187,
188, Figs. 1, 2, 3A-3D).
Appellants argue that the Examiner's rejection should be reversed
because "a person skilled in the art would not have reasonably expected a
successful outcome ... in view of the teachings of Kondo, Heishi, and
Lake." Br. 6. In particular, Appellants contend that a person of ordinary
skill in the art would not have had a reasonable expectation of success in
combining the teachings of the cited art because: (1) Lake and Heishi are
directed to different materials and goals (Br. 6, 7); (2) Lake's dry UV
treatment would remove what Heishi teaches is essential for successfully
adhering a wiring layer to an epoxy resin (id. at 6); and (3) Lake's dry UV
treatment would lead to conditions that Heishi teaches are detrimental to
properly adhering a wire layer to an epoxy resin (id. at 6).
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We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination that the combination of Kondo, Lake,
and Heishi suggests a method for manufacturing a wiring board satisfying all
of the steps of claim 12, and the Examiner's conclusion that the combination
would have rendered the claim obvious. Kondo, Abstract, Figs. 4A--4C,
5A-5C, 6A-6C, ,r,r 8, 26, 43--45, 48, 53, 54, 61, 65; Lake, Abstract, 7:26-
28, 7:42--44, 8:26--44, 10:2---6, 13:37--42; Heishi, Abstract, ,r,r 1, 14, 15, 26,
39, 41, 50, 51,104,105,128,169,177,179,187,188, Figs. 1, 2, 3A-3D.
The Examiner also provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
skill would have combined the teachings of the cited references to arrive at
Appellants' claimed method and would have had a reasonable expectation of
success in doing so. Ans. 6, 8. See also KSR Int 'l Co. v. Teleflex, Inc., 550
U.S. 398,420 (2007) (explaining that any need or problem known in the art
can provide a reason for combining the elements in the manner claimed).
Appellants fail to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
We do not find Appellants' argument that a person would not have
had a reasonable expectation of success because Lake and Heishi are
directed to different materials and goals (Br. 6, 7) persuasive based on the
fact-finding and well-stated reasoning provided by the Examiner at pages
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20-23 of the Answer. In particular, we concur with the Examiner's
determination (Ans. 21) that, based on Lake's teaching that UV treatment
without an oxidizing liquid improves the adhesion of the conductive trace
and is an alternative to a plasma or corona treatment to break surface bonds
(Lake, 2:13-22, 3:63--4:7, 6:50-64, 10:6-9, 10:16-26), and Kondo's
teaching regarding the use of UV treatment for surface roughening to
improve adhesion of a metal layer as an alternative to a plasma treatment
(Kondo ,r,r 8, 22, 61, 63), it would have been obvious to a person having
ordinary skill in the art at the time of the invention that the UV treatment
alone without oxidizing liquid would have been reasonably expected to
improve the adhesion between the polymer surface and the metal layer.
Appellant's arguments at pages 6-9 of the Appeal Brief are not
persuasive of reversible error because they are largely conclusory, and
Appellants do not provide an adequate technical explanation or direct us to
persuasive evidence in the record to support them. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, the fact that Lake and Heishi may be directed to "different
goals," without more, is not persuasive of reversible error because the
references need not be directed to the same problem that Appellants'
claimed invention addresses. KSR, 550 U.S. at 420 (in making an
obviousness determination, cautioning that it is error to "look only to the
problem the patentee [ or applicant] was trying to solve").
We do not find Appellants' argument that Lake's dry UV treatment
would remove what Heishi teaches is essential for successfully adhering a
wiring layer to an epoxy resin (Br. 6) persuasive based on the fact-finding
and for the reasons provided by the Examiner at page 23 of the Answer. In
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particular, as the Examiner finds (Ans. 23) and contrary to what Appellants'
argue, although Heishi discusses using a roughening liquid when a
roughening treatment is performed (Heishi ,r 37), Heishi's method does not
require that a roughening step be performed (id. ,r 201 ( disclosing that
"[t]here is no particular limitation in the method for performing the
roughening treatment")). Thus, as the Examiner finds (Ans. 23), the
inclusion of a roughening liquid would not have been considered by one of
ordinary skill to be essential.
Appellants' argument that Lake's dry UV treatment would lead to
conditions that Heishi teaches are detrimental to properly adhering a wire
layer to an epoxy resin (Br. 6) is equally unpersuasive. As the Examiner
finds (Ans. 23-24), although Heishi discusses that the temperature and
heating time during curing needs to be adjusted to provide sufficient cooling
(Heishi ,r,r 195-196), there is no teaching or suggestion that over curing or
fully curing the epoxy would necessarily provide undesirable results, as
Appellants argue. Appellants' arguments do not reveal reversible error in
the Examiner's factual findings and analysis in this regard.
Appellants argue that Kondo and Heishi teach away from the claim
step of "irradiating ultraviolet rays on the insulating resin layer is included
after the laminate forming step and before the wiring forming step ...
wherein the insulating resin layer is not treated with an oxidizing roughening
liquid during the step of irradiating ultraviolet rays on the insulating resin
layer." Br. 12-13 (citing Kondo ,r,r 61, 63, claim 4; Heishi ,r 201). In
particular, Appellants contend that paragraph 61 of Kondo discloses
utilization of a UV irradiation process including dipping of an insulation
layer in a Ti02 solution and, when read as a whole with paragraph 63 and
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claim 4 of Kondo, it shows that an oxidizing liquid is present during the UV
treatment of Kondo. Id. at 13. Appellants also contend that paragraph 201
of Heishi discloses a roughening treatment including an oxidizing liquid. Id.
at 13.
We do not find Appellants' teaching away argument persuasive of
reversible error because those portions of Kondo and Heishi upon which
Appellants rely do not "criticize, discredit, or otherwise discourage the
solution claimed." In re Fulton, 391 F.3d 1195, 1201 (finding that there is
no teaching away where the prior art's disclosure "does not criticize,
discredit, or otherwise discourage the solution claimed"). We will not read
into the references a teaching away where no such language exists. Cf
DyStar Textilfarben GmbH v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed.
Cir. 2006).
Moreover, as the Examiner finds (Ans. 25-26), although paragraph 61
of Kondo describes an example of irradiating the resin while in a Ti02
suspended solution, such disclosure does not negate or teach away from
Kondo' s broad disclosure regarding treating the surface with UV irradiation
generally (i-f 61 ( disclosing that "the surface roughening of the interlayer
insulating layer 30 may be executed by UV (ultraviolet ray) irradiation")).
In re Susi, 440 F.2d 442, 445--46 (CCPA 1971) (disclosure of particularly
preferred embodiments does not teach away from broader disclosure).
Appellants' argument that paragraphs 61 and 63 and claim 4 of Kondo,
when read as a whole, show that an oxidizing liquid is present during the UV
treatment of Kondo (Br. 13) is not persuasive because Kondo's teachings are
not limited to the disclosure of specific working examples or embodiments.
In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Fracalossi, 681 F.2d 792,
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794 n.1 (CCPA 1982) (A prior art reference's disclosure is not limited to its
examples.) Indeed, all of the disclosures in a prior art reference "must be
evaluated for what they fairly teach one of ordinary skill in the art." In re
Boe, 355 F.2d 961,965 (CCPA 1966).
Contrary to what Appellants' argument suggests, paragraphs 61 and
63 of Kondo, when read in context, do not require that an oxidizing liquid be
used during the UV treatment. Rather, paragraph 63 merely describes yet
another embodiment involving a second roughening process and discloses
that "UV irradiation can be employed in the second roughening process
step" and "preferably the second roughening process step is set to the
conditions that a roughening power applied to the interlayer insulating layer
30 is made." Claim 4 of Kondo is also directed to a specific embodiment
"on which a roughening treatment is performed."
Similarly, paragraph 201 of Heishi merely discloses "examples" that
include using a roughening treatment liquid. Susi, 440 F.2d at 445--46. In
addition, paragraph 201 of Heishi broadly states that "[t]here is no particular
limitation in the method for performing the roughening treatment," which
does not require that an oxidizing liquid be used. Absent more, we are not
persuaded that such disclosure constitutes a teaching away from Appellants'
claimed method.
Appellants argue further that the claimed invention yields unexpected
results. Br. 26-27. In particular, Appellants contend that Examples 1-11,
reported in Table 1 of the Specification (Spec. ,r 105), "each displayed
unexpectedly excellent adhesion of the wiring." Br. 13.
This argument is not persuasive. In attempting to overcome a prima
facie case of obviousness by showing unexpected results, the burden rests
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with Appellants to establish (1) that the alleged unexpected results presented
as being associated with the claimed invention are, in fact, unexpected, (2)
that the comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Based on the fact-finding and for the well-stated reasons provided by
the Examiner at pages 26-27 of the Answer, we concur with the Examiner
that Appellants have not provided data sufficient to show that there is
actually a difference between the results obtained through the claimed
method and those of the closest prior art (Kondo). As the Examiner finds
(Ans. 27), the experimental results provided in Table I do not include any
comparison between UV treatment in conjunction with an oxidizing liquid
and UV treatment without an oxidizing liquid. Appellants also do not
adequately explain why the alleged improvements in adhesion Appellants
contend are shown in Table I are considered to be unexpected results and not
just typical results by one of ordinary skill in the art. Klosak, 455 F .2d at
1080 ("[T]he burden of showing unexpected results rests on [ the applicant]
who asserts them.").
As the Examiner further finds (id. at 27), the data provided in Table I
do not indicate that improved results would be expected over the full range
of UV active esters. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
("Evidence of secondary considerations must be reasonably commensurate
with the scope of the claims.").
Appellants' assertion that "each displayed unexpectedly excellent
adhesion of the wiring" (Br. 13) is conclusory and, without more,
insufficient to establish unexpected results. De Blauwe, 736 F.2d at 705 ("It
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is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.").
Accordingly, we affirm the Examiner's rejection of claims 12, 29, 31,
and 33 under 35 U.S.C. § 103(a) as obvious over the combination of Kondo,
Lake, and Heishi.
Reiection 2
Appellants do not present any additional substantive arguments in
response to the Examiner's Rejection 2, stated above. Rather, Appellants
repeat and rely on principally the same arguments previously presented
above in response to the Examiner's rejection of claim 12 (Rejection 1,
stated above). Compare Br. 15-25 (Appellants' response to Rejection 2),
with Br. 5-15 (Appellants' response to Rejection 1).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming the
Examiner's Rejection 1, we affirm the Examiner's Rejection 2.
DECISION/ORDER
The Examiner's rejections of claims 12 and 28-34 are affirmed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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