10871048 (B.P.A.I. Mar. 27, 2009)

Ex Parte Naitoh

Board of Patent Appeals and InterferencesMar 27, 2009

10871048 (B.P.A.I. Mar. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KATSUYUKI NAITOH ____________ Appeal 2008-5791 Application 10/871,048 Technology Center 1700 ____________ Decided:1 March 27, 2009 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 8-16. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM for the reasons expressed in the Answer and below. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-5791 Application 10/871,048 STATEMENT OF THE CASE Appellant claims a method for bonding a reinforcing plate to a flexible substrate comprising placing a reinforcing plate coated with an adhesive on a supporting paper sheet, supplying the reinforcing plate and a flexible substrate to a pressure-bonding part, and thermocompression bonding the reinforcing plate and flexible substrate together. Further details concerning this claimed subject matter are set forth in representative independent claim 8 which reads as follows: 8. A method for bonding a reinforcing plate to a flexible substrate, the method comprising: preparing a polyimide resin reinforcing plate coated with an adhesive and previously subjected to drying treatment in vacuum condition; continuously or intermittently sending a long tape-shaped flexible substrate to a pressure-bonding part while sending the reinforcing plate to a predetermined position of the pressure-bonding part; superposing the reinforcing plate and the flexible substrate by pressure; heating the resultant laminate simultaneously with or immediately after the superposing; carrying out thermocompression bonding of the reinforcing plate and the flexible substrate; and wherein the reinforcing plate is composed of a plurality of sheets with a prescribed shape and supplying the reinforcing plate to the pressure- bonding part while placing the plate on one sheet of a supporting paper sheet. 2 Appeal 2008-5791 Application 10/871,048 The references set forth below are relied upon by the Examiner as evidence of obviousness: Eigenmann US 4,792,259 Dec. 20, 1988 Sakaguchi US 5,260,130 Nov. 9, 1993 Larsen US 5,302,222 Apr. 12, 1994 Coverdell US 5,525,405 Jun. 11, 1996 Reeder US 2002/0028599 A1 Mar. 7, 2002 Nitta JP 61-211016 Sep. 19, 1986 Yamamori JP 10-192773 Jul. 28, 1998 Hirayama JP 11-274243 Oct. 8, 1999 Saito JP 15-049018 Feb. 21, 2003 The Examiner rejects the appealed claims under 35 U.S.C. Â§ 103(a) as follows: (a) claims 8, 9, and 11-13 are rejected over Nitta in view of Coverdell, Yamamori, Saito, and Sakaguchi; (b) claim 10 is rejected over the first mentioned references and further in view of Reeder; (c) claims 14 and 15 are rejected over the first mentioned references and further in view of Hirayama; and (d) claim 16 is rejected over the first mentioned references and further in view of either Larsen or Eigenmann. ISSUES Regarding independent claim 8, has Appellant shown error in the Examiner's conclusion that it would have been obvious "to supply the polyimide reinforcing plate [coated with an adhesive layer] as taught by Nitta as modified by Coverdell . . . to the thermocompression bonding process while supported on a removable paper sheet as shown by Sakaguchi 3 Appeal 2008-5791 Application 10/871,048 . . . to temporarily protect the adhesive layer on the polyimide reinforcing plate from inadvertent sticking" (Ans. 5)? Regarding dependent claim 16, has Appellant shown error in the Examiner's conclusion that it would have been obvious "to supply the reinforcing plates on supporting paper sheets as taught by Nitta as modified by Coverdell . . . , Yamamori . . . , Saito . . . , and Sakaguchi . . . as a plurality of reinforcing plates placed on a supporting paper sheet as shown by either one of Larsen . . . or Eigenmann to continuously supply the reinforcing plates" (Ans. 9)? FINGINGS OF FACT The Examiner's findings concerning the prior art applied against claim 8 (Ans. 3-6) are not disputed by Appellant (Br. 10-11). However, Appellant emphasizes the undisputed fact that "[t]he paper in Sakaguchi is placed over the plastic film [which the examiner equates with the claimed reinforcing plate] for temporary protection [, and,] [t]hus, in Sakaguchi, the plastic film is not placed on a supporting paper sheet" (Br. 10). Similarly, Appellant does not dispute the Examiner's findings concerning the references applied against claim 16 (Ans. 8-9) but instead emphasizes the undisputed fact that "Eigenmann relates to applying retroreflecting elements onto a road surface, and is unrelated to the technology of the references applied to claim 8 [and that,] [l]ikewise, Larsen relates to a roll of stickers and is unrelated to the references applied to claim 8" (Br. 12). PRINCIPLES OF LAW The analysis for obviousness under Â§ 103 need not seek out precise teachings directed to the specific subject matter of the challenged claim, for 4 Appeal 2008-5791 Application 10/871,048 a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. Id. at 1740. When combining reference teachings, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). For this reason, one cannot show nonobviousness by attacking references individually where the rejection is based on a combination of references. Id. at 425-26. ANALYSIS Appellant's arguments are specific to limitations in claims 8 and 16 only (Br. 10-12). Appellant does not separately argue any of the other claims on appeal including separately rejected claim 10 and claims 14-15 (Br. 11-12). Accordingly, in resolving this appeal, we focus on claims 8 and 16 only. As previously stated, Appellant emphasizes that "[t]he paper in Sakaguchi is placed over the plastic film [which the examiner equates with the claimed reinforcing plate] for temporary protection [, and,] [t]hus, in Sakaguchi, the plastic film is not placed on a supporting paper sheet" (Br. 10). Appellant then argues without further embellishment that, "[a]ccordingly, even the alleged combination (which applicant believes would be incorrect in any event) fails to meet the invention of claim 8" (id.). The Examiner has provided detailed rationale in support of a conclusion that the combined teachings of the applied references would have 5 Appeal 2008-5791 Application 10/871,048 suggested the independent claim 8 limitation "supplying the reinforcing plate . . . while placing the plate on one sheet of a supporting paper sheet" (Ans. 5, 9-10). Appellant's above-quoted argument does not address this rationale. Nor does the argument offer any reasonably specific explanation why the limitation under review would not have been suggested by the combined reference teachings when taking account of the inferences and creative steps that a person of ordinary skill in the art would employ. Under these circumstances, Appellant's argument fails to reveal error in the Examiner's conclusion of obviousness regarding independent claim 8. With respect to dependent claim 16, as previously indicated, Appellant states that Eigenmann and Larsen are unrelated to the technology of the other applied references (Br. 12). However, Appellant fails to explain why this statement is thought to militate against the Examiner's conclusion of obviousness. We emphasize that nonobviousness is not established by the mere fact that the technologies of Eigenmann and Larsen may be unrelated to the technology of, for example, the primary reference to Nitta. This is because it is well established that, "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one" (emphasis added). KSR, 127 S. Ct. at 1740. For this reason, Appellant also fails to establish error in the Examiner's obviousness conclusion regarding dependent claim 16. CONCLUSIONS OF LAW Regarding independent claim 8, Appellant has not shown error in the Examiner's conclusion that it would have been obvious "to supply the polyimide reinforcing plate [coated with an adhesive layer] as taught by 6 Appeal 2008-5791 Application 10/871,048 Nitta as modified by Coverdell . . . to the thermocompression bonding process while supported on a removable paper sheet as shown by Sakaguchi . . . to temporarily protect the adhesive layer on the polyimide reinforcing plate from inadvertent sticking" (Ans. 5). Regarding dependent claim 16, Appellant has not shown error in the Examiner's conclusion that it would have been obvious "to supply the reinforcing plates on supporting paper sheets as taught by Nitta as modified by Coverdell . . . , Yamamori . . . , Saito . . . , and Sakaguchi . . . as a plurality of reinforcing plates placed on a supporting paper sheet as shown by either one of Larsen . . . or Eigenmann to continuously supply the reinforcing plates" (Ans. 9). Because Appellant has shown no error in the Examiner's obviousness conclusion regarding independent claim 8, we sustain the Â§ 103 rejections: of claims 8, 9, and 10-13 based on Nitta, Coverdell, Yamamori, Saito, and Sakaguchi; of claim 10 over the first mentioned references and further in view of Reeder; and of claims 14-15 over the first mentioned references and further in view of Hirayama. Because Appellant also has shown no error in the Examiner's obviousness conclusion regarding dependent claim 16, we further sustain the Â§ 103 rejection of this claim based on Nitta, Coverdell, Yamamori, Saito, and Sakaguchi in view of either Larsen or Eigenmann. ORDER The decision of the Examiner is affirmed. 7 Appeal 2008-5791 Application 10/871,048 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(v)(2008). AFFIRMED cam NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 8