Ex Parte Nakayoshi et al

Patent Trial and Appeal Board

Dec 13, 2012

10598967 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/598,967 07/11/2007 Kazumi Nakayoshi DC10031PCT
(71,051-070)
2691
27305 7590 12/14/2012
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
LAM, CATHY FONG FONG
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
12/14/2012 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 KAZUMI NAKAYOSHI,
KATSUTOSHI MINE, and AKIHIKO KOBAYASHI
__________

Appeal 2011-011676
Application 10/598,967
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-5, 7, and 9-13. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is directed to a metal base circuit substrate
having a transparent cross-linked silicone on a metal substrate and methods
for producing such a substrate (Spec. paras. [0001], [0005]).
Claims 1 and 5 are illustrative:
1. A metal base circuit substrate for an optical device
comprising a metal base substrate made from aluminum or
aluminum alloy that supports an electric circuit via an
insulation layer, wherein said insulation layer is formed from a
transparent cross-linked silicone body having a light
transmission of not less than 80%, and said electric circuit is
formed directly on said insulation layer.
5. A method of manufacturing a metal base circuit
substrate for an optical device comprising the steps of:
a) applying a cross-linkable silicone onto the surface of a
metal base substrate made from aluminum or aluminum alloy;
b) cross-linking said silicone, thereby forming an
insulation layer from a transparent cross-linked silicone body
having a light transmission of not less than 80%; and then
c) forming an electric circuit directly on said insulation
layer either by (i) forming a conductive layer by electrolytic or
non-electrolytic plating with subsequent etching, or (ii) by
printing with a conductive ink.
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Appellants appeal the following rejections:
1. Claims 1, 3-5, 7, 9-12, and 13 are rejected under 35 U.S.C. § 102(b)
as being unpatentable over the combined teachings of Wolter
(US 5,116,472 issued May 26, 1992).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined teachings of Wolter in view of Hamakawa
(US 4,612,409 issued Sept. 16, 1986).

With regard to rejection (1), Appellants argue the subject matter common
to independent claims 1 and 5 only (App. Br. 12-16). We select claim 1 as
representative. Claim 2 of rejection (2) will stand or fall with our
assessment of claim 1.

ISSUE
Did the Examiner reversibly err in finding that Wolter’s disclosures of a
colorless cross-linked silicon resin atop an aluminum substrate made using
the same material and method inherently possesses the claimed light
transmission of not less than 80% and thereby anticipates the claim? We
decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
The Examiner finds that Wolter teaches a cross-linked silicone
coating that is applied to an aluminum substrate (Ans. 3-4). The Examiner
finds that Wolter teaches and exemplifies “colorless” or clear silicone resins
applied to the aluminum substrate (id. at 4, 6). The Examiner finds that
Wolter teaches forming the silicone layer using a condensation or ultraviolet
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(UV) radiation (id. at 4). The Examiner finds that since the same materials
and same method of making are taught by Wolter and Appellants, the
silicone layer formed by Wolter on the aluminum substrate would inherently
possess the same properties as claimed (i.e., the light transmission properties
and dielectric constant) (id.).
Appellants argue that the Examiner has not established that each and
every element of the claimed invention is either expressly or inherently
disclosed by Wolter (App. Br. 12). Appellants argue that the Examiner has
failed to provide any reasoning whatsoever to support a position that the
instantly claimed transparency and light transmission are necessarily present
in Wolter (id. at 13). Appellants contend that the Examiner’s finding that
the same materials processed by the same method would inherently have the
same property is based on the incorrect assumption that all silicones possess
the same physical properties (id. at 14). Appellants contend that Wolter
teaches that different physical properties (i.e., color) result for silicones
processed in different ways and that Wolter only discloses one type of
silicone chemistry (i.e., condensation-curable silicones) (id.). Appellants
argue that the Examiner’s finding that “colorless” means transparent is
incorrect because colorless means “white” or without color, not transparent
with at least 80% light transmission (id. at 14-15; Reply Br. 4).
Contrary to Appellants’ arguments, the Examiner provides reasoning
based upon the similarity of the materials and the method of forming the
materials (i.e., condensation reactions) as providing a basis for finding that
Wolter’s material possesses the transparency and light transmission
properties. As conceded, Appellants may use a condensation process to
form their silicone layer (Reply Br. 4). We note that the claim does not
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require any particular cross-linked silicone. The only claimed requirements
that limit the cross-linked silicone are that the silicone is transparent and has
at least 80% light transmission.
Based on the Examiner’s finding that Wolter exemplifies forming on
an aluminum substrate a colorless resin by applying a clear1 (i.e.,
“transparent”) silicone coating solution formed by a condensation reaction,
we find that the Examiner has dispensed with her burden of establishing a
prima facie case of anticipation of the claimed invention. In re Best, 562
F.2d 1252, 1255 (CCPA 1977). The fact that the resin applied is clear in
Wolter’s example 1 and the resulting silicone layer is colorless reasonably
includes a transparent layer (Ans. 6). That the same materials (i.e., silicone)
are used and the same method is used to form the resin, it is reasonable to
find that a silicone layer with at least 80% light transmission would result.
Therefore, the burden rests with Appellants to show that Wolter’s
silicone resin layer does not possess the same properties. Best, 562 F.2d at
1255. Appellants’ mere attorney argument is insufficient to satisfy this
burden. While, Appellants contend that Wolter’s “colorless” disclosure
means that the silicon layer formed is “white”, Appellants concede that
colorless does not necessarily mean that the film is white or opaque (Reply
Br. 4). Appellants do not specifically address the Examiner’s findings that
Wolter’s material used to make the silicone coating and method are identical
to those claimed and disclosed by Appellants. Rather, Appellants’
arguments address the differences that may result if different silicones are
used or what may be the meaning of colorless. Appellants have not satisfied

1 WEBSTER’S NEW WORLD DICTIONARY OF THE AMERICAN LANGUAGE
COLLEGE EDITION 271 (1961).
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their burden of showing that Wolter’s silicone film fails to satisfy the
claimed properties of the film.
On this record, the preponderance of the evidence favors the
Examiner’s finding of anticipation and conclusion of obviousness. We
affirm the Examiner’s § 102(b) and § 103(a) rejections.
DECISION
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.

ORDER
AFFIRMED

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