Ex Parte Nees et al

Board of Patent Appeals and Interferences

Mar 31, 2010

11385008 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TERRY S. NEES, THANH-HUONG T. DO,
STEVEN C. HACKETT, MATTHEW J. MICHEL,
and KATHERINE A. BROWN
____________________

Appeal 2009-009283
Application 11/385,008
Technology Center 1700
____________________

Decided: March 31, 2010
____________________

Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1 through 6, 8 through 10, and 21 through
24, which are all of the claims pending in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
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Application 11/385,008

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STATEMENT OF THE CASE
The subject matter on appeal is directed to an article. Claims 1 and 8
are illustrative:
1. An article comprising:
a continuous roll of a flexible substrate;
an adhesive covering a first surface of the flexible
substrate; and
a compressed metal powder adhered to the flexible
substrate by the adhesive, wherein the compressed metal
powder forms a pattern.

8. An article comprising:
a flexible substrate having a first surface and a second
surface opposite the first surface;
a first adhesive covering the first surface of the flexible
substrate;
a compressed metal powder adhered to the flexible
substrate by the adhesive, wherein the compressed metal
powder forms a pattern;
a second adhesive covering the second surface of the
flexible substrate; and
a compressed metal powder overlaying the second
adhesive layer.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Young US 2,963,748 Dec. 13, 1960
Cloutier US 5,114,744 May 19, 1992
Epstein US 6,478,229 B1 Nov. 12, 2002
Huggins1 GB 678,717 Jun. 3, 1957

1 Since both the Examiner and Appellants refer to this reference as the
"British patent," we do the same.
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Application 11/385,008

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Appellants appeal the Examiner's rejection of claims 1-6, 8-10, and
21-24 under 35 U.S.C. § 103(a) as unpatentable over Young or the British
Patent in view of Cloutier and Epstein.
We address the rejection with respect to claims 1 and 8 only as argued
by Appellants. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner reversibly err in determining that the combined
teachings of the cited prior art references would have suggested the
inventions recited in claims 1 and 8 within the meaning of § 103? We
decide this issue in the negative.

FINDINGS OF FACT
1. Appellants do not specifically dispute the Examiner's findings that
The British Patent teaches a printed circuit board
comprised of an electrically insulating support material, an
adhesive coating and a layer of metallic particles (page 1 L 50-
55).
The electrically insulating support material can be a
synthetic resin or a natural polymeric layer (page 2 L 1-4). The
adhesive is first coated onto the insulating support surface
followed by applying metallic particles onto the adhesive layer
(page 2 L 28-32).
. . . .
Young teaches a printed circuit board comprised of an
electrical insulating base layer (11), an adhesive layer (12) and
a metal particles layer (14); all in the named order.

The insulating base layer is a sheet of plastic material
(col 2 L 18-21). The adhesive layer corresponding to a desired
circuit pattern is formed onto the surface of the insulating base
layer (col 1 L 54-57).
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A layer of metal particles are then pressed onto the
adhesive layer surface (col 1 L 58-64).

(Compare Ans. 3-4 with App. Br. 6-10 and 12-14 and Reply Br. 4-
10). In this regard, Young and the British patent individually teach
printed circuits formed by, inter alia, die pressing metal particles,
which may be silver or copper, on an adhesive coating of an electrical
insulating material to make a circuit pattern. (Young, col. 2, ll. 15-67
and col. 1, ll. 25-30 and British patent, pp. 1 and 2). In addition, the
British patent teaches that the metal particles may also be tin. (British
patent, p. 2).
2. Young teaches that "[t]he electrical insulating material . . . may
comprise . . . polyvinylchloride . . . [or] 'Bakelite.' When a hard
material such as 'Bakelite' . . . is employed as the insulating base the
adhesive may . . . [be] a cold-pressing adhesive." (Young, col. 2, ll.
18-24). The British patent teaches that "Materials which have been
found to be useful in the process . . . are paper and fabric laminates
and moulded products . . . e.g. . . . 'Bakelite' . . . For some
applications it is desired to use as the support a paper or fabric which
has not been impregnated . . ." (British patent, p. 2, ll. 15-24).

3. Appellants do not specifically dispute the Examiner's finding that

Cloutier teaches a printed wiring board comprised of a
substrate (12), an adhesive ink (20) and a powdered metal
composition (30).
The substrate (12) is a thin film polymeric material in a
continuous roll (13) (see Figs 1 & 2). The adhesive ink (20) is
selectively formed onto the substrate surface (col 2 L 62-65).
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The powdered metal composition (30) is then applied to the
substrate via the adhesive ink (col 4 L 3-8).

(Compare Ans. 5 with App. Br. 6-10 and 12-14 and Reply Br. 4-10).

4. Cloutier teaches a circuit pattern formed by dispensing on a substrate,
which may be polyvinyl chloride (PVC), inter alia, an adhesive via an
ink jet system and a then applying a powdered metal composition,
which may be a lead/tin alloy, to form a circuit pattern. (Cloutier, col.
2, l. 35 to col. 3, l. 10, col. 4, ll. 3-10, and col. 5, ll. 19). In addition,
Cloutier teaches that "[t]o implement the present invention on a
massproduction [sic] scale, it is desirable to dispense the substrate
from a roll . . . although the substrate may be in the form of a single
flat sheet." (Cloutier, col. 2, ll. 43-46) (feature numbers omitted).
5. Appellants do not specifically dispute the Examiner's finding that
Epstein teaches a flexible RFID transponder tape
comprised of a plurality of antenna coils (20), an upper and a
lower layers of insulating webs (4,6), a thin organic polymer
substrate (22), an adhesive (12) and a release layer (24).
The transponder is first bonded to the thin organic
polymer substrate (22) (col 2 L 64- col 3 L 3). Then, the
transponders are inserted between the lower (6) and the upper
(4) layers of insulating webs. The webs are elongated tape
which subsequently wound into a roll (col 3 L 11-16).
An adhesive (12) is coated onto the bottom side of the
lower insulating web (6). A release layer (24) is placed over
the adhesive layer (12).
(Compare Ans. 5 with App. Br. 6-10 and 12-14 and Reply Br. 4-10).
6. Epstein teaches a tape, which may be wound into a roll or reel,
comprising a paper ribbon or web, an adhesive layer, and an RFID
transponder, which is composed of, inter alia, an integrated circuit
chip and antenna coil, in that order. (Epstein, col. 2, l. 36 to col. 3, ll.
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21 and Fig. 2). Epstein also teaches that it is known to form an
antenna from pre-formed wires. (Epstein, col. 1, ll. 39-45).

PRINCIPLES OF LAW
"The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain." In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983).
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for 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., 550 U.S. 398, 418 (2007).

ANALYSIS AND CONCLUSION
Claim 1
Appellants argue that
Young in view of Cloutier fails to enable one skilled in
the art to make the article recited by Appellant's claim 1. . . .
. . . .
Young and Cloutier rely on different, incompatible
mechanisms to form the conductive traces. Young utilizes
pressure at low (ambient or near ambient) to form circuits using
a die and a stamping process on stationary substrates, while
Cloutier relies on elevated temperatures (at atmospheric
pressure) using an inkjet-based continuous process.
Accordingly, if one of ordinary skill were to attempt to modify
the Young article to incorporate the features of the Cloutier
articles, as the Office Action suggests, neither reference
provides any teaching regarding how the structure of a
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compressed metal powder could be achieved on a flexible
continuous roll substrate.

(App. Br. 6-7). In addition, Appellants argue that
The British Patent in view of Cloutier fails to enable one
skilled in the art to make the article recited in Appellant's claim
1. For example, as described above, the British Patent is
apparently directed to a batch process using pressure to
compress the metal particles. On the other hand . . . Cloutier
utilizes a continuous method of printing an inkjet adhesive on a
substrate, coating the adhesive with metal particles, and heating
the entire structure to melt the metal particles to the substrate.
Neither the British Patent nor Cloutier teach or suggest how
these disparate processes may be combined to produce the
invention of Appellant's claim 1.

(App. Br. 13). Appellants also argue that the Examiner has neither
articulated any reason for combining Young or the British patent and
Cloutier nor has the Examiner established any reasonable expectation of
success in modifying Young or the British patent to incorporate the
structural features of Cloutier. (App. Br. 8-10 and 13-14).
In other words, Appellants argue that it would not have been within
the skill of one of ordinary skill in the art to adapt the teachings of the cited
prior art references to arrive at the claimed invention. We disagree.
Appellants do not specifically dispute the Examiner's findings that
each of the primary references (i.e., Young and the British patent) teaches
printed circuits formed by, inter alia, die pressing metal particles on an
adhesive coating of an electrical insulating material to make a circuit pattern.
(FF 1).
While both Young and the British patent individually teach that the
electrical insulating material (substrate) may be Bakelite, which is known to
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be a hard material, neither Young nor the British patent is limited to such an
insulating material.
Indeed, Young teaches that "[t]he electrical insulating material . . .
may comprise . . . polyvinylchloride" and the British patent teaches that
"[f]or some applications it is desired to use as the support a paper or fabric
which has not been impregnated . . ." (FF 2) (emphasis added). In other
words, both Young and the British patent teach that insulating materials
other than Bakelite may be used as the insulating material (substrate).
Although neither Young nor the British patent explicitly teach that the
substrate is a continuous roll of a flexible substrate, Cloutier teaches a circuit
pattern on a substrate, which may be polyvinyl chloride (PVC), dispensed
from a roll (continuous roll of a flexible substrate). (FF 3 and 4). In this
regard, Cloutier teaches that its circuit pattern is formed by dispensing an
adhesive via an ink jet system on a substrate and a then applying a powdered
metal composition, which may be a lead/tin alloy, to the adhesive to form a
circuit pattern. (FF 3 and 4).
In addition, Cloutier teaches that "to implement the present invention
on a massproduction [sic] scale, it is desirable to dispense the substrate from
a roll . . . although the substrate may be in the form of a single flat sheet."
(FF 4).
Accordingly, the prior art recognizes the suitability of using a flexible
continuous substrate or a single flat sheet as a substrate in forming metal
powder circuit patterns on the substrate. Therefore, we, like the Examiner,
determine that the teachings of the references as a whole would have
suggested combining Young's or the British patent's adhesive and
compressed metal powder with Cloutier's rolled substrate (continuous roll of
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a flexible substrate). In so doing, adapting Young's or the British patent's
pressing step to Cloutier's rolled substrate (continuous roll of a flexible
substrate) would have been within the skill level of one of ordinary skill in
the art. KSR, 550 U.S. at 418 (explaining a court may take into account the
inferences and creative steps of one of ordinary skill in the art.).
In this regard, one of ordinary skill making such a combination would
have had a reasonable expectation of successfully mass-producing a circuit
pattern made from a compressed metal powder on a rolled, flexible
substrate.
Moreover, given Factual Findings 5 and 6 above, we note that Epstein
itself appears to teach all of the features required by claim 1. Accordingly,
Appellants' arguments are unpersuasive of reversible error.

Claim 8
With respect to the rejection of claim 8, Appellants argue that
The cited references are each directed to forming a circuit
on one side of a substrate . . . The Examiner has not identified
any teaching or suggestion in any of the references that an
article including a compressed metal powder on both surfaces is
useful or desirable.
The Examiner has not established that the cited
references would teach one of ordinary skill in the art how to
make an article with a compressed metal powder on both sides
of a flexible substrate as claimed in claim 8.
The Examiner has not provided any rational explanation
to support his position that the teachings of the cited references,
whether considered alone or in combination, would provide a
skilled artisan with the motivation to provide a compressed
metal powder on both sides of a substrate as claimed in claim 8.
Further, the Examiner has not established that the skilled artisan
would have a reasonable expectation of success in utilizing the
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teachings of the cited references to provide a substrate with a
pressed metal powder on both sides of a substrate as claimed in
claim 8.
(App. Br. 11; see also App. Br. 14-15).

In reference to our above discussion, it would have been obvious to
one of ordinary skill in the art to combine Young's or British patent's
adhesive and compressed metal powder with Cloutier's rolled substrate
(flexible substrate) since adapting Young's or the British patent's pressing
step to Cloutier's rolled substrate (flexible substrate) would have been within
the skill level of one of ordinary skill in the art. KSR, 550 U.S. at 418. In
doing so, one of ordinary skill making such a combination would have had a
reasonable expectation of successfully mass-producing a circuit pattern
made from a compressed metal powder on a rolled substrate.
While it is true that none of the cited prior art references specifically
teach having a circuit pattern on both faces of the substrate, Appellants do
not specifically dispute the Examiner's determination that "having [a] circuit
pattern on both faces of the substrate is well known and obvious over a
single sided circuit board." (Compare Ans. 8 with App. Br. 11 and 14-15
and Reply Br. 11).
Though acknowledging the Examiner’s position (App. Br. 11) that the
double-sided feature would have been an obvious variant, Appellants do not
specifically dispute the Examiner's finding that the double-sided feature is
well known (Ans. 6). In other words, it remains uncontested that it would
have been with in the skill of one of ordinary skill in the art to print the
circuit pattern on each side of the substrate as such a technique is well
known in the art.
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Thus, it follows that the Examiner did not reversibly err in
determining that the combined teachings of the cited prior art references
would have suggested the inventions recited in claims 1 and 8 within the
meaning of § 103.
ORDER
In summary, the Examiner's rejection of claims 1-6, 8-10, and 21-24
under 35 U.S.C. § 103(a) as unpatentable over Young or the British patent in
view of Cloutier and Epstein is sustained. Accordingly, the decision of the
Examiner is affirmed.
TIME PERIOD
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) (2009).
AFFIRMED

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