Ex Parte Nishii et al

Board of Patent Appeals and Interferences

Sep 8, 2011

10517445 (B.P.A.I. Sep. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOSHIHIRO NISHII, YOSHIHIRO KAWAKITA,
and KUNIO KISHIMOTO
____________

Appeal 2009-014616
Application 10/517,445
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Toshihiro Nishii et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 17-28 under 35 U.S.C.
§ 103(a) as being unpatentable over Appellants’ Admitted Prior Art (APA)
in view of Tsujimoto (US 7,063,768 B2, iss. Jun. 20, 2006). We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
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THE INVENTION
The claims on appeal relate to a method of manufacturing a circuit
board.
Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A method of manufacturing a circuit
forming board, comprising:
impregnating an elongated reinforcing
member with impregnation material, the
reinforcing member extending in a first direction;
transferring the reinforcing member in a
second direction such that the first direction of the
reinforcing member is parallel to the second
direction,
wherein said impregnating of the elongated
reinforcing member with impregnation material
occurs simultaneously with said transferring of the
reinforcing member in the second direction;
adhering films directly onto an upper surface
and a lower surface, respectively, of the
reinforcing member so as to be entirely peelable
off of the upper and lower surfaces of the
reinforcing member; and
transferring the reinforcing member in a
third direction orthogonal to the first direction of
the reinforcing member,
wherein said adhering of the films directly
onto the upper surface and the lower surface,
respectively, of the reinforcing member occurs
simultaneously with said transferring of the
reinforcing member in the third direction
orthogonal to the first direction of the reinforcing
member.
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EXAMINER’S REJECTION
Based only on the combined teachings of the APA and Tsujimoto, the
Examiner reasons that “it would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify the AAPA by
utilized [sic.] the transferring the reinforcing member in the third direction
orthogonal to the first direction of the reinforcing member as taught by
Tsujimoto et al. to obtain a circuit board having good thickness precision.”
Ans. 3-4. In response to Appellants’ arguments, the Examiner maintains this
rationale and to support the rationale the Examiner provides particular
citations to Tsujimoto. Ans. 7.
APPELLANTS’ CONTENTION
Appellants’ primary contention is that the Examiner’s reason lacks
some rational underpinning since Tsujimoto does not obtain thickness
precision of the laminate structure by transferring the core material C in the
direction perpendicular to the longitudinal direction. Instead, Tsujimoto
obtains thickness precision from changing the displacement in the range of
the compressive elasticity area, or by controlling the compressive strain
quantity. App. Br. 5-6 and Reply Br. 5-6.
ISSUE
The determinative issue in this appeal is:
Whether some rational underpinning exists for the Examiner’s
articulated reason.
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PERTINENT FACTS
Tsujimoto discloses a process for producing a laminated composite, in
particular tatami mats.1 Housing construction sometimes needs to
compromise between Eastern and Western styles, in particular when it
comes to flooring. Tsujimoto discloses that traditional tatami mats are 55
mm thick, while flooring materials used in western-style rooms tend to
average between 5 mm to 20 mm. As such, a step is needed to connect a
Japanese-style room to a western-style room. However, in the field of
housing design, the current trend is barrier-free housing, which means no
step is present between the Japanese-style room and the western-style room.
In order to accomplish removal of the step, it has been required to either
raise the western-style room flooring with increasing the bulk of the floor
bed or lower the ground-beam sleeper of the Japanese-style room. Both
processes require highly complicated construction work. Col. 2, ll. 14-28.
Tsujimoto describes a past process to form a composite laminate for
“composite” (non-wood body board) tatami mats that used a glass fiber
reinforced polypropylene layer that is heated to a melting state and stacked
to a surface of a foamed body sheet. Then, the layer and sheet are adhered
together in a manner to melt the surface of the foamed body sheet to the
polypropylene layers, and the structure is subsequently cooled. Tsujimoto
describes an improvement to the above process of manufacture has been to
form a composite lamination with a reinforcing face material made from a
polyolefin resin drawn sheet that will be laminated on a polyolefin resin
foamed body sheet. Tsujimoto describes the advantages of such a composite

1 Tatami mats are flooring material used in traditional Japanese-style rooms.
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laminate as worker and environmentally friendly, recyclable, and permits
some deformation without damaging the shape. Col. 1, ll. 28-65.
However, the aforementioned composite laminate has problems.
When the reinforcing face material is heated to a melting point thereof or
higher in order to attempt the aforementioned production, the drawn
orientation of the molecules is lost. As a result, the desired flexural-rigidity
and linear expansion property cannot be obtained. Tsujimoto describes that
the aforementioned lamination process is controlled by laminating-pressure.
However, the compression property of the foamed body varies dependently
upon laminating temperature. Therefore, it becomes necessary to change the
laminating-pressure dependent upon the temperature. Tsujimoto further
describes that another problem occurs with such a lamination process, the
thickness of the manufactured product varies beyond an acceptable
tolerance. Col. 1, 66 to col. 2, l. 13.
Tsujimoto discloses that the desired flexural-rigidity and a small
linear expansion coefficient for a thin tatami mat material are achieved by
orthogonally crossing the sheets of the face material on top of the core
material. Col. 2, ll. 37-58 and figure 4. Tsujimoto further discloses an
object of the invention is to produce a composite lamination, e.g., tatami
mat, using no inorganic fiber (fiberglass), without damaging the
performance of a polyolefin resin drawn sheet, and with a high thickness
precision. Col. 3, ll. 3-7.
All of Tsujimoto’s disclosed examples achieve the objects of the
invention by supplying a core material with a longitudinal sheet face
material (S1) and a lateral sheet face material (S2) such that the face
materials are stacked in an orthogonal form, i.e., the direction of the draw of
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each face sheet is 90 degrees to the other as shown in figure 4. Next, the
stacked material is compressed by a thermocompression bonding means
such that the compression strain on the core material is within the range of
0.01% to 10%.2,3 Col. 28, l. 60 to col. 51, l. 59.
PRINCIPLES OF LAW
In order to establish a prima facie case of obviousness, an examiner
must undertake the factual inquiries listed in Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). In addition, the examiner must articulate some
“reasoning with some rational underpinning to support the legal conclusion
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This
reasoning must show that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The apparent reason need not appear in one or more
of the references on which the examiner relies. Instead, the examiner when
analyzing the evidence may employ common sense not inconsistent with the
ordinary level of knowledge and skill in the art at the time of the invention.
Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009).
ANALYSIS
It appears the Examiner solely relies on the Examiner’s
characterization of Tsujimoto’s disclosure to provide the rational
underpinning for the Examiner’s reason, and does not appear to be
employing common sense consistent with the ordinary level of knowledge

2 A compressive strain of 0.4 mm equates to a 5% compression strain.
3 An alternative is to apply a pressure of 0.8 Mpa at a temperature of 110° C
or 120° C.
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and skill in the art at the time of the invention. The Appellants likewise rely
on their characterization of Tsujimoto to argue that the Examiner’s reason
fails to have the requisite rational underpinning.
Our review of Tsujimoto, which includes the Examiner’s cited
portions of Tsujimoto, concurs with the Appellants’ characterization of
Tsujimoto. For the particular embodiments (Figures 21 and 22) cited by the
Examiner, Tsujimoto essentially discloses production of composite laminate
which includes supplying a core material with a longitudinal sheet and
bonding the sheet to the core by a thermocompression bonding means and
then transferring the intermediate product in a direction perpendicular to the
previous direction, either by a lateral transfer or a rotation of 90°, in order to
bond the lateral sheet to the longitudinal sheet, and thus form the final
lamination of the core, longitudinal sheet, and lateral sheet. Contrary to the
Examiner’s characterization, the orienting of the face sheets does not
provide the uniform thickness of the laminate. The orientation of the face
sheets in the manner disclosed provides the flexural-rigidity and a small
linear expansion coefficient. Further, Tsujimoto does not disclose
transferring the member C in a third direction orthogonal to a first direction
as characterized by the Examiner in order to provide good thickness as
rationalized by the Examiner. What Tsujimoto discloses is a perpendicular
transfer of L1 to the station that would apply face material (S2) in order to
form L2. This transfer provides the flexural-rigidity and a small linear
expansion coefficient. What Tsujimoto actually discloses as controlling the
thickness of the composite laminate is applying the pressure from the
thermocompression bonding means such that the strain on the core is
generated that is within the displacement range of 0.01% to 10%. In the
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preferred embodiment, this would be about 0.4 mm of strain on a 10 mm
thick structure.

CONCLUSION
Given the above, we conclude that the Examiner’s reason lacks some
rational underpinnings.

DECISION
Accordingly, the Examiner’s decision to reject claims 17-28 under 35
U.S.C. § 103(a) as being unpatentable over Appellants’ Admitted Prior Art
in view of Tsujimoto is reversed.

REVERSED

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