Ex Parte Nnebe

Patent Trial and Appeal Board

Dec 11, 2013

11626468 (P.T.A.B. Dec. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/626,468 01/24/2007 Ijeoma M. Nnebe YOR920060556US1 1277
30678 7590 12/11/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
SLUTSKER, JULIA
ART UNIT PAPER NUMBER
2891
MAIL DATE DELIVERY MODE
12/11/2013 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 IJEOMA M. NNEBE
___________

Appeal 2011-002798
Application 11/626,468
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002798
Application 11/626,468

2
STATEMENT OF THE CASE
Appellant is appealing claims 2-18. Appeal Brief 2.1 We have
jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to release film coatings for soft composite
materials in microelectronics. Appeal Brief 2.

Illustrative Claim2
13. Method of fabricating a release film for a soft composite
material comprising applying a monolayer of closely packed
self-assembled molecules to a least one side of a film wherein

1 Appellant appeals claims 2-21 (Appeal Brief 2), however claims 17-21 are
not before us because they were subject to a restriction requirement (mailed
March 25, 2009) and Appellant’s subsequent election of claims 17-21 (filed
April 1, 2009). Claim 1 was cancelled (Appeal Brief 2). Notwithstanding
Appellants’ arguments, this matter is not before us since we lack jurisdiction
over petitionable matters. See, e.g., MPEP § 706.01 (“[T]he Board will not
hear or decide issues pertaining to objections and formal matters which are
not properly before the Board.”); see also MPEP § 1201 (“The Board will
not ordinarily hear a question that should be decided by the Director on
petition….”).

2 See MPEP § 2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012).
Appeal 2011-002798
Application 11/626,468

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the release film has a water contact angle of about 100 degrees
or greater.

Rejections on Appeal
Claims 5, 7, 13, 14 and 16 stand rejected under 35 U.S.C. §102(e) as
being anticipated by Whelan (U.S. Patent Application Publication Number
2006/0128142 A1; June 15, 2006). Answer 3.
Claims 2-5, 9-11 and 13-16 stand rejected under 35 U.S.C. §102(b) as
being anticipated by Liakos (Surface and Interface Analysis, 36, 2004, pages
347-354, “Comparative study of self-assembly of a range of Monofunc-
tional aliphatic molecules on magnetron-sputtered aluminium”). Answer
4-6.
Claims 13 and 7 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Pellerite (J. Phys. Chem. B, 107, 2003, pages 11726-11736,
“Effects of Fluorination on Self-Assembled Monolayer Formation from
Alkanephos-phonic Acids on Aluminum: Kinetics and Structure”). Answer
6.
Claims 2-9, 12, 13 and 16 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Frey (U.S. Patent Application Publication Number
2008/0150148 A1; June 26, 2008) and Pellerite. Answer 6-8.3

Issues
Do Whelan, Liakos or Pellerite teach a method of fabricating a release
film for a soft composite material “wherein the release film has a water

3 The Examiner does not indicate that claim 8 was rejected within the
obviousness statement (Answer 7), however the Examiner addresses the
merits of claim 8 within the body of the rejection (Answer 8).
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Application 11/626,468

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contact angle of about 100 degrees or greater” as recited in independent
claim 13?
Do Frey and Pellerite, either alone or together, disclose a method of
fabricating a release film for a soft composite material “wherein the release
film has a water contact angle of about 100 degrees or greater” as recited in
independent claim 13?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellant’s Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellant argues that claim 13 recites in the body of the claim and not
exclusively in the preamble, the employment of a release film having a water
contact angle of about 100 degrees. Appeal Brief 7. Appellant argues that
Whelan’s double damascene structure actually teaches away from release
films because it does not correspond to a film. Id. Appellant contends that
the Examiner’s assertion that any substrate can be considered to correspond
to a film and that any self-assembled monolayer can be considered to be
suitable to transfer soft composite material as claimed is not an accurate
portrayal of the claimed invention. Id. Appellant argues that “a release film
that retains material from the soft composite material can result in minor
changes of the composition of the preform with potentially major changes in
the properties of the soft composite material, such a viscosity and thermal
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Application 11/626,468

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conductivity” and therefore Whelan fails to disclose a suitable release film
because “Whelan is a sacrificial layer that is removed by thermal anneal.”
Id.
The Examiner finds, “In the absence of the specific definition of the
term ‘release film,’ examiner relies on the broadest reasonable interpretation
of this term. And since Whelan discloses that the SAM film is releasable
([0009]), it is [sic] anticipates the limitation ‘a release film’ recited in claims
13 and 16.” Answer 9.
The Examiner also finds, “In response to appellant's argument that the
references fail to show certain features of applicant's invention, it is noted
that the features upon which appellant relies (i.e., suitable to quantitatively
transfer a soft -composite material, to transfer the thermal paste, or to
assemble a chip) are not recited in the rejected claim(s).” Id.
Appellant further argues that Liakos teaches away from the claimed
invention because a SAM [self-assembled monolayers] having
functionalities that would react with a heat paste is not suitable for release
films because the heat paste cannot be transferred quantitatively if it is
covalently linked to the SAM. Appeal Brief 9.
The Examiner finds, “Liakos discloses a monolayer of closely packed
self-assembled molecules (SAM). Also, as evidenced by Whelan, a SAM
film is capable to be a releasable film (Whelan, [0009]). The appellant's
arguments that the SAM film of Liakos is not suitable to transfer a heat paste
are not convincing because the features upon which appellant relies are not
recited in the rejected claim(s).” Answer 9-10.
Appellant argues that Pellerite fails to teach the claimed invention
because Pellerite is silent in regard to the suitability of SAMs for
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transferring a substance such as a heat paste. Appeal Brief 10. The
Examiner also finds that Pellerite discloses the invention as claimed because
Pellerite discloses a monolayer of closely packed self-assembled molecules
[SAM]. Answer 10.
We do not find Appellant’s arguments to be persuasive in regard to
the Whelan, Liakos and Pellerite anticipation rejections because the
arguments are not commensurate with the scope of the claims. During
examination of a patent application, a claim is given its broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted).
“[T]he words of a claim ‘are generally given their ordinary and customary
meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (internal citations omitted), it is improper to read into the claims
limitations from examples given in the Specification. In re Zletz, 893 F.2d
319, 321-22 (Fed. Cir. 1989). Each of the references (Whelan, Liakos and
Pellerite) discloses the invention as it is claimed in claim 13. See Answer 3-
6. Although, Appellant cited to his Specification (paragraphs [0004],
[0014] for example) for support to narrowing the scope of the claimed
release film limitation however both citations are dubious and fail to set
forth a definitive definition of a release film. Therefore we sustain the
Examiner’s anticipation rejections of independent claim 13, as well as the
dependent claims not separately argued.
Appellant argues that Frey and Pellerite, even if combined, fail to
suggest a release film. Appeal Brief 11. Appellant further argues that Frey
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cannot be reasonably considered to correspond to a release film for
transferring a soft composite material as claimed. Id.
However, the Examiner finds:
Frey in view of Pellerite discloses the step limitations of
claim 13, i.e. applying a monolayer of closely packed self-
assembled molecules (Frey, Fig.lC, numeral 131; [0027])
to at least one side of a film (Frey, Fig.lC, numeral 105,
110), wherein the release film having a water contact angle
of about 100 degree of higher (Pellerite, pager 11728,
Tables 1 and 2). And as evidenced by Whelan, a SAM
film is capable to be a releasable film (Whelan, [0009]).

Answer 11.
We do not find Appellant’s arguments to be persuasive because we
observe that Appellant attacks the cited references in isolation. See Appeal
Brief 10-11. Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and are therefore ineffective to rebut the Examiner's prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” (Emphasis added) (citations omitted)).
Therefore we sustain the Examiner’s obviousness rejection of
independent claim 13, as well as, the dependent claims not separately
argued.

Appeal 2011-002798
Application 11/626,468

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DECISIONS
The Examiner’s anticipation rejections of claims 2-5, 7, 9-11 and
13-16 are affirmed.
The Examiner’s obviousness rejection of claims 2-9, 12, 13 and 16 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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED
Vsh