Ex Parte Nozaki et al

Patent Trial and Appeal Board

Apr 5, 2018

13142189 (P.T.A.B. Apr. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/142,189 07/26/2011
22242 7590 04/06/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Mitsuru Nozaki
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9326-100354-US 1240
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
MAILDATE DELIVERY MODE
04/06/2018 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 MITSURU NOZAKI, TAKABUMI OOMORI,
AKIHIRO NOMOTO, NORIKATSU AKIYAMA,
EIJI NAGATA, and MASASHI Y ANO
Appeal2017-000511
Application 13/142, 189
Technology Center 3600
Before BRETT C. MARTIN, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision 1 rejecting claims 1, 2, and 4--11under35 U.S.C.
§ 103(a) as unpatentable over Omori (US 2006/0054589 Al; published Mar.
15, 2006)2 and Kaneshiro (US 2008/0182112 Al; published July 31, 2008).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appeal is taken from the Final Office Action dated October 1, 2015.
2 This publication corresponds to US Patent 7 ,892,651 B2, Application No.
11/224,021, which lists Mitsubishi Gas Chemical Company, Inc. as an
assignee; Mitsubishi Gas Chemical Company, Inc. is also identified by
Appeal2017-000511
Application 13/142, 189
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claim 1 is the sole the independent claim on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter on appeal,
with a disputed limitation italicized for emphasis.
1. A resin composite copper foil comprising a copper
foil and a polyimide resin layer formed on one surface of
the copper foil,
wherein the polyimide resin layer comprises a block
copolymerized polyimide resin and an inorganic filler, and
the block copolymerized polyimide resin has a structure
formed by alternately repeating a structure A and a
structure B,
wherein the structure A is obtained by bonding a
second imide oligomer to a terminal of a first imide
oligomer and the structure B is obtained by bonding the
first imide oligomer to a terminal of the second imide
oligomer,
the block copolymerized polyimide resin has a
weigh average molecular weight (Mw) of 50,000 to
300,000, and is a block copolymer comprising the first
imide oligomer represented by the following general
formula ( 1) and the second imide oligomer represented by
the following general formula (2):
Appellants as the real party in interest in the instant appeal. Appeal Br. 3.
2
Appeal2017-000511
Application 13/142, 189
wherein m and n are integers meeting m:n = 1 :9 to
3:1, and
the inorganic filler has an average particle size of
not more than 4 µm, and the amount of the inorganic filler
contained in the polyimide resin layer is not less than 5%
by volume but not more than 5 0% by volume based on
100% by volume in total of the block copolymerized
polyimide resin and the inorganic filler, and
the inorganic filler is boehmite or silica.
OPINION
Regarding independent claim 1, the Examiner finds, inter alia, that
Omori teaches a resin composite copper foil comprising a copper foil and a
polyimide resin layer, as claimed, except that Omori does not teach that "the
composition may further comprise inorganic filler." Final Act. 2-3.
Contrary to the Examiner's finding, however, Omori discloses that an
inorganic filler, such as silica, may be an additive in the resin composition
used in the resin composition layer. See Omori i-f 23 ("A resin composition
3
Appeal2017-000511
Application 13/142, 189
used in the B-stage resin composition layer which is laminate-molded
together with the resin composition metal foil ... is not specifically limited
so long as it is a known thermosetting resin composition usable for a printed
wiring board. Examples of such a resin include ... a polyimide resin.");
i-f 27 ("The resin composition used in the above resin composition layer may
further contain a variety of additives as required so long as the inherent
properties of the composition are not impaired."); i-f 28 ("In addition, it is
also possible to incorporate additives such as a known inorganic or organic
filler. . . . Example[ s] of the inorganic filler include generally known
inorganic fillers such as silica."). Omori also discloses that an inorganic
filler improves the form of holes made with a carbon dioxide gas laser. See
id. at i-f 28 ("In particular, when holes are made with a carbon dioxide laser,
an inorganic filler is preferably incorporated for improving the form of the
holes."). Omori fails to disclose that the inorganic filler has an average
particle size of not more than 4 µm or that the amount contained in the
polyimide resin layer is not less than 5 % but no more than 50 % by volume,
as claimed.
The Examiner relies on Kaneshiro for teaching, inter alia, "a
polyimide/metal laminate for use in printed circuit boards wherein filler may
be added in amounts of 0.01-80pbw per 100 parts by weight ofpolyimide in
order to improve the slideability, thermal conductivity, electrical
conductivity, loop stiffness or the like." Final Act. 3. The Examiner reasons
that it would have been obvious "to add silica to the composition taught in
Omori in order to optimize its properties such as the slideability, thermal
4
Appeal2017-000511
Application 13/142, 189
conductivity, electrical conductivity, loop stiffness and the like." Id. The
Examiner further reasons that it would have been obvious "to optimize the
amount of silica (based upon weight or volume) in order to optimize the
desired property as Kaneshiro teaches the amount of filler added is a result
effective variable." Id. (emphasis added).
Appellants argue that neither Omori nor Kaneshiro teach or suggest
the critical amount of inorganic filler, to achieve the small size
of burrs processed by a carbon dioxide gas laser much less do
these reference[ s] teach or suggest that the critical amount of
inorganic filler also causes improvement of heat resistance under
moisture absorption or adhesion force to a resin composition of
a copper-clad laminate.
Appeal Br. 7-8.
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As set forth supra,
Omori generally recognizes that the resin composition layer may contain
additives (i.e., variables) that impair (or affect) the resulting inherent
properties of the composition, and more specifically, that an inorganic filler
additive improves (or affects) the resulting hole formation when a carbon
dioxide gas laser is used to make holes. Further, Kaneshiro recognizes that
"[a] filler may be added to improve various properties of the film, such as
slidability, thermal conductivity, electrical conductivity, corona resistance,
and loop stiffness." Kaneshiro i-f 90. Kaneshiro specifically discloses that
[ t ]he amount of filler to be added is determined based on the
film properties to be modified and the diameter of the filler
5
Appeal2017-000511
Application 13/142, 189
particles and is thus not particularly limited. The amount of the
filler added is usually 0.01 to 100 parts by weight, preferably
0.01 to 90 parts by weight, and more preferably 0.02 to 80 parts
by weight per 100 parts by weight of polyimide. At a filler
content below this range, the effect of the modification by the
use of the filler may not be sufficiently exhibited. At a filler
content above this range, the mechanical properties of the film
may be significantly degraded.
Id. at i-f 91. Thus, both Omori and Kaneshiro recognize the amount of
inorganic filler as a result-effective variable.
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." Applied Materials, 692 F.3d at 1295 (quoting In re Aller,
220 F.2d 454, 456 (Fed. Cir. 1955)). This rule applies when the optimized
variable is a "result-effective variable." Id. Exceptions to this general rule
include where the parameter optimized was not recognized in the art to be a
result effective variable and where the results of optimizing a variable,
which was known to be result effective, were unexpectedly good. In re
Antonie, 559 F.2d 618, 621(CCPA1977). Moreover, the Federal Circuit
has explained in In re Geisler that
[ w ]hen an applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a range that is
within or overlaps with a range disclosed in the prior art, the
applicant must show that the claimed range is critical, generally
by showing that the claimed range achieves unexpected results
relative to the prior art range. Under that standard, it is not
inventive to discover the optimum or workable ranges by routine
experimentation. Only if the results of optimizing a variable are
6
Appeal2017-000511
Application 13/142, 189
unexpectedly good can a patent be obtained for the claimed
critical range.
116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (internal quotation marks, citations,
and alterations omitted; emphasis added); see also Applied Materials, 692
F.3d at 1297 ("The outcome of optimizing a result-effective variable may
still be patentable if the claimed ranges are critical and produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art." (internal quotation marks omitted; emphasis
added)); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322-23
(Fed. Cir. 2004) ("[E]ven though a modification results in great
improvement and utility over the prior art, it may still not be patentable if the
modification was within the capabilities of one skilled in the art, unless the
claimed ranges produce a new and unexpected result which is different in
kind and not merely in degree from the results of the prior art." (internal
quotation marks and alterations omitted)); In re Harris, 409 F.3d 1339, 1343
(Fed. Cir. 2005) (holding that the applicant must show unexpected results
covering the scope of the claimed range, or narrow the claims).
Appellants do not dispute the Examiner's finding, as set forth supra,
that Omori discloses the general conditions of claim 1, i.e., a resin composite
copper foil comprising a copper foil and a polyimide layer formed on one
surface of the copper foil, wherein the polyimide resin layer comprises a
block copolymerized polyimide resin having the A and B structure recited in
claim 1. Further, we have determined, as set forth supra, that Omori teaches
adding an inorganic filler, for example, silica, and that the Examiner
7
Appeal2017-000511
Application 13/142, 189
correctly finds Kaneshiro teaches a metal-coated polyimide film used for
producing printed wiring boards. See, e.g., Kaneshiro i-f 37.
Appellants argue that Kaneshiro provides no "hint that filler amount
has a positive effect on the results" by specifically referring to the admission
in Kaneshiro that "the amount of filler is 'not particularly limited' in the
context of metal coated polyimide films." Appeal Br. 8 (citing Kaneshiro
i-f 91). However, this is precisely the language used in the Specification to
characterize the criticality of the amount of filler in the claimed polyimide
resin layer of the resin composite copper foil. The Specification discloses
that
[t]he inorganic filler contained in the polyimide resin layer of
the resin composite copper foil according to the invention is not
particularly limited as long as it is generally used . . . . The
amount of inorganic filler contained is not particularly limited,
but is preferably not less than 5 % by volume but not more than
50 % by volume, more preferably not less than 19 % by volume
but not more than 40 % by volume, further more preferably not
less than 19 % by volume but not more than 30 % by volume
based on 100 % by volume in total of the block copolymerized
polyimide resin and the inorganic filler from a viewpoint of the
processability through carbon dioxide gas laser.
Spec. i-f 10 (emphasis added). Thus, the Specification does not support, but
rather contradicts, Appellants' argument that the claimed filler amount is
critical, because as argued by Appellants with respect to Kaneshiro, the
Specification states that "[ t ]he amount of inorganic filler ... is not
particularly limited," and therefore, "fails to hint that the filler amount has a
positive effect on the results," as set forth supra.
8
Appeal2017-000511
Application 13/142, 189
Appellants acknowledge that Kaneshiro provides "an extremely broad
range . . . of about 0.01 to 80 parts by weight of filler" (Appeal Br. 10
(citing Kaneshiro i-f 91 )); however, Appellants argue that the submitted
declarations demonstrate the criticality of the claimed range, namely,
between 5% and 50% (id. at 7), "which is dramatically narrower than any
filler amount in Kaneshiro" (id. at 10). Appellants submit that the
declarations are evidence of criticality, in that "fillers just outside the
claimed range ... do not achieve the superior results in all of Appellants'
desired properties at the same time," and that the declarations also establish
that "the critical range produces a difference in kind as compared to outside
of the claimed range," rather than merely a difference in degree. Id. at 10-
11 (citing In re Waymouth and Koury, 182 USPQ 290, 293 (Fed Cir. 1974)).
Appellants maintain that
[t]he inorganic filler (boehmite or silica) having the recited
average particle size and amount and the polyimide resin layer
having the recited weight average molecular weight with the
recited structures A and B in the recited ratio work together in a
synergistic manner to achieve superior heat resistance under
moisture absorption without deteriorating adhesion force.
Declarations of Yoshinori Mabuchi and Mitsuru Nozaki3 have
been submitted to demonstrate criticality of the inorganic filler
amounts in achieving the superior results.
3 Appellants reference generally the declarations of "Y oshinori Mabuchi
and Mitsuru Nozaki," however, the Evidence Appendix's listing of the
specific declarations relied upon identifies thedeclarations of Y oshinori
Mabuchi and Hiroki Aoto, but does not include a declaration from Mitsuru
Nozaki. See Appeal Br. 8; cf Appeal Br. 20 (Evidence App'x).
9
Appeal2017-000511
Application 13/142, 189
Id. at 8.
Appellants' declarations are insufficient to overcome the Examiner's
prima facie case of obviousness. The April 23, 2014 declaration of Hiroki
Aoto ("the Aoto Declaration" or "the Aoto Dec.") presents the results of
Additional Examples 1 to 8 (Table C) and Additional Comparative
Examples 8 to 11 (Table D), "with respect to a copper-clad laminate using a
resin composite copper foil which contains a block copolyrnerized polyimide
resin and an inorganic filler in a polyimide resin layer but does not contain a
maleimide compound in a polyimide resin layer." Aoto Dec. I; c:f Appeal
Br. 18 (Claims App 'x) (claim 4: "A resin composite copper foil according
to claim 1, wherein the polyimide resin layer includes a maleimide
compound"). See Appeal Br. 7-8 (Tables C, D). The Declarant concludes:
As shown in Table C, the copper-clad laminates of Additional
Examples 5-8 are good in the heat resistance under moisture
absorption, small in the buff size, and high in the adhesion force
of copper foil, regardless of the kind of inorganic filler, even
when the resin composite copper foil does not contain a
maleimide compound in the polyimide layer.
Further, as seen from the above results, the copper-dad
laminates of Additional Comparative Examples 8-11 using the
resin composite copper foil containing less than 5 %:i by volume
or rnore than 50 % by volmne of the inorganic fiHer in the
polyimide resin layer are irJerior to Additional Examples 5-8 in
the heat resistance under moisture absorption and/or the adhesion
force of copper foil.
Aoto Dec. I 0 (emphasis added). The Aoto Declaration, however, fails to
explain why the results are unexpected relative to the prior art range. To the
contrary, the results appear to be achieved through routine experimentation.
10
Appeal2017-000511
Application 13/142, 189
The declarations of Yoshinori rv1abuchi present similar results, and the
conclusions suffer from the same deficiency as the Aoto Declaration: a
failure to point out to what degree the results from tested embodiments of
the claimed resin composite copper foil are superior over the comparative
examples, or to explain why the results are unexpectedly good. Again, to
the contrary, the results appear to be achieved through routine
experimentation. See the Feb. 15, 2013 declaration ofYoshinori 1\tfabuchi,
p. 4----5 ("As seen from the above results, ... Additional Comparative
Example 5 using ... no inorganic filler ... is large in the burr size, as
compared to Example 2 using the resin ... containing the inorganic filler.");
see the Oct. 2, 2013 declaration of Y oshinori l\1abuchi, p. 5 ("As seen from
the above results, ... Additional Comparative Example[ s] 6 and 7 ...
containing less than 5 ~10 by volume or more than 50 % by volume of the
inorganic filler ... are inferior to Example 1 in the heat resistance under
moisture and absorption and the adhesion force of copper foil.").
Appellants summarize the results from these declarations4 in their
Appeal Brief and conclude that the declarations "demonstrate criticality of
the inorganic filler amounts in achieving the superior results." Appeal Br. 8.
l\1ore specifically, Appellants submit that
[t]he data summarized in the tables above demonstrates that the
selection of filler amounts is critical to achieving simultaneous
superior results in all three desired composite properties in the
context of resin composite copper foils. That is, varying the
amount of filler even slightly outside the claimed range of 5 to 50
4 See fn. 3.
11
Appeal2017-000511
Application 13/142, 189
volume percent results in an inferior result with one or more of
the three desired propeiiies (burr size, adhesion, and/or heat
resistance).
Id. at 10. Appellants also submit that
[ e Jach of these comparative examples showed abnonnalities for
at least one of the desired characteristics/ properties. The
unexpected nature of the claimed features is the ability to achieve
a combination of all of the desired properties in a single
composition, not simply one property, as found in a couple of
comparative examples.
Reply Br. 3.
AppeHants' condusory statements fail to demonstrate that the results
achieved by selecting the claimed range of the amount of inorganic filler
were unexpected or are otherwise different in kind, rather than merely in
degree, from the results that would been achieved by the Examiner's
proposed combination through routine experimentation. Again, as set forth
supra, Omori cautions that additives, such as inorganic fillers (i.e., silica),
may be used so long as the inherent properties of the cmnposition are not
impaired, and specifically suggests adding inorganic filler to improve hole
formation, while Kaneshiro teaches that inherent properties of the polyimide
resins include heat resistance and adherability between the film and the
metal layer. Kaneshiro ~,-r 3, 8.
l\1oreover, it is well settled that principles of obviousness and routine
optimization may be applied in circumstances where there is an interaction
of a plurality of result-effective variables. "The mere fact that multiple
result-effective variables were combined does not necessarily render their
12
Appeal2017-000511
Application 13/142, 189
combination beyond the capability of a person having ordinary skill in the
art." Applied Materials, 692 F.3d at 1298. Although evidence that variables
interact in an unpredictable or unexpected way could render the combination
nonobvious, here Appellants provide no persuasive evidence that tends to
show anything unpredictable or unexpected in the interaction of the
variables. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants also argue that Omori "does not teach that the composition
further comprises inorganic filler, let alone the specific form of the inorganic
filler, the particle size, the amount or other features of the inorganic filler
found in the pending claims," however, as determined supra, Omori does
disclose the use of inorganic filler, and specifically, silica, and as does
Kaneshiro. The Examiner relies on routine optimization of a result effective
variable, and also Kaneshiro, not Omori, for disclosing the claimed particle
size and volumes. Appeal Br. 7. Similarly, Appellants argue that Kaneshiro
fails to "teach or suggest the recited block copolymerized resin," however,
the Examiner relies on Omori, as set forth supra, for this disclosure. Id.
Thus, Appellants' arguments do not address the rejection as articulated by
the Examiner and are not persuasive of Examiner error. Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants further argue that "[i]t is easy to see that some of the
features specified in claim 1 are absent, and from this, we submit that the
references fail to establish a primafacie case of obviousness." Appeal Br 8.
13
Appeal2017-000511
Application 13/142, 189
However, apart from the claimed range of amount of filler discussed supra,
the Examiner correctly responds that Appellants fail to identify any other
features of the claimed invention that are absent from the Examiner's
findings. Ans. 11.
Finally, Appellants argue, for the first time in the Reply Brief, that the
Examiner "overlook[ ed] other distinctions between Kaneshiro and Omori
that one skilled in the art would not ignore and which shows the combination
of the references is not proper." Reply Br. 4. Appellants discuss the
disclosures in Kaneshiro related to "non-thermoplasticity" and "a rigid
component (structure)," as compared to Omori, which "does not mention a
rigid component (structure)," and conclude that "[i]n view of this
fundamental difference in properties sought in the materials described
herein, there is no reasonable expectation of success for combining the
teachings of Omori and Kaneshiro." Id. at 4--5. AppeUants do not, however,
explain what good cause there might be to consider the new arguments, and
thus, Appellants' new arguments are untimely and have not been considered.
See 37 C.F.R. § 41.41(b)(2) (2012) ("Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown."); Ex parte
Borden, 93 USPQ2d 14 73 (BP AI 2010) (informative).
Accordingly, we sustain the Examiner's rejection of claims 1, 2, and
4--11 under 35 U.S.C. § 103(a).
14
Appeal2017-000511
Application 13/142, 189
DECISION
The Examiner's rejection of claims 1, 2, and 4--11 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)(l )(iv).
AFFIRMED
15