Ex Parte Oono et al

Board of Patent Appeals and Interferences

Dec 21, 2010

10892186 (B.P.A.I. Dec. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIROFUMI OONO, MINORU YAMANE, YASUNOBU INA,
and SHOUICHI UMENO
____________________

Appeal 2009-010469
Application 10/892,186
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010469
Application 10/892,186

STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 4, 6, and 7. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 4 under appeal reads as follows:
4. A semiconductor-molding tablet having a tablet density ratio of
94% or more and less than 98% obtained by a method for producing a
semiconductor-molding tablet which comprises a step of kneading an epoxy
resin composition comprising components: (A) an epoxy resin, (B) a phenol
resin and (C) an inorganic filler, as essential components, a step of roll-
molding the resulting kneaded composition into a sheet shape having a sheet
density ratio of 98% or more, a step of pulverizing the resulting sheet-shaped
compact, and a step of forming the pulverized material into a tablet shape
having a tablet density ratio of 94% or more and less than 98%.
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting product
claims 4, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as being obvious over any one of
Takami (US 6,054,222, issued Apr. 25, 2000), Kuroyanagi (EP 1,139,420
A2, pub. Apr. 10, 2001), or Hiroshi (JP2002-220475, pub. Aug. 09, 2002, as
translated).2
2. Appellants contend that the Examiner erred in rejecting product
claim 4 over each reference because they have provided evidence that the
claimed product is patentably distinct from the prior art products of these
references due to the claimed process step of “roll-molding” providing a
reduced number of internal voids (see generally App. Br. 8-24).

2 Appellants argue the claims as a group and do not present any arguments
directed to dependent claims 6 and 7.
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Application 10/892,186

Issue on Appeal
Did the Examiner reversibly err in rejecting claim 4 as being
anticipated by, or alternately obvious, because the evidence provided by
Appellants established that the claimed product is patentably distinct from
the prior art products of Takami, Kuroyanagi, and Hiroshi?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
arguments, including their declaration evidence, that the Examiner has erred.
We disagree with Appellants’ conclusion with respect to each
rejection. We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner.3
Specifically, claim 4 is a product-by-process claim for which we look
to the product claimed, not the process steps, for patentability. It is well
established that
Where a product-by-process claim is rejected over a prior art
product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come
forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.

3 The Examiner has provided reasonable evidence to support a finding that
the tablet recited in claim 4 and the tablet taught by each of the applied
references are identical or substantially identical, each having the claimed
density ratio and/or an overlapping density ratio, despite being formed by
different processes. Appellants’ remaining contentions all turn on whether
the Examiner has erred in the analysis of the declaration evidence provided.
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Application 10/892,186

In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). The evidence must be
commensurate in scope with the claims. Id.
Particularly, the Examiner found that each reference taught particular
conditions and/or compositions for achieving its respective void free (i.e.,
having a density ratio as claimed) semiconductor-molding tablet (Ans. 9;
Ans. 11; Ans. 13), and that none of the comparative examples proffered by
Appellants as representative of the prior art used these conditions and/or
compositions. Notably, Appellants have not refuted the Examiner’s findings
(see generally App. Br.; no responsive brief has been filed to the Ans.).
Under these circumstances, the Appellants have not shown reversible
error in the Examiner’s determination that the Appellants’ Declaration
evidence fails to demonstrate that products encompassed by the applied prior
art would not have the same characteristics as claimed, and concomitantly
fails to overcome the prima facie case of anticipation and obviousness.

CONCLUSION
The Examiner has not erred in rejecting claims 4, 6, and 7 under
35 U.S.C. § 102(b) as being anticipated by, and under 35 U.S.C. § 103(a) as
being obvious over, any one of Takami, Kuroyanagi, or Hiroshi.
DECISION
The Examiner's rejections of claims 4, 6, and 7 are 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).
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Appeal 2009-010469
Application 10/892,186

AFFIRMED

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