Ex Parte Osenbach

Patent Trial and Appeal Board

May 18, 2016

12937389 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/937,389 10/12/2010
57299 7590 05/20/2016
Kathy Manke
A vago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525
FIRST NAMED INVENTOR
John W. Osenbach
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.
OSENBACH 71 1697
EXAMINER
STARK, JARRETT J
ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
05/20/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kathy.manke@broadcom.com
patent.info@broadcom.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. OSENBACH1
Appeal2014-007495
Application 12/937,389
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-14, 16, and 19-23 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Agere Systems, Inc.
Appeal Br. 3.
Appeal2014-007495
Application 12/937,389
BACKGROUND
Appellant's invention relates to preventing or mitigating growth
formations, commonly referred to as "whiskers," on metal films. See Spec.
i-f 3, Title. Independent claim 1 is representative:
1. An electronics package, comprising:
a substrate; and
a metal film plated to a surface of said substrate, using an
electrolytic plating bath having a solution that includes a
metal salt of said metal film and applying a current
maintained at a current density that is between 0. 0001 and
100 A/m2 to form said metal film on said substrate surface
while said solution is maintained at a pH in a range from
about 3 to 11 throughout said plating wherein,
said metal film has a polycrystalline structure of
grains having substantially anisotropic crystal unit cell
dimensions,
one dimension of said crystal unit cells are oriented in
a direction that is substantially perpendicular to said
substrate surface for at least about 80 percent of said grains,
and
metal atoms of said metal film have a slower lattice
diffusion coefficient along said perpendicularly-oriented unit
cell dimension than along others of said unit cell
dimensions.
Appeal Br. 12 (emphasis added). The only other independent claim is
method claim 13, containing similar limitations to claim 1. See id. at 14.
The Examiner maintains the following grounds of rejection:
I. Claims 1-14 and 19-23 under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Application Pub. No. 2005/0249967 Al
[hereinafter Egli] (published Nov. 10, 2005). Final Action 3-8.
II. Claim 16 under 35 U.S.C. § 103(a) as being unpatentable over
Egli, and further in view of U.S. Patent Application Pub. No.
2010/0170804 Al (published July 8, 2010). Final Action 8-9.
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Application 12/937,389
Appellant argues that the Examiner has not established a prima facie
case of obviousness with regard to three groups of claims: (A) independent
claims 1and13, see Appeal Br. 6-9, (B) dependent claims 10 and 21-23,
see id. at 9-10, and (C) dependent claim 16, see id. at 10. For claim 16,
Appellant relies solely on the arguments presented for parent claim 13. See
id. Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we
limit our discussion to claims 1, 10, 13, and 21-23. All the other claims
stand or fall with those claims.
DISCUSSION
Claims 1 and 13
Claims 1 and 13 require that a metal film is plated using a process that
includes "applying a current maintained at a current density that is between
0.0001 and 100 A/m2." Appeal Br. 12, 14. The Examiner finds that Egli
teaches applying a current with a current density from 100 to 5000 A/m2.
The Examiner finds that the lower limit of this range, 100 A/m2, "overlaps
with the claimed higher range limit of 100 A/m2" required by claims 1 and
13. Final Action 2; see also id. at 3, 6; Answer 8. The Examiner construes
the term between in claims 1 and 13 as inclusive. Answer 8. Thus, the
Examiner determines that "[a]s the claims are presented there is no
patentable distinction since the claims overlap." Final Action 2. The
Examiner further finds that the results of the claimed invention "are
reasonably expected to be the same" as the results of the process disclosed
by Egli. Id. Therefore, the Examiner determines that the recited limitations
would have been obvious to one of ordinary skill in the art. Id. at 5.
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Appeal2014-007495
Application 12/937,389
Appellant argues that the current density range taught by Egli does not
overlap the claimed range, because claims 1 and 13 recite a range that is
"between 0.0001 and 100 A/m2." Appeal Br. 7. According to Appellant, the
term between indicates a range that is exclusive of the upper and lower
bounds. Id. at 8-9 (citing Between, Merriam-Webster Dictionary,
http://www.merriam-webster.com/ dictionary/between (last visited Dec. 11,
2013)). Appellant argues that because there is no overlap, the Examiner has
failed to establish a prima facie case of obviousness. Id. at 8-9.
We find no reversible error in the Examiner's determination that a
prima facie case of obviousness exists, based on Egli' s teaching of using a
current density from 100 to 5000 A/m2. See Egli i-f 29. Whether or not the
range recited by claims 1 and 13 excludes the precise value of 100 A/m2 is
immaterial. "[A] prima facie case of obviousness exists when the claimed
range and the prior art range do not overlap but are close enough such that
one skilled in the art would have expected them to have the same
properties." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The
range of 0.0001 to 100 A/m2 recited in claims 1 and 13 spans six orders of
magnitude. Yet, even if the current density range in claims 1 and 13 is
interpreted as nonexclusive of 100 A/m2, the separation between that range
and the range disclosed by Egli is infinitesimally small. Given the extremely
broad range in claims 1 and 13, and the very close proximity of the range to
that disclosed in Egli, we are not persuaded that the Examiner reversibly
erred in determining that one of ordinary skill in the art would reasonably
expect that current densities in the range taught by Egli would result in a
film with the same properties as that produced by claims 1 and 13.
Furthermore, Egli teaches that the current density range is
"[t]ypically" 100 to 5000 A/m2, and that "[s]election of a suitable applied
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Appeal2014-007495
Application 12/937,389
current density can beneficially influence the crystallographic texture." Egli
i-f 29. Thus, Egli teaches that the disclosed range is only a typical range, and
the current density may be adjusted to a suitable range. Therefore, one of
ordinary skill in the art would have had reason to adjust the current density
by routine experimentation. See In re Aller, 220 F .2d 454, 456 (Fed. Cir.
1955) ("[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.").
For the above reasons, the Examiner has established a prima facie
case of obviousness. Thus, the burden shifts to Appellant to come forward
with evidence and/or arguments supporting patentability. In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984); see also In re Woodruff, 919 F.2d
1575, 1577 (Fed. Cir. 1990) (where the difference between the claimed
invention and the prior art is some range, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range). However,
Appellant has not directed our attention to any rebuttal evidence to suggest,
for example, that the current density range required by claims 1 and 13 is
critical in some way, such as by producing unexpectedly fewer whiskers
than the prior art, or that it would otherwise change the properties of the
resulting film in an unexpected way.
For the above reasons, we determine that the evidence of obviousness
of claim 1, on balance, outweighs the evidence of nonobviousness relied
upon by Appellant, and we affirm the Examiner's decision to reject claims 1
and 13, as well as claims 2-9, 11, 12, 14, 16, and 19-20, which depend
therefrom.
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Appeal2014-007495
Application 12/937,389
Claims 10 and 21-23
Regarding the grains in the polycrystalline structure of the metal film,
claims 10 and 22 require that "adjacent ones of said grains form a grain
boundary tilt angle of about 20 degrees or less," and claims 21 and 23
similarly require that the angle is "less than 5 degrees." Appeal Br. 13, 15.
The Examiner finds that Egli discloses a grain boundary tilt angle of
5° to 22°. Final Action 5. The Examiner also finds that Egli "discloses
p[a]rameters claimed with result in the claimed angle of less than 20 and/or
less than 5. Therefore, it is a natural expectancy that the process of Egli will
achieve the same results." Id. Because the ranges disclosed by Egli overlap
the range of claims 10 and 21-23, the Examiner determines that "it would
have been obvious to one of ordinary skill in the art at the time the invention
was made to use the tilt angle range disclosed [by] Egli to arrive at the
recited invention," and therefore a prima facie case of obviousness exists.
Id.
Appellant argues that "the relied upon disclosure by Egli appears to
teach away from the grain boundary tilt angles" recited in claims 10 and 21-
23, "because Egli suggests that grain boundaries have [sic, having]
interplanar angles of 5° to 22° [have] a greater tendency for whisker
growth." Appeal Br. 10.
We give terms their broadest reasonable interpretation consistent with
the Specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed.
Cir. 2007). Because claims 10 and 21-23 do not specify the number of
grains that are required to meet the specified grain boundary tilt angle
limitation, the broadest reasonable interpretation of the phrase "adjacent
ones of said grains" is a single pair, or more, of said grains. Egli' s range of
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Appeal2014-007495
Application 12/937,389
5° to 22° for the boundary tilt angle overlaps the range of claims 10 and 22,
and Appellant has not directed our attention to any evidence to contradict the
Examiner's conclusion that one of ordinary skill in the art would expect
similar results for a tilt angle of "less than 5 degrees" as required by claims
21 and 23. Therefore, we find no reversible error in the Examiner's
determination that a prima facie case of obviousness has been established.
See Peterson, 315 F.3d at 1329.
We have carefully considered Appellant's argument that Egli teaches
that "grain boundaries hav[ing] interplanar angles of 5° to 22° [have] a
greater tendency for whisker growth," and therefore Egli teaches away from
the range of claims 10 and 21-23. Appeal Br. 10 (citing Egli i-fi-f l 0, 24).
However, Egli teaches that at least some percentage of grain pairs will be
expected to have a boundary tilt angle of 5° to 22°. See Egli 7, claims 1-3,
i-fi-124--26. According to Egli, even in a film that is defined as "substantially
free" of crystal pairs having a tilt angle of 5° to 22°, such pairs may still
exhibit an X-ray diffraction intensity of as much as 5-15% of the total peak
intensity of all observed peaks. See id. Thus, we are not persuaded that Egli
teaches away from the presence of at least some grain pairs having a
boundary tilt angle within the range of claims 10 and 21-23.
For the above reasons, we affirm the Examiner's decision to reject
claims 10 and 21-23.
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Appeal2014-007495
Application 12/937,389
DECISION
The Examiner's decision 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
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