Ex Parte PRAMANIK

Board of Patent Appeals and Interferences

Dec 1, 2010

12126522 (B.P.A.I. Dec. 1, 2010)

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.
12/126,522 05/23/2008 PRANABES K. PRAMANIK OM-11 DIV1 6600
7590 12/01/2010
Richard S. Roberts
Roberts & Roberts, LLP, Attorney At Law
P.O. Box 484
Princeton, NJ 08542-0484
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
12/01/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRANABES K. PRAMANIK
____________

Appeal 2009-013245
Application 12/126,522
Technology Center 1700
____________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, 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 2009-013245
Application 12/126,522

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 34-36, 48-55, 57, and 60-64.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a process for forming a multilayered
structure which is suitable for forming a capacitor. (See Claim 34.) The
structure “comprise[s] a pair of parallel electrically conductive foils
separated by a pair of coatings of a thermosetting polymer material, each
preferably comprising an epoxy, and a central polymerizable layer.” (Spec. 4
3:7-10.) According to the Specification, the “multilayered structure [has]
excellent properties such as high capacitance density, exceptional integrity
and short circuit resistance.” (Spec. 3:16-17.)
Claim 34, the sole independent claim on appeal, is representative of
the invention and is reproduced below:
34. A process for forming a multilayered construction suitable for
forming capacitors which comprises:

a) applying a first thermosetting polymer layer onto a surface of a first
electrically conductive layer;

b) applying a central polymerizable layer onto a surface of the first
thermosetting polymer layer, which central polymerizable layer comprises a
polymerizable precursor of a polyethylene terephthalate, a polyethylene
naphthalate, a polyvinyl carbazole, a polyphenylene sulfide, an aromatic
polyamide, a polyether-nitrile, a polyether-etherketone, or combinations
thereof;

2 Final Office Action (“Final”) mailed Apr. 1, 2009.
3 Appeal Brief (“App. Br.”) filed Apr. 23, 2009.
4 Specification filed May 23, 2008.
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Application 12/126,522

c) applying a second thermosetting polymer layer onto a surface of a
second electrically conductive layer; thereafter

d) attaching the first electrically conductive layer to the second
electrically conductive layer such that each of the first and second
thermosetting polymer layers and the central polymerizable layer are
positioned between the first and second electrically conductive layers; and
thereafter

e) polymerizing said polymerizable layer;

wherein each of said first thermosetting polymer layer, said second
thermosetting polymer layer and said central polymerizable layer optionally
further comprises a filler material.

(App. Br. 13 (Claims Appendix).)
The Examiner maintains5, and Appellant requests review of (App. Br.
5), the following grounds of rejection:
1. Claims 34-36, 48-55, 57, and 60-64 under 35 U.S.C. § 103(a) as
unpatentable over Appelt in view of Bruza (US 4,996,288, issued Feb. 26,
1991) (Ans. 7-13); and
2. Claims 62-63 under 35 U.S.C. § 103(a) as unpatentable over
Appelt in view of Bruza and further in view of Fenoglio (Ans. 13-14).
Appellant’s arguments are directed solely to limitations recited in
independent claim 34. (See generally, App. Br. 6-12.) Specifically, the
issue raised by Appellant is: Did the Examiner reversibly err in determining
that the combined teachings of Appelt and Bruza disclose or suggest forming

5 The Examiner has withdrawn the rejection of claims 62-63 under 35 U.S.C.
§ 103(a) as unpatentable over Appelt (US 2001/0005304A1, pub. Jun. 28,
2001) in view of Fenoglio (US 5,003,037, issued Mar. 26, 1991).
(Examiner’s Answer mailed May 29, 2009 (“Ans.”) 5.)
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Appeal 2009-013245
Application 12/126,522

a five layer structure including “a central polymerizable layer” as recited in
Claim 34?
We answer this question in the negative for the reasons explained
below.
Claim 34 recites a step of “applying a central polymerizable layer . . .
which . . . comprises a polymerizable precursor of . . . an aromatic
polyamide.” The Specification does not specifically define the term
“polymerizable precursor.” The Examiner relies on the Published
Application6 and Merriam-Webster’s Collegiate Dictionary to support a
broadest reasonable interpretation of “polymerizable precursor” as “any
compound including oligomers or prepolymers of polymers which are
capable of undergoing a chemical reaction in which two or more molecules
combine to form larger molecules that contain repeating structural units, e.g.
cross-linking, condensation, etc.” (Ans. 5-6 (emphasis omitted).) The
Examiner interprets “polymerizable precursor” as including partially cured
films which can be further cured by polymerization. (Ans. 7-8.)
Appellant does not dispute the Examiner’s interpretation of the claim
term “polymerizable precursor” (cf. Rep. Br.7 2-3), and we find it to be
reasonable.
The Examiner finds that Appelt discloses forming a layered structure,
which may be used as a capacitive element for a circuit board, the structure
including “a pair of conductive sheets 10 such as copper sheets having
dielectric layers laminated therebetween.” (Ans. 7 (citing Appelt Abstract).)
The dielectric layers may be epoxy or other types of dielectric material

6 US 2008/0226815 A1 published Sep. 18, 2008.
7 Reply Brief filed Jun. 18, 2009.
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Appeal 2009-013245
Application 12/126,522

including polyimide, and may be applied to the conductive sheets in a
partially cured form. (Ans. 7 (citing Appelt [0021] and [0025]); see also,
Ans. 8-9.)
Appellant does not dispute that Appelt’s conductive sheets 10 and
dielectric materials are electrically conductive layers and thermosetting
polymer layers as recited in appealed claim 34 (see steps a, c).
Appelt teaches the dielectric component of the structure may be
“formed of two or more dielectric sheets, at least one of which can be
partially cured or softened followed by being fully cured or hardened.”
(Appelt Abstract, cited in Ans. 14.) With respect to specific embodiments of
four and five layer structures (i.e., Appelt FIG. 3-5 embodiments), the
Examiner’s findings include the following (see Ans. 7-9, 14-17):
Appelt discloses an embodiment (Ans. 9 (relying on Appelt [0026]
(FIG. 3 embodiment)); see also Appelt claim 10) in which a four layer
structure is formed by applying a first thermosetting polymer layer onto a
surface of a first electrically conductive layer (see appealed claim 34, step
a), followed by application of a dielectric material to the first thermosetting
polymer layer. The dielectric material is partially cured. A second
electrically conductive layer is then laminated to the dielectric material and
the structure is fully cured (see claim 34, step e). Appelt discloses two
embodiments in which five layer structures are formed. (Ans. 9 (relying on
Appelt [0027] (FIG. 4 embodiment)); Ans. 7-9 (relying on Appelt [0028]
(FIG. 5 embodiment)).) In the FIG. 4 embodiment, a layer of fully or
partially cured epoxy is coated on a first copper sheet and a layer of “a
dielectric material” is coated on a second copper sheet. (Appelt [0027].) A
sheet of glass cloth impregnated with partially cured epoxy resin is
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Appeal 2009-013245
Application 12/126,522

positioned between the coated copper sheets to form the structure. (Id.)
With respect to the FIG. 5 embodiment, the central layer of the final
structure is a polyimide. (Appelt [0028].) Appelt does not disclose forming
this structure by the steps recited in claim 34, e.g., forming the polyimide
layer by applying a polymerizable precursor. (Ans. 8 first full para.)
The Examiner additionally finds “the properties of [Appelt’s] final
laminate [structure] do not seem to depend on selection of order of
laminating” (Ans. 9), and one of ordinary skill in the art would have
understood that any suitable dielectric material in a liquid, partially cured, or
fully cured form could be used in manufacturing Appelt’s structure (Ans.
10).
Based on a detailed analysis of Appelt, as summarized above, the
Examiner concludes that Appelt suggests a method of making five layer
structure including a central polyimide layer in the form of a partially cured
film (Ans. 7-8, 15), i.e., the invention as claimed with the exception of the
specifically claimed central polymerizable precursor layer. (See Ans. 10.)
The Examiner finds that Bruza teaches an “aromatic polyamide
(claimed polymerizable polyamide precursor)” (Ans. 11) for use in
preparing laminates for circuit boards (Ans. 10). (See also, Ans. 12 (finding
that Bruza teaches a partially cured polyamide and that “[o]ne of ordinary
skill in the art would have [a] reasonable expectation of success in using the
aromatic polyamide prepolymer (partially cured polyamide) of Bruza in the
form of free standing film as thermoset resins for preparing advanced
composites, laminates for circuit boards”).) The Examiner further finds
Bruza teaches the aromatic polyamide provides improved thermal stability at
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Appeal 2009-013245
Application 12/126,522

extreme temperatures and chemical resistance as compared to conventional
polyamides and polyimides. (Ans. 10-11.)
Appellant has not attempted to refute the aforementioned findings
with respect to Bruza. (See, e.g., App. Br. para. bridging 8-9; Rep. Br. 7.)
The Examiner provides detailed facts and reasons in support of her
determination that it would have been obvious to have used an aromatic
polyamide polymerizable precursor in place of Appelt’s partially cured
polyimide based on Bruza’s disclosure. (See Ans. 10-12, e.g. 11 (to achieve
“the desired improved thermal stability at extreme temperatures, and
chemical resistance”).)
The test for obviousness is what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art. In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991). In an obviousness analysis, the examiner
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol and Specialty
Container, Inc. v Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009); see
also, KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“If a person
of ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.”); Boston Scientific Scimed, Inc v. Cordis Corp., 554 F.3d 982,
991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent to
each other in a prior art patent does not require a leap of inventiveness.”). In
the absence of unexpected results, the ordering of process steps is prima
facie obvious. In re Burhans, 154 F.2d 690, 692 (CCPA 1946).
Appellant argues the Examiner is improperly relying on completely
different embodiments (e.g., four layer versus five layer structures) in Appelt
to establish obviousness. (App. Br. 7; see generally, Rep. Br.)
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Application 12/126,522

We are not persuaded by this argument. Like the Examiner, we find
Appelt broadly discloses methods of forming structures having four or more
layers, which structures include a dielectric component “formed of two or
more dielectric sheets, at least one of which can be partially cured” (Appelt
Abstract). We do not agree with Appellant’s contention that the only five
layer structure contemplated by Appelt requires a pre-formed polyimide
sheet (App. Br. 7). Appelt explicitly teaches that the FIG. 4 embodiment
may be constructed as a four or five layer structure. (See supra pp. 5-6.)
The fifth layer is identified simply as “a dielectric.” (See supra p. 5.) The
ordinary artisan would have recognized that such dielectric could be one of
the materials used in the FIG. 2 embodiment, i.e., a partially cured polyimide
(see supra pp. 4-5). (Contra App. Br. 7.) We additionally note the relevant
case law (see supra p. 7) supports the Examiner’s determination that it
would have been obvious to have reordered or combined the process steps
used in Appelt’s specifically disclosed embodiments.
Appellant argues, in general, that one of ordinary skill in the art would
not have been motivated to replace Appelt’s pre-formed polyimide sheet
with the aromatic polyamide of Bruza. (See App. Br. 7-8.) Appellant’s
argument is unpersuasive since Appellant has not explained why the detailed
facts and reasons relied on by the Examiner in support of the proposed
modification of Appelt are erroneous or unsupported by the evidence of
record. In this regard, we note Appellant’s argument appears to be based on
a misunderstanding of the Examiner’s obviousness determination as based
solely on modification of Appelt’s FIG. 5 embodiment. (See, e.g., Rep. Br.
2-3 (arguing that it would not have been obvious to substitute Appelt’s “pre-
formed polyimide sheet” with an unpolymerized precursor).)
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Application 12/126,522

Appellant also argues, but has not provided evidence which
establishes, that the claimed process steps provide unexpected results over
the prior art. (See App. Br. 8.)
In sum, Appellant has not persuaded us of reversible error in the
Examiner’s determination that the combined teachings of Appelt and Bruza
disclose or suggest a method of forming a five layer structure including “a
central polymerizable layer” as recited in Claim 34. Therefore, we sustain
both grounds of rejection.
The decision of the Examiner to reject claims 34-36, 48-55, 57, and
60-64 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).

AFFIRMED

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RICHARD S. ROBERTS
ROBERTS & ROBERTS, LLP, ATTORNEY AT LAW
P.O. BOX 484
PRINCETON, NJ 08542-0484
9