Ex Parte Rothschild

Patent Trial and Appeal Board

Nov 8, 2016

12205121 (P.T.A.B. Nov. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/205, 121 09/05/2008
116 7590 11/10/2016
PEARNE & GORDON LLP
1801EAST9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
FIRST NAMED INVENTOR
Stanley R. Rothschild
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.
MRE-37160US2 6241
EXAMINER
IP,SIKYIN
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
11/10/2016 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STANLEY R. ROTHSCHILD
Appeal2015-004757
Application 12/205, 121
Technology Center 1700
Before BRADLEY R. GARRIS, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 15, 16, 18-24, and 26 of
Application 12/205,121under35 U.S.C. § 103(a) as obvious. Final Act.
(April 16, 2014). Appellant 1 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Metallic Resources, Inc. is identified as the real party in interest. Appeal
Br. 2.
Appeal2015-004757
Application 12/205, 121
BACKGROUND
The '121 Application describes lead-free solder alloys and methods
for their use. Spec. i-f 6. Historically, solder compounds have been tin-lead
alloys. Id. i-f 2. Among other desirable properties, pure tin-lead solders are
highly reflective and shiny in appearance and become duller in proportion to
the amount of impurities present. Id. i-f 5.
Recently, it is become desirable to replace the lead with a less harmful
material. Id. i-f 3. Tin-copper alloys, which often include silver, have
become a widely used alternative to tin-lead solders. Id. One disadvantage
of these alloys is that they tend have a dull appearance, even in the absence
of impurities. Id. i-f 4.
The '121 Application describes an improved tin-copper alloy that is
said to exhibit substantial brightness and have a shiny, highly reflective
appearance. Id. i-f 10.
Claim 15 is representative of the '121 Application's claims and is
reproduced below:
15. A method of wave soldering comprising the steps of:
a) providing a circuit board having a series of predrilled
holes therethrough and a conductive copper coating
on the inner surface of said predrilled holes,
b) placing an electronic component so that metallic
electrical leads thereof extend from a first surface of
said circuit board, through said predrilled holes,
toward a second surface thereof,
c) applying a layer of flux over said second surface of
said circuit board, and
d) contacting said second surface of said circuit board
with a wave of molten lead-free solder alloy so that
molten solder alloy from said wave contacts said
second surface of said circuit board, activating the
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Application 12/205, 121
flux previously coated thereon and causing lead-free
molten solder alloy from said wave to wick up the
exposed electrical leads from said second surface into
said predrilled holes, to provide a solder joint between
said leads and the conductive coating on the interior
surfaces of said predrilled holes, said lead-free solder
alloy comprising, by weight, 0.2-2% copper, 0.02-
0.3% cobalt, and at least 98% tin.
Appeal Br. 18 (Claims App.). 2
REJECTIONS
On appeal, the Examiner maintains the following rejection:
1. Claims 15, 16, 18-24, and 26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Paruchuri, 3
Applicant's Admitted Prior Art (AAPA), and either Masaetesu4
or Seiji. 5 Final Act. 2-3.
DISCUSSION
Appellant presents arguments for the reversal of the rejection of
independent claims 15 and 26 as a group. Appeal Br. 9-16. Accordingly,
we select claim 15 as representative of this group. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013). Dependent claims 16 and 18-24 are alleged to be
paten tab le by virtue of their dependence from claim 15. Id. at 16-1 7. Thus,
2 We cite the Supplemental Appeal Brief filed October 3, 2014.
3 US 5,833,921, issued November 10, 1998.
4 JP 2003-001482, published January 8, 2003.
5 JP 2004-122227, published April 22, 2004. We cite the machine
translation attached to the Appeal Brief as part of Ex. 2.
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Appeal2015-004757
Application 12/205, 121
the dependent claims will stand or fall with claim 15. In view of the
foregoing, we limit our discussion to claim 15.
In rejecting claim 15, the Examiner found that Paruchuri describes
wave soldering with lead-free tin-based solders. Final Act. 2. The Examiner
also found that either Masaetesu or Seiji describes the claimed tin-copper-
cobalt solder composition. Id. at 2-3. The Examiner further found that
AAP A describes the claimed process of wave soldering a circuit board
having a series of predrilled holes lined with conductive copper coatings. Id.
at 3.
Id.
Based upon these findings, the Examiner concluded that
it would have been obvious to one having ordinary skill in the
art of the cited references at the time the invention was made to
wave soldering [sic] with Sn-Co-Cu solder ... because [the]
benefits and function known set up [sic] entail the motivation of
one skilled in the art to make a wave soldering [sic] with [a] Pb-
free Sn solder.
Appellant argues, inter alia, that the rejection of claim 15 should be
reversed because the Examiner has not identified a sufficient reason or
motivation to combine Paruchuri with either Masaetesu or Seiji. Appeal Br.
12-13. Because we find Appellant's arguments convincing in this regard,
we reverse the rejection of claim 15.
To establish a prima facie case of obviousness, the Examiner must
provide an adequate reason for a person of ordinary skill in the art at the
time the invention to have modified the reference or combination of
references to arrive at the claimed invention. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) ("[I]t can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
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Application 12/205, 121
combine the elements in the way the claimed new invention does."). In the
absence of such an explanation, we infer that the rejection is based upon an
improper use of hindsight. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
("hindsight" is inferred when the specific understanding or principal within
the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at appellant's claimed invention has not
been explained).
In this case, the Examiner has not explained why a person of ordinary
skill in the art at the time of the invention would have used the solder
composition described in either Masaetesu or Seiji in the wave soldering
process described in Paruchuri. As Appellant argues, Paruchuri describes
the use of low melting point solders in a wave soldering process. See
Appeal Br. 10-12. Paruchuri seeks such solders so that wave soldering can
be used in the presence of low melting point temperature substrates like
thermoplastic materials. Paruchuri col. 2, 11. 16-18. The use of low melting
point solders also would enable the use of less expensive electronic
components by reducing the thermal exposure of the components during
soldering. Id. at col. 2, 11. 29-31. For this reason, Paruchuri specifically
seeks a lead-free solder having a melting point below about 170°C. Id. at
col. 2, 11. 24--28.
In rejecting claim 15, the Examiner is not free to ignore Paruchuri' s
focus upon low melting point solders. See In re Warsaw Orthopedic, Inc.,
832 F.3d 1327, 1332 (Fed. Cir. 2016) ("When the PTAB examines the scope
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Appeal2015-004757
Application 12/205, 121
and content of prior art, ... it must consider the prior art 'in its entirety, i.e.,
as a whole."' (quoting Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1568 (Fed. Cir. 1987))). The Examiner, therefore, must explain why a
person of ordinary skill in the art, presented with Paruchuri' s discussion of
the importance of using low melting point solders, would have turned to the
solder compositions described in Masaetesu or Seiji, which have melting
points of approximately 227°C. See Seiji i-f 30; see also Spec. i-f 21 ("The
melting point of pure tin is about 232°C. By the addition of nominally 0.3
weight percent copper to the alloy, the melting point of the resulting alloy is
lowered several degrees, [to] the range of 227-230°C .... ").
The Examiner has not provided the necessary explanation for
modifying the combination of references in the proposed manner to arrive at
the claimed invention. We, therefore, reverse the rejection of claim 15. 6
CONCLUSION
For the reasons set forth above, vve reverse the rejection of claims 15,
16, 18-24, and 26 as unpatentable over the combination of Paruchuri,
AAP A, and either Masaetesu or Seiji.
REVERSED
6 Because we have determined that the Examiner failed to establish a prima
facie case of obviousness, we express no opinion regarding whether
Appellant has presented convincing evidence of secondary considerations
such as commercial success and unexpected results to rebut a prima facie
case of obviousness.
6