Ex Parte Sakata

Patent Trial and Appeal Board

Dec 21, 2012

11385194 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEN SAKATA
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Appeal 2011-009408
Application 11/385,194
Technology Center 2800
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Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009408
Application 11/385,194

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5, and 7-9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention is directed to an insulating cover layer
film 32 bonded to the surface of the wiring pattern 24 fabricated in such a
manner that only a terminal section 26 is exposed and other parts of the
wiring pattern 24 are covered by the insulating cover layer film 32 (Spec.
12; Fig. 1).
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A flexible printed wiring board comprising a wiring
pattern that is made of conductive metal on the surface of an
insulating base film and that is protected by bonding an insulating
cover layer film to the surface of the wiring pattern is such a manner
that the terminal section of the wiring pattern is exposed,

wherein the cover layer film, which is cut along a line expanded
by a range of 100µm to 3 mm from an outermost wiring of the wiring
pattern and punched by using a punch and punch hole having a shape
that is substantially the same as the shape of the cover layer film, is
bonded to a wiring pattern area from which the terminal section is
excluded; and

wherein the cover layer film has a shape that is substantially the
same as that of the wiring pattern area from which the terminal section
is excluded, and the cover layer film is formed by a resin and
comprises an insulating resin film substrate and film adhesive layer
which is formed on a surface of the insulating resin film,

Appeal 2011-009408
Application 11/385,194

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the cover layer film is made of a resin the same as that forming
the insulating base film, and

said film adhesive layer which is formed on a surface of the
insulating resin film is made of a thermosetting resin.

REFERENCES and REJECTION
The Examiner rejected claims 1, 3, 5, and 7-9 under 35 U.S.C.
§ 103(a) based upon the teachings of Ushio (U.S. Patent No. 5,288,950,
issued Feb. 22, 1994), Oishi (U.S. Patent No. 6,972,966 B1, issued Dec. 6,
2005), and Nakamura (U.S. Patent Application Publication No.
2004/0111882 A1, published June 17, 2004) (Ans. 3-7).

ISSUE
The issue is whether the Examiner erred in finding that the
combination of Ushio, Oishi, and Nakamura teaches the limitation of “cover
layer film is formed by a resin” as recited in claim 1.

PRINCIPLE OF LAW
To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004).

ANALYSIS
Appellant argues that Ushio teaches away from the use of a cover
layer made of resin, and thus the Examiner could not modify Ushio with
Oishi’s teaching of a cover layer made of resin (App. Br. 11-12). We agree
with Appellant (App. Br. 12) that Ushio describes benefits of the cover layer
Appeal 2011-009408
Application 11/385,194

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(6) being formed from a liquid silicone rubber rather than a conventional
epoxy resist film (i.e., resin film) and discourages the use of the epoxy resist
film which causes cracking and warping (see Ushio, column 3, lines 35-49).
See Fulton, 391 F.3d at 1201.
Accordingly, we reverse the Examiner’s rejection of claims 1, 3, 5,
and 7-9.

CONCLUSION
The Examiner erred in finding that the combination of Ushio, Oishi,
and Nakamura teaches the limitation of “cover layer film is formed by a
resin” as recited in claim 1.

DECISION
The Examiner’s decision rejecting claims 1, 3, 5, and 7-9 is reversed.

REVERSED

llw