Ex Parte Samuels et al

Board of Patent Appeals and Interferences

Mar 30, 2009

10227997 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL R. SAMUELS,
SUBHOTOSH KHAN, and MIKHAIL R. LEVIT
____________

Appeal 2008-4374
Application 10/227,997
Technology Center 1700
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Decided:1 March 30, 2009
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Before CHUNG K. PAK, TERRY J. OWENS, and CATHERINE Q. TIMM,
Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4374
Application 10/227,997

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 16-26 and 33. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to solid sheet material useful as substrates for
circuit boards (Spec. 1:11-16). Claim 16 is illustrative:
16. A sheet, comprising:

(a) a nonwoven fabric of short high tensile modulus fibers; and

(b) a thermotropic liquid crystalline polymer having a low
moisture absorption;

wherein the sheet has an apparent density and a calculated density and
the thermotropic liquid crystalline polymer files [sic, fills] an effective
amount of voids between said high tensile modulus fibers so that said sheet
has an apparent density that is at least about 75% of the calculated density.2

Appellants request review of the Examiner’s rejection of claims 16-26
and 33 under 35 U.S.C. § 103(a) as unpatentable over Furuta (US 6,124,004,
issued Sep. 26, 2000 to Furuta et al.).
Appellants argue no claim apart from the others. We select claim 16
as representative for deciding the issues on appeal. See 37 C.F.R. §
41.37(c)(1)(vii) (“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single

2 Until the Amendment of February 6, 2006 claim 16 used the word “fills”
instead of “files.” This portion of the claim is not at issue, and the
discrepancy, therefore, does not affect our decision.
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claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).

II. DISPOSTIVE ISSUE
The issue on appeal arising from the contentions of Appellants and the
Examiner is: Have Appellants established that the Examiner reversibly
erred in concluding that it would have been obvious to one of ordinary skill
in the art to either: (1) select a nonwoven fabric of short aramid fibers for
use of Furuta’s nonwoven; or (2) use levels of heat and pressure during
Furuta’s laminating process such that Furuta’s laminate would have an
apparent density that is at least about 75% of the calculated density?

III. PRINCIPLES OF LAW
“[A] prior art reference must be ‘considered together with the
knowledge of one of ordinary skill in the pertinent art.’” In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559,
562 (CCPA 1978)). In an obviousness analysis, the proper focus is on
evidence of what was known before the time of invention, and the analysis
must not unduly constrain the breath of knowledge available to one of
ordinary skill in the art. In re Translogic Tech., 504 F.3d 1249, 1260 (Fed.
Cir. 2007). An improvement in the art is obvious if “it is likely the product
not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1742 (2007).
The knowledge generally available to a person having ordinary skill in
the art includes facts admittedly well known in the art. See In re Nomiya,
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509 F.2d 566, 570-71 (CCPA 1975)(The admittedly known prior art in the
Appellants’ Specification may be used in determining the patentability of a
claimed invention.).

IV. FINDINGS OF FACT
Furuta describes laminated sheets including combinations of layers of
thermotropic liquid crystalline polyester (LCP), layers of fiber material, and
layers of metallic foil (Furuta, col. 1, ll. 12-17; col. 15, ll. 5-9). The
laminates have excellent heat resistance, and low relative dielectric constant,
dielectric loss tangent and water absorption, and can be used for, among
other things, printed circuit board substrates (Furuta, col. 1, ll. 17-21).
The purpose of the fiber material is to reinforce the strength of the
film or laminate (Furuta, col. 12, ll. 50-51). The fiber material is “preferably
used in the form of fiber, non-woven fabric and the like in view of handling,
and more preferably used in the form of fiber.” (Furuta, col. 13, ll. 3-5.)
The fiber material may be used in an untreated state or may be impregnated
with a thermosetting resin and used as a prepreg (Furuta, col. 13, ll. 7-27).
Furuta discloses several methods for producing the LCP/fiber material
laminate (Furuta, col. 13, l. 35 to col. 14, l. 13).
In one process, Furuta discloses heating and pressing a preformed
sheet of LCP to a layer of fiber material (either untreated or in prepreg
form)(col. 13, ll. 28-34). According to Furuta, “[t]he condition for heating
and pressuring the film or sheet made of the liquid crystal polyester resin
composition and the layer made of the fiber material is not particularly
restricted, and can be suitably selected according [to] the properties of the
film or sheet and the fiber material.” (Furuta, col. 13, ll. 35-39).
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In a second process, LCP is melt-extruded onto the fiber material
layer and press-bonded to the fiber material using a roll (Furuta, col. 13, ll.
39-43). In this process, Furuta prefers to use a textile or non-woven fabric
fiber material because such textiles and non-wovens can be continuously
supplied from a roll and make for easier handling and processing (Furuta,
col. 13, ll. 48-58). Furuta discloses particular preferred thicknesses for the
LCP and fiber material layers (Furuta, col. 13, ll. 58-65).
Furuta also discloses examples for some embodiments (Furuta, col.
15, ll. 14-17), and indicates in those examples that voids within the laminate
are undesired (Example 7, col. 22, ll. 28-31 and Comparative Example 8,
col. 22, ll. 65-67).
Furuta does not provide any guidance on the selection of the length of
fibers within the fiber material (Furuta, it its entirety).
According to Appellants’ Specification, “[d]escription of the
formation of nonwoven aramid sheets, especially papers, is found in U.S.
Patent Nos. 5,223,094 and 5,314,742, each of which is hereby incorporated
by reference in its entirety.” (Spec. 14:19-22.) Those Patents disclose
making nonwoven papers containing short aramid fibers (‘094, col. 1, ll. 7-
9) and resin impregnated laminates including aramid papers (‘742, col. 1, ll.
57-65) for use in printed wiring board (printed circuit board) applications.

V. ANALYSIS
As a first matter, we cannot agree with Appellants that Furuta’s
silence in regard to fiber length in the nonwoven sheet forecloses a
conclusion of obviousness (Br. 11). As stated by Appellants, “[a]s is well
known in the art, nonwoven fabrics may be made of short fibers or long
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(essentially continuous) fibers or a combination of the two.” (Br. 11.)
Given Furuta’s silence on the length of the fibers, one of ordinary skill in the
art would have selected short or long aramid fibers to form a known aramid
nonwoven; such selection being made based on the predictable properties of
the known materials. Appellants own Specification indicates that short
aramid fiber papers (a type of aramid nonwoven) were known in the art for
use in laminates and in printed circuit board applications. Considering
Furuta in light of the knowledge of one of ordinary skill in the art, we agree
with the Examiner that the evidence supports the prima facie obviousness of
including the known nonwoven fabrics of short aramid fibers for use in the
laminate of Furuta.
Nor can we agree with Appellants that Furuta’s lack of discussion of
the apparent density forecloses a conclusion of obviousness (Br. 10-11).
Furuta teaches laminating by heat and pressure, or by pressing an extruded
LCP layer and nonwoven layer together, so that the fibers within the
nonwoven reinforce the LCP layer. This heating and pressing process
necessarily fills the voids to some extent within the nonwoven with the
softened LCP. Moreover, the heating and pressing parameters as well as the
thicknesses of the layers are selected to obtain the properties desired in the
end product printed circuit board. Example 7 and Comparative Example 8
provide evidence that voids within the laminate are to be avoided. This
provides evidence that those of ordinary skill in the art would have obtained
the apparent density through routine optimization of the laminating process
which would have been operated so as to remove voids sufficiently that the
apparent density is at least about 75% of the calculated density.
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Appellants have not established that the Examiner reversibly erred in
concluding that it would have been obvious to one of ordinary skill in the art
to: (1) select a nonwoven fabric of short aramid fibers for use of Furuta’s
nonwoven; and (2) use levels of heat and pressure during Furuta’s
laminating process such that Furuta’s laminate would have an apparent
density that is at least about 75% of the calculated density.

VI. CONCLUSION
Appellants have limited the scope of their arguments to the above
issues and do not further contest the Examiner’s rejection of the claims.
Therefore, we sustain the Examiner’s rejection of claims 16-26, and 33
under 35 U.S.C. § 103(a) as unpatentable over Furuta.

VII. DECISION
The decision of the Examiner is affirmed.

VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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