Ex Parte Selverian et al

Board of Patent Appeals and Interferences

Jul 30, 2009

10342854 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN H. SELVERIAN, H. STEVEN MACKEL,
and WILLIAM D. KOENIGSBERG
____________

Appeal 2009-003003
Application 10/342,854
Technology Center 1700
____________

Decided:1 July 30, 2009
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, 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).
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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
I. STATEMENT OF THE CASE
The invention relates to a potting compound which includes a material
that attenuates the physical forces known to cause failure in the solder joints
used to connect electrical elements to a circuit board. These forces occur
during heating and cooling cycles encountered during use of the electrical
circuits. (Spec. ¶¶ 1 and 6.) Claims 1-3 are illustrative of the subject matter
on appeal:
1. A potting compound comprising:
a first composition which when used alone applies a given force to
elements encased within it; and
a second composition which attenuates said force when subjected to
thermal cycling.
2. The potting compound of Claim 1 wherein said first
composition comprises a mixture of asphalt and sand.
3. The potting compound of Claim 1 wherein said second
composition comprises a solvent-refined paraffinic petroleum oil.
The Examiner relies on the following prior art references to show
unpatentability:
Delaney US 2,083,007 Jun. 8, 1937
Earing US 4,022,635 May 10, 1977
Calhoun US 5,726,386 Mar. 10, 1998

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The Examiner maintains the following rejections:
1. Claims 1 and 5 rejected under 35 U.S.C. § 102(b) as anticipated by
Delaney;
2. Claims 2 and 6 rejected under 35 U.S.C. § 103(a) as obvious over
Delaney in view of Calhoun;
3. Claims 3, 4, 7, and 8 rejected under 35 U.S.C. § 103(a) as obvious
over Delaney in view of Earing.
Since no claims are argued separately from the others for each of the
rejections, we decide the first rejection on the basis of representative
independent claim 1, the second rejection on the basis of representative
dependent claim 2, and the third rejection on the basis of representative
dependent claim 3. 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 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. FIRST REJECTION
A. ISSUE ON APPEAL
Appellants do not contest the Examiner’s finding that Delaney
discloses using natural wax to correct the problem of the potting compound
shrinking during cooling (Br. 4). However, Appellants contend that the
“cooling” taught by Delaney refers to the initial cooling following pouring
molten potting compound about the articles to be embedded (i.e., during
manufacture of the electronic component) and that this “cooling” is unlike
the thermal cycling disclosed in the claims (i.e., the typical heating and
cooling cycles encountered during normal use) (Br. 4-5). The Examiner
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finds that Delaney is referring to the shrinking upon cooling that occurs
during typical use of a heat generating electrical device and not just cooling
that occurs during manufacture (Ans. 6).
Thus, the first issue on appeal arising from the contentions of
Appellants and the Examiner is: have the Appellants shown that the
Examiner reversibly erred in finding that Delaney’s natural wax is “a second
composition” that reduces shrinking of the potting compound “when
subjected to thermal cycling” as required by claim 1?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Delaney teaches that “it is a practical requirement that the
compositions do not shrink upon cooling to the extent of drawing away from
and exposing the embedded articles.” (Delaney, col. 1, ll. 24-27.) Delaney
further teaches that the potting compositions are “free from undesirable
shrinkage.” (Delaney, col. 1, ll. 29-31.)
2. Delaney teaches that it is desirable for the flow point to be
higher than “any temperature likely to be encountered” so that the objects
remain firmly embedded (Delaney, col. 1, ll. 19-23).
3. Delaney also teaches that when “subjected to prolonged
heating” the flow point of the potting composition increases gradually
(Delaney, col. 1, ll. 31-35). This flow point property is particularly
advantageous for potting heat-generating electrical elements (Delaney, col.
1, ll. 35-40).
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C. PRINCIPLES OF LAW
“[W]hen the prior art evidence reasonably allows the PTO to conclude
that a claimed feature is present in the prior art, the evidence ‘compels such
a conclusion if the applicant produces no evidence or argument to rebut it.’”
In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting Spada, 911 F.2d
at 708 n.3).
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. See Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed.
Cir. 1989). One portion of a reference can provide evidence as to how one
of ordinary skill in the art would interpret another portion. See, e.g., In re
Preda, 401 F.2d 825, 826-27 (CCPA 1968) (finding that, in considering all
the disclosures of the reference and the inferences which one skilled in the
art would reasonably be expected to draw therefrom, all limitations were
taught). What is important is that there is some evidence indicating that the
knowledge was in the possession of one of ordinary skill in the art.
D. ANALYSIS
Delaney broadly discloses that shrinking occurs “upon cooling” (FF
1). We find nothing in Delaney’s teachings to suggest that “cooling”
exclusively refers to the cooling of the potting compound that occurs during
manufacture of the electronic component by potting, as suggested by
Appellants. To the contrary, Delaney describes desired properties of the
potting compound during use (FF 2-3). It is reasonable that one of ordinary
skill in the art would understand that the lack of shrinkage upon cooling,
another desired property of the potting compound taught by Delaney,
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likewise includes lack of shrinkage during use and not solely shrinkage that
may occur during manufacture.
Accordingly, Appellants’ arguments do not show that the Examiner
erred in finding that Delaney discloses reduced shrinking of the potting
compound “when subject to thermal cycling,” to the extent that the term
“thermal cycling” describes the heating and cooling cycles that occur during
use, and we sustain the Examiner’s first rejection.
III. SECOND REJECTION
A. ISSUE ON APPEAL
With respect to the rejection of claims 2 and 6 over Delaney in view
of Calhoun, Appellants contend that the differences between the materials
and methods of the references are such that a person of ordinary skill in the
art would not have been motivated to combine the teachings of Delaney with
the teachings of Calhoun (Br. 6-7). The Examiner responds that, since
Delaney teaches an asphalt material, Calhoun is only relied upon for the
inclusion of sand, which is provided to the compound taught by Delaney to
optimize the thermal conductivity and thus the maximum power limits of the
electronic circuit, as taught by Calhoun (Ans. 7).
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: have Appellants shown that the Examiner failed to
provide an adequate reason to combine the teachings of Delaney and
Calhoun to arrive at the claimed invention?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
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4. The Examiner’s rejection states that it would have been obvious
to one of ordinary skill in the art to have provided a mixture of asphalt and
sand in the potting compound of Delaney in order to provide improved flow
rates and higher electrical power, and allow precise control of the amount
and temperature of the potting compound as taught or suggested by Calhoun
(Ans. 4).
5. Delaney teaches a potting compound using asphalt or asphalt-
like (e.g., gilsonite) bituminous substances (Delaney, col. 1, ll. 43-44 and
col. 2, ll. 4-13).
6. Calhoun teaches that the thermal conductivity of the potting
composition is determined by the percentage of sand and that the maximum
electrical power limits of the circuit will depend on the thermal conductivity
of the potting compound (Calhoun, col. 5, ll. 7-15).
7. Delaney teaches that the potting composition is prepared in a
melted state, poured into pans and allowed to cool and solidify, and then re-
melted and poured about the articles to be embedded (Delaney, col. 2, ll. 29-
33).
8. Calhoun teaches a method of manufacturing an electrical circuit
that eliminates the conventional manual heat pots which involves placing
uniform strips of solid potting compound around the electrical circuit, which
are reflow melted by the application of infrared radiant heat from above
(Calhoun, col. 1, l. 65 to col. 2, l. 1 and col. 2, ll. 12-17).
9. Calhoun teaches that it is conventional to apply a potting
composition, which includes asphalt and sand, by pouring the liquid, melted
compound into a container containing the electrical circuit (Calhoun, col. 1,
ll. 19-41).
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10. Delaney teaches that it is desirable for its potting composition
to have a high flow point, which gradually increases when subjected to
prolonged heating, and a low viscosity (Delaney, col. 1, ll. 28-39).
11. Calhoun teaches that it is desirable for its potting composition
to have controlled shape and melt characteristics (Calhoun, col. 2, ll. 12-14).
C. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
D. ANALYSIS
Appellants address the Examiner’s finding that Calhoun teaches the
use of asphalt and sand for “improved flow rates,” but fail to address the
entire scope of the Examiner’s reasoning as to why one of ordinary skill in
the art would have combined the teachings of Delaney and Calhoun (FF 4).
We agree with the Examiner’s finding that Delaney teaches the use of
asphalt (FF 5), and we agree that the Examiner need only provide an
adequate reasoning as to why one of ordinary skill in the art would have
added sand to the potting composition of Delaney (Ans. 7). We find the
Examiner’s rationale for doing so, particularly to optimize the thermal
conductivity and thus the electrical output (Ans. 7), to be reasonable and
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supported by the teachings of Calhoun (FF 6). The addition of sand to the
potting composition taught by Delaney would be no more than the known
use of a material according to its established function. KSR, 550 U.S. at 417.
We are not convinced that differences in manufacturing an electrical
circuit using a potting compound (FF 7 and 8) would have made the addition
of sand to the potting compound taught by Delaney non-obvious (see Br.
6-7). Appellants present no evidence that the presence of sand would cause
the potting composition to be unsuitable for the electrical circuit
manufacturing process taught by Delaney (FF 7). To the contrary, Calhoun
teaches that it is conventional in the art to apply asphalt-and-sand potting
compositions using methods similar to that described by Delaney (see FF 7
and 9).
We are likewise unconvinced that differences in the desired properties
of the material taught by Delaney and Calhoun, if any (see FF 10 and 11),
would have made the addition of sand to the potting compound of Delaney
non-obvious (see Br. 6-7). Appellants have not provided any evidence that
the presence of sand would preclude the potting compound from having the
desired high flow point, low viscosity and gradual increase in flow point
upon heating desired by Delaney (FF 10).
Accordingly, Appellants have not established that the Examiner failed
to provide an adequate reason to combine the teachings of Delaney and
Calhoun to arrive at the claimed invention, and we sustain the Examiner’s
second rejection.
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IV. THIRD REJECTION
A. ISSUE ON APPEAL
With respect to the rejection of claims 3, 4, 7, and 8 over Delaney in
view of Earing, the Examiner contends that Earing discloses a solvent
refined aromatic oil that constitutes the claimed “solvent-refined paraffinic
petroleum oil” (Ans. 7) and that “at least some paraffinic oils have a
viscosity gravity constant greater than 0.90 and a viscosity in SSU at 100
degrees C of from 40 to 55” (Ans. 8). Appellants contend that Earing fails
to teach or suggest “solvent-refined paraffinic petroleum oil” and that the
Examiner’s findings are unfounded and unsupported by the record (Br. 8).
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: have Appellants shown that the Examiner erred in finding
that Earring teaches or suggests “solvent-refined paraffinic petroleum oil,”
as recited in claim 3?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
12. Earing teaches the use of an aromatic process oil or, in the
alternative, any process or similar oil having a viscosity gravity constant
greater than 0.90 and a viscosity in SSU at 100º C of from 40 to 55 (Earing,
col. 4, ll. 32-42 and 57-64).
C. PRINCIPLES OF LAW
We consider the following principles of law in addition to those
presented above for the second rejection. The Examiner’s analysis
supporting obviousness should be made explicit. KSR, 550 US 398, 418.
The Examiner bears the initial burden, on review of prior art or on any other
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ground, of presenting a prima facie case of unpatentability. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
D. ANALYSIS
We agree with Appellants that Earing does not explicitly teach the use
of solvent-refined paraffinic petroleum oil (FF 12). Further, the Examiner’s
conclusion that some paraffinic petroleum oils have a viscosity gravity
constant and a viscosity within the ranges suggested by Earing is not
adequately supported by the record. Accordingly, the Examiner has failed to
provide a prima facie case of obviousness, and we can not sustain the
Examiner’s third rejection.
V. CONCLUSION
For the reasons discussed above, we sustain the Examiner’s rejections
of claims 1 and 5 under 35 U.S.C. § 102(b) as anticipated by Delaney and
claims 2 and 6 under 35 U.S.C. § 103(a) as obvious over Delaney in view of
Calhoun. However, we do not sustain the Examiner’s rejection of claims 3,
4, 7, and 8 under 35 U.S.C. § 103(a) as obvious over Delaney in view of
Earing.
VI. DECISION
The decision of the Examiner is affirmed-in-part.
VII. 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) (2008).

AFFIRMED-IN-PART

cam
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