Ex Parte Shindo et alDownload PDFPatent Trial and Appeal BoardMay 31, 201811916906 (P.T.A.B. May. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/916,906 12/07/2007 Yuichiro Shindo 270 7590 06/04/2018 HOWSON & HOWSON LLP 350 Sentry Parkway Building 620, Suite 210 Blue Bell, PA 19422 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. OGOSH81USA 1411 EXAMINER KESSLER, CHRISTOPHER S ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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): docketing@howsoniplaw.com ckodroff@howsoniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUICHIRO SHINDO and KOUICHI TAKEMOTO Appeal2017-007770 Application 11/916,906 1 Technology Center 1700 Before TERRY J. OWENS, JULIA HEANEY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 7, 9, and 11-14. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is JX Nippon Mining & Metals Corporation. Appeal Br. 2. Appeal2017-007770 Application 11/916,906 STATEMENT OF THE CASE2 Appellants describe the invention as relating to high purity tin or tin alloy for use in manufacture of semiconductor manufacturing equipment or similar. Spec. 18-11. Claims 1 and 7, reproduced below, are illustrative of the claimed subject matter: 1. A high purity tin consisting of tin and inevitable impurities, having a purity of 5N (99.999 wt%) or higher excluding gas components of 0, C, N, H, Sand P, and being in a form of an ingot formed by melting and casting and stored in an inert gas atmosphere or in vacuum for six months or longer after the casting, wherein the inevitable impurities include U, Th, Pb, and Bi, and contents of U, Th, Pb, and Bi as the inevitable impurities are 5ppb or less, 5ppb or less, 1 ppm or less, and 1 ppm or less, respectively, and wherein the high purity tin has an a ray count of0.001 cph/cm2 or less. 3 7. A high-purity tin alloy consisting of tin, 0.1 to 20 wt% of one or more alloying elements selected from the group consisting of copper, silver, and zinc, and inevitable impurities, having a purity of 5N (99.999wt%) or higher excluding gas components of 0, C, N, H, Sand P, and being in a form of an ingot formed by melting and casting and stored in an inert gas atmosphere or in vacuum for six months or longer after the casting, wherein the inevitable impurities include U, Th, Pb, and Bi, and contents ofU, Th, Pb, and Bi as the inevitable impurities are 5ppb or less, 5ppb or less, 1 ppm or less, and 1 ppm or less, respectively, and wherein the high purity tin alloy has an a ray count of 0.001 cph/cm2 or less. 2 In this Decision, we refer to the Final Office Action dated April 7, 2016 ("Final Act."), the Appeal Brief filed September 7, 2016 ("Appeal Br."), and the Examiner's Answer dated January 31, 2017 ("Ans."). 3 Claims 1 and 7 refer to elements according to their standard abbreviations, and we do the same in this decision: 0 refers to oxygen, C refers to carbon, N refers to nitrogen, H refers to hydrogen, S refers to sulfur, Prefers to phosphorus, U refers to uranium, Th refers to Thorium, Pb refers to lead, and Bi refers to bismuth. 2 Appeal2017-007770 Application 11/916,906 Appeal Br. 30 (Claims App.). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Morimasa et al. JP 1283398 (A) Nov. 14, 1989 ("Morimasa") Kiyonobu et al. JP 2228487 (A) Sept. 11, 1990 ("Kiyonobu") Toshiya et al. JP 9260427 (A) Oct. 3, 1997 ("To shi ya") Hiromi JP 11343590 (A) Dec. 14, 1999 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 7, 9, 11, 13, and 14 under 35 U.S.C. § 112 as indefinite. Ans. 3. Rejection 2. Claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Hiromi. Id. Rejection 3. Claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Morimasa. Id. at 5. Rejection 4. Claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Kiyonobu. Id. at 7. Rejection 5. Claims 7, 9, 11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Morimasa or Kiyonobu and further in view of Toshiya. Id. at 9. Rejection 6. Claims 7 and 9 under 35 U.S.C. § 103 as unpatentable over Toshiya. Id. at 10. 3 Appeal2017-007770 Application 11/916,906 Rejection 7. Claims 1 and 11-14 under 35 U.S.C. § 103 as unpatentable over Toshiya in view of Hiromi. Id. at 11. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection 1. The Examiner rejects claims 7, 9, 11, 13, and 14 under 35 U.S.C. § 112 as indefinite. Ans. 3. During prosecution, "'[a] claim is indefinite when it contains words or phrases whose meaning is unclear."' Ex parte McAward, Appeal 2015-006416, slip op. at 11 (quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (per curium)). The Examiner explains that claim 7 ( and the claims depending from claim 7) are unclear as to what material recited in claim 9 must have the recited "purity of 5N (99.999wt%)." Ans. 3. Appellants submit that it is "the tin alloy" that must have the purity of 5N. Appeal Br. 5-6. Claim 7, however, is unclear as to whether "having a purity of 5N (99 .999wt% )" refers back to the recited tin alloy, the recited tin, and/or the recited "one or more alloying elements." Appeal Br. 30 (Claims App). The Specification leaves open the possibility that, for example, it is the alloying element that 4 Appeal2017-007770 Application 11/916,906 must have 5N purity. Spec. 16:24--17:3 (referring to preparing Ag "to obtain high purity Ag of 5N"). We therefore sustain the rejection of claims 7, 9, 11, 13, and 14 as indefinite so that, in the event of further prosecution, Appellants can clarify the scope of the claim. See, e.g., Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that "the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation."). When addressing the rejections below, we provisionally construe claims 7, 9, 11, 13, and 14 as requiring a tin alloy having a purity of 5N (99.999wt%) or higher excluding gas components of 0, C, N, H, S, and P. Impurities are anything other than (1) the tin, (2) the alloying copper, silver, and/or zinc, and (3) the excluded gas components. Rejection 2, claim 1. The Examiner rejects claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Hiromi. Ans. 3 (citing Hiromi). The Examiner finds that Hiromi discloses a 5N purity tin with Pb and Bi of 1 ppm or less. Id. The Examiner finds that Hiromi does not explicitly disclose the U (uranium) and Th (thorium) and alpha ray count recited in claim 1. Id. The Examiner finds, however, that the tin of Hiromi is like the tin of Appellants' Specification in that both are formed by similar electrolysis. Id. at 4. The Examiner also finds that Th and/or U are impurities that, if desired, would have been disclosed in Hiromi or detected by chemical analysis. Id. at 16. The Examiner also finds that the Hiromi tin is identical or substantially identical to that of claim 1. Id. at 4. 5 Appeal2017-007770 Application 11/916,906 The Examiner also refers to the 0, C, N, H, S, and P of claim 1. Ans. 3. Claim 1 neither requires nor disallows inclusion of any amounts of these gas components. Instead, the recitation of these components only serves to further define the recited "purity of 5N" as not considering these components in the purity calculation. Accordingly, whether or not the prior art teaches inclusion of 0, C, N, H, S, and P does not change the obviousness analysis. Appellants argue that the Examiner has not provided a reason to believe that Hiromi's tin meets the U, Th, or alpha ray count recitations of claim 1. Appeal Br. 6-7, 12. Appellants also argue that the recited process of claim 1 was not known in the art and that the process is essential for achieving the recited alpha ray count. Appeal Br. 8-9. Appellants further argue that Hiromi does not teach the same manufacturing method as claim 1. Appeal Br. 10-11. Hiromi, however, teaches 5N (99.999% pure) pure tin. Ans. 3; Hiromi ,r 4. Hiromi seeks high purity tin for use in semiconductors. Id. at 1. Based on the evidence before us, a person having ordinary skill in the art would have understood that Hiromi' s reason to purify tin for use in semiconductors is because alpha rays caused by radioactive contaminants would otherwise interfere with the semiconductor. See, e.g., Morimasa passim ( explaining production of tin for electronics industry solder "with few alpha-rays counts"); Kiyonobu Abstract (seeking to produce "high purity tin having a small alpha-ray count"); Toshiya ,r,r 5---6 ( explaining that error may result from alpha rays generated from lead). Thus, a person of skill in the art making tin as taught by Hiromi would have been motivated to eliminate as much radioactive material from the tin as possible and thereby, 6 Appeal2017-007770 Application 11/916,906 to lower the alpha-ray count of the tin as much as possible. Moreover, because Hiromi teaches tin purity that exceeds 5N (see Hiromi ,r 14), its teachings overlap with very high tin purity such that that the amount ofU, Th, and other radiation producing contaminants approach zero. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same). High percentage of tin necessarily means low percentage of impurities, and low percentage of impurity necessarily means low radiation / alpha ray count. Accordingly, we agree with the Examiner that it would have been obvious to apply the process of Hiromi to reach the U, Th, and alpha ray limits recited by claim 1. Ans. 13-15. Moreover, the Examiner finds that a person having ordinary skill in the art would have had a reasonable expectation of success in achieving very pure tin within the scope of claim 1 (i.e., tin having low amounts ofU, Th, and other contaminants and therefore having low alpha ray count) by following the teachings of Hiromi. Id. Appellants present no persuasive evidence that would establish the recitations of claim 1 could not be achieved by the process taught by Hiromi. Appellants also argue that Hiromi does not teach an ingot structure. Appeal Br. 8-9. The Specification does not define ingot in any special way, and we construe ingot according to its ordinary meaning: an ingot is in the context of claim 1 is a block of tin that could have any shape or size. Hiromi likewise teaches a block of tin. Ans. 5; Hiromi ,r 1-2 (indicating that tin could be used in manufacturing semiconductors or as an anode). 7 Appeal2017-007770 Application 11/916,906 With respect to claim 1 's recitation of ingot being "formed by melting and casting and stored in an inert gas atmosphere or in vacuum for six months or longer after the casting," this recitation is written in a product-by- process format because the recited ingot is defined "at least in part in terms of the method or process by which it is made." Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (internal quotes and citation omitted). Because claim 1 includes a product-by-process recitation, "determination of patentability is based on the product itself," not on "its method of production." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). "If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." Id. For product-by-process claims, the Examiner "bears a lesser burden of proof in making out a case of prima facie obviousness for product-by- process claims because of their peculiar nature than would be the case when a product is claimed in the more conventional fashion." Application of Fessmann, 489 F.2d 742, 744 (CCPA 1974). Thus, "when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable." Id. (quote and citation omitted). Once the examiner establishes a prima facie case of anticipation or obviousness, the burden "to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product" shifts to the Appellants. Thorpe, 777 F.2d at 698 (citation omitted). 8 Appeal2017-007770 Application 11/916,906 Here, as explained above, a preponderance of the evidence supports the Examiner's determination that the instant claim's structural recitations would have been obvious in view of Hiromi. In particular, Hiromi teaches an ingot of tin purified by a process similar to that of the present application. The Examiner presents a reasonable basis as to why Hiromi' s tin is either identical with or only slightly different than the product defined by the structural recitations of claim 1. Thus, the burden shifts to Appellants to prove that the Hiromi product would not necessarily or inherently possess the characteristics of the claimed product. Appellants do not meet that burden. Appellants argue various differences (Appeal Br. 6-13), but Appellants present no evidence to support the attorney argument. Mere attorney argument is insufficient to persuasively carry Appellants' burden here. Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) ("arguments of counsel argument cannot take the place of evidence lacking in the record.") (internal quotes and citation omitted). Because Appellants' argument does not identify reversible error, we sustain this rejection as to claim 1. Rejection 2, claim 12. Claim 12 recites, "The high purity tin according to claim 1, wherein the contents of Pb and Bi are within a range of 0.06 to 0.9 ppm and a range of 0.01 to 0.3 ppm, respectively, and the a-ray count is within a range of0.0005 to 0.0009 cph/cm2." Appeal Br. 31 (Claims App.). To the extent Appellants repeat the same arguments addressed above (Appeal Br. 13), those arguments are unpersuasive. Appellants also argue that claim 12 defines "an extremely minute combination of ranges that are not necessarily met" by the Hiromi tin. As explained above, however, Hiromi teaches very high purity tin having low 9 Appeal2017-007770 Application 11/916,906 ranges of impurities (and corresponding a-ray count) that will thus overlap with the impurity ranges recited in claim 1. The overlapping range analysis is the same for claim 12. Appellants present no evidence or argument regarding secondary considerations that would change the prima facie analysis. Accordingly, we sustain this rejection. Rejection 3, claims 1 and 12. The Examiner rejects claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Morimasa. Ans. 5. The Examiner finds that Morimasa teaches at least 99 .99 wt% pure tin formed by electrolysis and having an alpha ray count less than or equal to 0.03 cph/cm2. Ans. 5 (citing Morimasa). The Examiner finds that Morimasa does not explicitly disclose impurity amounts. Appellants argue that Morimasa may not reach 5N purity. Appeal Br. 15. Morimasa, however, teaches purity 99.99% or more (i.e., 4N purity or more). Thus, the purity range of Morimasa overlaps that of claim 1 and is sufficient to establish prima facie obviousness. In re Harris, 409 F.3d at 1341. Appellants also argue that claim 1 's recited U and Th content is not obvious from Morimasa. Appeal Br. 15 (arguing claim 1), 17-18 (arguing claim 12). Our analysis is substantially the same as with respect to Hiromi. Morimasa teaches minimizing alpha rays and thus also teaches minimizing impurities. It also teaches overlapping low alpha ray concentrations which will necessarily require overlapping low amounts of impurity. Moreover, as above, the Examiner presents a reasonable basis as to why the purified tin ingot of Morimasa is structurally the same as that the tin ingot of claim 1 such that the burden shifts to Appellants to show that the recited process of claim 1 leads to a different structure. 10 Appeal2017-007770 Application 11/916,906 Because Appellants' arguments do not establish Examiner error, we sustain this rejection. Rejection 4, claims 1 and 12. The Examiner rejects claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Kiyonobu. Ans. 7. Kiyonobu teaches 99.97 wt% tin with Pb, Bi, and other impurities less than 1 ppm and alpha ray count less than or equal to 0.005 cph/cm2. Id. at 7-9 (citing Kiyonobu). Kiyonobu, like the references discussed above, teaches tin purified by electrolysis. Id. at 7. Appellants argue that Kiyonobu does not teach the recited amounts of U, Th, or alpha radiation. Kiyonobu, like the references discussed above, teaches purifying tin to minimize alpha ray count and therefore teaches overlapping ranges of low impurities. Appellants' arguments do not identify reversible error, and we sustain the rejection. Rejection 5, claims 7, 9, 11, 13, and 14. The Examiner rejects claims 7, 9, 11, 13, and 14 under 35 U.S.C. § 103 as unpatentable over Morimasa or Kiyonobu and further in view of Toshiya. Ans. 9. The Examiner finds that Morimasa and Kiyonobu do not teach using the purified tin taught by those references as part of a tin solder alloy. Id. The Examiner finds, however, that Toshiya teaches high purity tin based solder alloys. Id. (citing Toshiya). The Examiner determines that it would have been obvious to use the high purity tin of Morimasa or Kiyonobu with a solder in order to reduce alpha ray count. Appellants argue that Toshiya does not teach low amounts ofU or Th or low alpha ray count. Appeal Br. 22-23. As explained above, these recitations of claim 7 would have been obvious in view of Morimasa or Kiyonobu. In this rejection, the Examiner relies on Toshiya to teach high 11 Appeal2017-007770 Application 11/916,906 purity tin in a solder, and Appellants do not persuasively dispute this teaching of Toshiya. Appellants also argue that claims 11, 13, and 14 recite narrow ranges of Bi and alpha ray count. Appeal Br. 24. As explained above, Morimasa and Kiyonobu teach low impurity and low alpha ray count and therefore teach ranges that overlap with the ranges recited by claims 11, 13, and 14. Because Appellants' argument does not identify reversible error, we sustain this rejection. Rejection 6, claims 7 and 9. The Examiner rejects claims 7 and 9 under 35 U.S.C. § 103 as unpatentable over Toshiya. Ans. 10. The Examiner finds that Toshiya teaches high purity tin based solder having purity of at least 5N with 1 ppm or less Pb, excluding elements having atomic numbers 81 and greater, and alpha ray count less than or equal to 0.1 cph/cm2. Id. (citing Toshiya). Appellants argue that Toshiya does not disclose a method of manufacture, does not teach Bi, U, or Th amounts, and does not teach the alpha ray emission of claim 7. Appeal Br. 25-26. Much like the other references discussed above, however, Toshiya teaches to minimize impurity and minimize alpha rays. See, e.g., Toshiya ,r,r 5, 6, 19. Toshiya teaches a purity range overlapping that of claim 7 and therefore teaches impurity and alpha ray ranges overlapping that of claim 7. Toshiya need not teach the same process as the process step of claim 7 because the Examiner sets forth a reasonable basis as to why the structure of Toshiya's purified tin is the same as that of claim 7. We sustain this rejection. Rejection 7, claims 1 and 11-14. The Examiner rejects claims 1 and 11-14 under 35 U.S.C. § 103 as unpatentable over Toshiya in view of 12 Appeal2017-007770 Application 11/916,906 Hiromi. Ans. 11. The Examiner finds that the high purity tin of Toshiya, prior to mixing with alloys reads on the high purity tin of claim 1 and also determines that it would have been obvious in view of Hiromi to use high purity tin of Toshiya as raw material to reduce alpha ray count. Appellants' arguments are substantially the same as those addressed above. Appeal Br. 27-30. We sustain this rejection for the reasons expressed by the Examiner and explained above. DECISION For the above reasons, we affirm the Examiner's rejections of claims 1, 7, 9, and 11-14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 13 Copy with citationCopy as parenthetical citation