Ex Parte Standing

Board of Patent Appeals and Interferences

Jun 8, 2010

10970165 (B.P.A.I. Jun. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARTIN STANDING
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Appeal 2009-005747
Application 10/970,165
Technology Center 2800
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Decided: June 9, 2010
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Before, ROBERT E. NAPPI, JOHN C. MARTIN, and
JOSEPH F. RUGGIERO, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-005747
Application 10/970,165

This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-11, 15, and 19-28.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a paste that contains binder particles, filler
particles, and flux. The binder particles melt at a lower temperature than the
filler particles. When the binder particles melt and cool they glue the filler
particles to one another to form an interconnect structure. Spec. 1-3. Claim
1 is representative of the invention and reproduced below:
1. A conductive paste comprising:
electrically conductive binder particles; and
a plurality of silver-coated filler particles mixed
with said binder particles.

REFERENCES
Soga US 2002/0114726 A1 Aug. 22, 2002

REJECTIONS AT ISSUE
Claims 1-8, 11, 15, 19-21, 27, and 28 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Soga. Ans. 3-5.
Claims 9, 10, and 22-26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Soga. Ans. 5-8.

1 Originally submitted claims 29-58 were withdrawn in a response to an
Election/Restriction requirement, mailed March 4, 2005. Claims 12-14 were
cancelled in an Amendment, filed July 15, 2005.
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Application 10/970,165

ISSUES
Rejections over Soga
Rejection of Claims 1-11, 15, 19-21, and 27
Appellant argues on page 5 of the Appeal Brief and on page 1 of the
Reply Brief that the Examiner’s rejection of independent claim 1 is in error.
Appellant argues that Soga does not disclose silver-coated particles. App.
Br. 5; Reply Br. 1. Additionally, Appellant argues that the Examiner’s
rejection of dependent claims 2-11, 15, 19-21, and 27 is in error for the same
reasons as independent claim 1.
Thus, Appellant’s contentions with respect to claims 1-11, 15, 19-21,
and 27 present us with the issue: Did the Examiner err in finding that Soga
discloses silver-coated particles?
Claims 22-26
Appellant argues on pages 6-8 of the Appeal Brief and pages 2-4 of
the Reply Brief that the Examiner’s rejection of independent claim 22 is in
error. Appellant argues that Soga does not disclose the percent of the total
weight of the composition of binder or filler particles. App. Br. 8; Reply Br.
3. Additionally, Appellant argues that the Examiner’s rejection of
dependent claims 23-26 is in error for the same reasons as independent claim
22.
Thus, Appellant’s contentions with respect to claims 22-26 present us
with the issue: Did the Examiner err in finding that Soga discloses
electrically conductive binder particles comprising 50-85% of the total
weight of the composition and filler particles comprising 5-40% of the total
weight of the composition?
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Application 10/970,165

Claim 28
Appellant argues on pages 6-8 of the Appeal Brief and pages 3-4 of
the Reply Brief that the Examiner’s rejection of claim 28 is in error.
Appellant argues that Soga does not disclose a proportion of copper balls to
tin balls “such that said conductive binder particles [tin balls] will not flow
when melted but is enough to fuse said filler particles [copper balls]
together.” App. Br. 8.
Thus, Appellant’s contentions with respect to claim 28 present us with
the issue: Did the Examiner err in finding that Soga discloses a proportion of
copper balls to tin balls such that said conductive binder particles [tin balls]
will not flow when melted but is enough to fuse said filler particles [copper
balls] together?
FINDINGS OF FACT (FF)
Soga
1. Soga discloses a solder paste comprising copper balls, tin balls, and
flux. ¶ [0051].
2. As heat is applied, the tin balls melt and uniformly wet the copper
balls and bond the copper balls together so they do not move. ¶
[0028].
ANALYSIS
Rejections over Soga
Rejection of Claims 1-11, 15, 19-21, and 27
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 1. Claim 1 recites “a plurality of silver-coated
filler particles mixed with said binder particles.” The Examiner finds that
Soga discloses silver-coated filler particles (Fig. 1, element 1) and binder
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Application 10/970,165

particles formed of solder. Ans. 3 (citing Soga [0061]). Appellant does not
dispute this finding and the Specification on page 6 supports this finding.
The Examiner also finds that Soga discloses copper balls having tin-silver
plating thereon. Ans. 8 (citing Soga [0061]). Appellant argues that Soga
does not mention silver coated particles in its disclosure, but rather copper
balls with tin and silver plating. App. Br. 5; Reply Br. 1. However, since
copper balls can be filler particles and since the claim does not specifically
require that the plating on the filler particles contain only silver, we do not
find Appellant’s arguments to be persuasive. As such, for the reasons stated
above, we sustain the Examiner’s rejection of independent claim 1 and
claims 2-11, 15, 19-21, and 27 that are dependent upon claim 1.
Claims 22-26
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claim 22. Claim 22 recites “a plurality of filler
particles mixed with said binder particles, wherein said electrically
conductive binder particles comprise 50-85% of the total weight of the
composition, and said filler particles are comprise 5-40% of the total weight
of the composition.” The Examiner finds that Figure 19 of Soga discloses
the proper range of binder particle weight to filler particle weight. Ans. 9.
The Examiner makes this finding by performing a calculation using, the one
example from Soga, and an estimate of percentage of flux, by weight, which
results in Appellant’s claimed percentages. Ans. 9. The Examiner supports
this finding by stating that the estimated percentage of flux is what one of
ordinary skill in the art would have recognized as a common range. Ans. 9.
Therefore, the Examiner finds that Soga discloses the claimed ranges of
binder and filler particles. Ans. 9. We disagree.
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Appellant argues that this range of percentages is assumed based upon
Appellant’s claimed binder and filler percentages. Reply Br. 3. We concur
with Appellant. The Examiner does not provide support for the finding that
a common range for the percentage of flux is 2.86%-15%. Thus, we do not
find evidence to support the Examiner’s findings. As such, we will not
sustain the Examiner’s rejection of independent claim 22 or claims 23-26
which depend upon claim 22.
Claim 28
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of independent claim 28. Claim 28 recites “a plurality
of filler particles mixed with said binder particles, wherein a proportion of
said electrically conductive binder particles relative to a proportion of said
filler particles is such that said conductive binder particles will not flow
when melted but is enough to fuse said filler particles together.” Appellant
argues on page 8 of the Appeal Brief and page 3 of the Reply Brief that Soga
does not disclose selecting a proportion of tin balls to copper balls so as to
fuse the copper balls together even though the tin does not flow when
melted. We do not find this argument to be persuasive.
The Examiner finds that Soga discloses bonding the filler particles by
melting the binder particles. Ans. 11. Appellant’s invention performs the
same operation. Appellant’s Specification, states “[o]nce the temperature is
lowered below the melting temperature of binder particles 18, filler particles
16 are 'glued' to one another.” Spec. ¶ [0047]. Therefore, the Examiner
finds that Soga’s paste and Appellant’s paste are structurally similar.
Where, as here, the claimed and prior art products are identical or
substantially identical, the Patent and Trademark Office can require an
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applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of the claimed product. Whether the rejection is
based on inherency under 35 U.S.C. § 102, or on prima facie obviousness
under 35 U.S.C. § 103(a), jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the inability of the Patent and
Trademark Office to manufacture products or to obtain and compare prior
art products. In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977).
Appellant does not contest with any reasonable specificity that Soga’s
paste does not have the same structure or characteristics as Appellant’s
paste. Thus, it follows that Appellant has failed to carry his burden of
proving that Soga’s paste does not necessarily or inherently possess the
contested characteristics of the claim 28 paste.
Appellant makes additional arguments that the Soga composition is
not the same as Appellant’s invention. Reply Br. 4. Appellant argues the
following: (1) the proportion of tin in Soga is not selected so as to not flow
when it is melted; (2) the example of the Soga composition indicated by the
Examiner does not contain binder and filler particles since the composition
has already been heated; and (3) the Soga composition is not “capable of
retaining its as-deposited shape.” Reply Br. 4.
First, Appellant argues that Soga does not explicitly state that the
binder will not flow when melted. Reply Br. 4. As noted above, Soga
discloses a similar structure to Appellant’s composition and would
inherently possess the same characteristics as Appellant’s composition. For
example, Appellant’s Specification discloses that the purpose of preventing
the binder particles from flowing is to glue the filler particles together to
form an integral structure. Spec. ¶ [0048]. Likewise, Soga discloses melting
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the tin in the gaps of the copper particles to bond the copper particles
together to keep them from moving. 2.
Second, Appellant argues that Soga’s example, cited by the Examiner,
does not disclose binder and filler particles because the binder melts
completely upon a secondary reflow, as shown in the example. Reply Br. 3.
Appellant’s statement merely concludes this without citing evidence or
further explanation. Reply. Br. 3. We consider such a conclusory assertion
without supporting explanation or analysis particularly pointing out errors to
fall short of persuasively rebutting the Examiner’s prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Further, the example disclosed by the Examiner indicates the presence of
copper and tin balls, i.e., binder and filler particles, as shown in paragraph
[0028] of Soga. Ans. 12.
Third, Appellant argues that Soga does not disclose a paste that retains
its as-deposited shape. Reply Br. 4. However, claim 28 does not
specifically claim that the paste must be capable of retaining its as-deposited
shape. Therefore, that limitation will not be read into the claim. Further,
Soga discloses that when the tin melts, the copper particles do not move
since they are bonded together. FF 2. This indicates that the as-deposited
shape is retained.
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 28.

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Application 10/970,165

CONCLUSION
The Examiner did not err in finding that Soga discloses silver-coated
particles.
The Examiner did not err in finding that Soga discloses a proportion
of copper balls to tin balls such that said conductive binder particles [tin
balls] will not flow when melted but is enough to fuse said filler particles
[copper balls] together.
The Examiner did err in finding that Soga discloses electrically
conductive binder particles comprising 50-85% of the total weight of the
composition and filler particles comprising 5-40% of the total weight of the
composition.

SUMMARY
The Examiner’s decision to reject claims 1-11, 15, 19-21, 27, and 28
is affirmed. The Examiner’s decision to reject claims 22-26 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv).
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Application 10/970,165

AFFIRMED-IN-PART

ELD

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