Ex Parte Stiller et al

Patent Trial and Appeal Board

Sep 30, 2013

12527606 (P.T.A.B. Sep. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/527,606 11/17/2009 Thomas Stiller 4499-921 6443
24112 7590 10/01/2013
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
10/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte THOMAS STILLER,
WALTER BRADER,
and LASLO JACKOVIC
__________

Appeal 2012-004511
Application 12/527,606
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004511
Application 12/527,606

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A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-3 and 5-18, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a soldering tip for a soldering
device. Sole independent claim 1 is reproduced below from the Claims Appendix
of the Appeal Brief dated July 21, 2011 (“Br.”). We have italicized the claim
limitation at issue.
1. A soldering tip for a soldering device, comprising:
a heat base body with a contact surface on an outside thereof
that can be wetted by tin solder at least in sections;
the atoms of the material of the contact surface being arranged
in a metallic or crystal lattice structure;
wherein charged elementary particles of at least one foreign
material are incorporated into the lattice structure of the contact
surface; wherein the charged elementary particles are ions;
wherein the charged elementary particles are disposed on at
least one of lattice sites of the lattice structure of the contact surface
and interstices thereof.
The claims on appeal stand rejected as follows: claims 1-3 and 5-18 are
rejected under 35 U.S.C. § 112, first paragraph, based on the written description
requirement; claims 1-3, 6-10, 12, and 13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dunham; claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dunham; and claims 14-18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dunham in combination with one or more of Ebata,
Kaderabek, and Verwey.
Appeal 2012-004511
Application 12/527,606

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B. DISCUSSION
1. Rejection under 35 U.S.C. § 112, first paragraph
The Examiner finds the Appellants’ original disclosure does not provide
written description support under 35 U.S.C. § 112, first paragraph, for the
limitation “wherein the charged elementary particles are ions” recited in claim 1.
The Examiner finds that ions may be considered charged elementary particles.
However, the Examiner contends that not all charged elementary particles are
considered ions. According to the Examiner, one of ordinary skill in the art would
have understood that protons and electrons are also “charged elementary particles”
as recited in claim 1. Ans. 5.1
There is no dispute on this record that the phrase “wherein the charged
elementary particles are ions” does not appear in the Appellants’ original
disclosure. Ans. 14. However, the Appellants contend that the following
paragraph on page 3, lines 14-22 of the original disclosure “makes it clear that the
charged elementary particles are ions.” Br. 4.
The foreign materials, the charged elementary particles of which
could be incorporated into the contact surface, are e.g. platinum,
tungsten, molybdenum, titanium, cobalt, germanium, silicon, arsenic,
gallium, nitrogen or carbon. The incorporation of charged elementary
particles of platinum, tungsten, molybdenum, titanium, nickel or
cobalt generally improve the lifetime of the soldering tips according to
the invention. If charged elementary particles of germanium, silicon,
arsenic or gallium are incorporated into the lattice structure of the
contact surface, the wettability of the soldering tip will improve. The
incorporation of nitrogen or carbon has the effect that the soldering
tips can withstand a higher mechanical load.
According to the Appellants:

1 Examiner’s Answer dated September 20, 2011.
Appeal 2012-004511
Application 12/527,606

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If the inventor meant that the charged elementary particles could
simply be “protons” or “electrons”, as suggested by the Examiner,
there would be no reason to identify what specific materials the
charged elementary particles came from (e.g., “platinum,
tungsten . . . .”) because all protons are identical, as are all electrons.
As such, if the inventor meant protons or electrons, the source of the
protons/electrons is entirely irrelevant. Thus, the examples of the
foreign material that supplies the charged elementary particles as
being platinum or tungsten or molybdenum, etc. in the specification
indicate that the charged elementary particles are ions.
Br. 4.
The Appellants also argue that the description of different results obtained
by incorporating the charged elementary particles of different materials establishes
that the phrase “charged elementary particles” refers to the ions of different
materials, not electrons or protons. Br. 5.
According to the Appellants’ original disclosure, the elementary particles of
the foreign material, not the foreign material itself, are charged. See Spec. 3, ll. 14-
16 (“The foreign materials, the charged elementary particles of which could be
incorporated into the contact surface, are e.g., platinum . . . . .”) (emphasis added).
Thus, we find one of ordinary skill in the art would have understood that the
“charged elementary particles” described in the Appellants’ original disclosure
could be protons and/or electrons.2

2 We note that the ordinary meaning of “elementary particle” is a subatomic
particle and “subatomic particles” include protons and electrons. See
http://www.thefreedictionary.com/elementary+particle (last visited Sept. 30, 2013);
http://www.thefreedictionary.com/subatomic+particle (last visited Sept. 30, 2013).
The ordinary meaning of “ion,” on the other hand” is “[a]n atom or a group of
atoms that has acquired a net electric charge by gaining or losing one or more
electrons.” See http://www.thefreedictionary.com/ion (last visited Sept. 30, 2013).
Appeal 2012-004511
Application 12/527,606

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We recognize the Appellants disclose that different results are obtained by
incorporating the charged elementary particles of different materials. Spec. 3, ll.
16-22. However, the Examiner explains:
While electrons of all elements are the same and all protons of
elements are the same, each electron and proton is still associated with
a specific element. If carbon is added to the lattice, the electrons and
protons of that specific carbon material are located within the lattice
and the mechanical/physical properties of that carbon material
enhance the lattice structure.
Ans. 13-14. The Appellants have not directed us to any evidence to the contrary.
Based on the foregoing, we find the Appellants’ original disclosure does not
provide written description support for the limitation “wherein the charged
elementary particles are ions” recited in claim 1. Therefore, the § 112, first
paragraph, rejection of claims 1-3 and 5-18 is sustained.
2. Rejections under 35 U.S.C. §§ 102(b) and 103(a)
As for the rejections under 35 U.S.C. §§ 102(b) and 103(a), the Examiner
indicates that “no prior art has been applied against the new matter limitations”
(i.e., “wherein the charged elementary particles are ions” recited in claim 1). Ans.
15. Therefore, we will not sustain the §§ 102(b) and 103(a) rejections on appeal.
D. DECISION
The decision of the Examiner is affirmed.

AFFIRMED

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