Ex Parte UH et alDownload PDFPatent Trial and Appeal BoardNov 1, 201713272550 (P.T.A.B. Nov. 1, 2017) Copy Citation United States Patent and Trademark Office 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. 13/272,550 10/13/2011 Dong Seon UH 293/082 7869 27849 7590 11/0 LEE & MORSE, P.C. 3141 FAIR VIEW PARK DRIVE SUITE 500 FALLS CHURCH, VA 22042 EXAMINER CHANG, VICTOR S ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 11/03/2017 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): eoa@lee-iplaw.com swerbow@lee-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONG SEON UH, GYU SEOK SONG, MIN KYU HWANG, KI TAE SONG, and DAE HO SEO Appeal 2017-001989 Application 13/272,5501 Technology Center 1700 Before GEORGE C. BEST, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 3, 6, and 7. Because at least one of the claims on appeal has been rejected twice, we have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Cheil Industries, Inc., now known as Samsung SDI Co., Ltd., as the real party in interest. Appeal Br. 2. 2 In our Opinion, we refer to the Specification filed October 13, 2011 (“Spec.”); the Non-Final Action mailed December 16, 2015 (“Non-Final Act.”); the Appeal Brief filed May 16, 2015 (“Appeal Br.”); the Examiner’s Answer mailed September 21, 2016 (“Ans.”); and the Reply Brief filed November 21, 2016 (“Reply Br.”). Appeal 2017-001989 Application 13/272,550 For the reasons set forth below, we AFFIRM. Because we rely upon different findings of fact and reasoning from the Examiner, we designate our affirmance as a NEW GROUND OF REJECTION under 37 C.F.R § 41.50(b). The claims are directed to adhesive films for semiconductor devices. Spec. 11. Claim 1, reproduced below with disputed limitations italicized, is illustrative of the claimed subject matter: 1. An adhesive film for semiconductor devices, the adhesive film comprising: a base film having a coefficient of linear expansion of about 50 to about 150 jum/m-°C at 0 to 5 °C; and a pressure sensitive adhesive layer on one side of the base film, wherein the base film has a thermal contraction ratio of about 0.02 % to about 0.1 % after 120 hours at 5 °C. Appeal Br. 12 (Claims App’x). REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Smith US 3,232,785 Feb. 1, 1966 Kataoka et al. US 6,159,827 Dec. 12,2000 (“Kataoka”) Yamamoto US 2001/0023264 Al Sept. 20, 2001 Bruce Cassel & Kevin Menard, Coefficient of Thermal Expansion Measurement using the TMA 4000, PerkinElmer 2013. Coefficients of Linear Thermal Expansion, http://www.EngineeringToolBox.com (last visited Dec. 12, 2015). REJECTIONS The Examiner maintains and Appellants seek review of the rejection under 35 U.S.C. § 103(a) of claims 1,3,6, and 7 over Yamamoto in view of Kataoka and 2 Appeal 2017-001989 Application 13/272,550 Smith, as evidenced by Coefficient of Thermal Expansion Measurement using the TMA 4000 and Coefficients of Linear Thermal Expansion. OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Rejection based on Yamamoto in view of Kataoka and Smith Appellants argue for the reversal of the obviousness rejection of claims 1,3, 6, and 7 on the basis of limitations present in independent claim 1. See Appeal Br. 5—11. We, therefore, limit our analysis to claim 1. Claims 3, 6, and 7 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015). The Examiner finds that Yamamoto anticipates the general structure and composition limitations for the same end uses as the claimed invention, but is silent about the thermal properties of the base film. Non-Final Act. 3. The Examiner finds Kataoka teaches subjecting the base film to heat treatment prevents the base film from shrinkage with the lapse of time, and a “suitable amount of heat treatment” is a result effective variable that can be optimized. Id. at 4 (citing Kataoka col. 6,11. 14—16); Ans. 6. The Examiner concludes that it would have been obvious optimization to one of ordinary skill in the art at the time of the invention to modify Yamamoto’s base film with a suitable amount of heat treatment to obtain a “workable amount of TCR” (thermal contraction ratio) as taught by Kataoka, motivated by the desire to obtain a dimensionally stable base film which can be subjected to prolonged low temperature storage. Non-Final Act. 4. 3 Appeal 2017-001989 Application 13/272,550 Kataoka discloses stretching the base film and then subjecting it to a heat treatment to prevent the film from shrinkage, with the heat treatment temperature preferably from about 45 to 80 °C. Kataoka col. 6,11. 14—17. Appellants argue that the Examiner fails to show that Kataoka discloses an “amount” of heat treatment or that an amount of heat treatment is a result effective variable. Appeal Br. 5—6. Appellants contend that Kataoka merely describes the binary difference between performing and not performing heat treatment. Id. at 6. “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). However, the Examiner directs us to no such recognition here. Appellants correctly describe Kataoka’s disclosure in relation to heat treatment as binary, i.e., the base film is heat treated or it is not, but there is no disclosure of varying the duration or temperature of the heat treatment in order to achieve different results. Thus, Appellants identify a reversible error in the Examiner’s rejection of claim 1. We do not sustain the Examiner’s rejection of claims 1,3,6, and 7 under 35 U.S.C § 103(a) as obvious over Yamamoto in view of Kataoka and Smith. NEW GROUND OF REJECTION Although the Examiner erred, we cannot agree with Appellants that the record before us supports patentability. We, therefore, enter a new ground of rejection under 35 U.S.C. § 103(a) over Yamamoto. Yamamoto discloses an adhesive film for semiconductor devices comprising a base film and a pressure-sensitive adhesive (PSA) layer on one side. Yamamoto 113. A wide variety of polymers may be used for the base film, including polyethylene, polypropylene, polyvinyl chloride, polyethylene terephthalate, 4 Appeal 2017-001989 Application 13/272,550 polycarbonate, and polystyrene—all as specified in claim 3. Id. ]f 23. The PSA layer may comprise a binder (UV curable PSA polymer), a photoinitiator, and a heat curing agent (epoxy resin). Id. 118. The PSA polymer may have a weight average molecular weight of at least 200,000 to 1,500,000. Id. 120. Yamamoto therefore discloses all elements of claim 1 except for the claimed properties of the base film (a coefficient of linear expansion of about 50 to about 150 pm/m-°C at 0 to 5 °C and a thermal contraction ratio of about 0.02 % to about 0.1 % after 120 hours at 5 °C). According to Appellants, the base films of the claims are formed by an extrusion process or blowing process after blending and melting chips. Declaration of Gyu-Seok Song (“Song Decl.”) 19, Feb. 26, 2015; Spec. 146. The thermal resistance and mechanical properties of the base films are determined by the kind of chips blended. See Song Decl. 19; Spec. 146. Appellants did not invent the base films or even determine the chips from which the base films were to be made but merely ordered base films with the desired properties from a commercial supplier. Song Decl. 110. Appellants acknowledge that base films encompassed by claim 1 were commercially available. See id. H 9—11. Thus, Appellants cannot claim invention of the base films themselves. The thermal and mechanical properties of the base films cannot impart patentability to claim 1 because they are inherent properties of the base film. “[M]ere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art.” In re Oelrich, 666 F.2d 578, 581 (C-CPA 1981). This is not a case where inherency is the natural result of a previously unknown combination of prior art elements; rather the claimed properties are necessarily present in a commercially available polymer. The limitations to inherent properties add 5 Appeal 2017-001989 Application 13/272,550 nothing of patentable consequence to claim 1. See In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011). “[I]t is not required . . . that the prior art disclose or suggest the properties newly-discovered by an applicant in order for there to be a primafacie case of obviousness.” In re Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (enbanc). Structural similarity between claimed and prior art subject matter, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness. Id. at 692. The burden thus falls on Appellants to rebut the prima facie case. See id. Appellants’ test data in the record (Table 1 of the Specification and paragraphs 11 and 14 of the Song Declaration) are inadequate to rebut prima facie obviousness of clai m l, as the data are not commensurate with the scope of the claim. Table 1 in the Specification describes all of the base films tested as “polyolefin.” Spec. ®j] 98. The Song Declaration provides the names of the chips that commercial suppliers used to prepare the polyolefins for four of the five samples used in the examples and comparative examples, but gives no indication of how the polyolefins differ from each other in structure or how one of ordinary skill in the art would be able to make the base films of the claims without undue experimentation. Where the claimed and prior art products are identical or substantially identical, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Accordingly, we find claim 1 unpatentable under 35 U.S.C. § 103(a) as obvious over Yamamoto. Claim 3 would have been obvious over Yamamoto for the reasons given with respect to claim 1 and because claim 3 claims many of the same base films as are disclosed in Yamamoto. See Yamamoto 123. 6 Appeal 2017-001989 Application 13/272,550 Claim 6 would have been obvious over Yamamoto because Yamamoto discloses a pressure sensitive adhesive layer comprising a pressure sensitive adhesive binder, a heat curing agent, and a photoinitiator, the same elements as in the claim. Id. *18. Claim 7, which requires the pressure sensitive adhesive binder to have a weight average molecular weight of about 100,000 to about 1,000,000, would have been obvious over Yamamoto because Yamamoto discloses a UV curable PSA polymer (binder) having a weight average molecular weight of at least 200,000 to 1,500,000. Id. 120. Where ranges overlap, a prima facie case of obviousness is made. In re Boesch, 617 F.2d 272, 275 (CCPA 1980); see also 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). For the reasons set forth above, we conclude that claims 1,3,6, and 7 are unpatentable as obvious over Yamamoto. DECISION For the above reasons, we reject claims 1,3,6, and 7 as obvious over Yamamoto. This is a new ground of rejection. We cannot sustain the Examiner’s rejection of claims 1, 3, 6, and 7 as obvious over Yamamoto in view of Kataoka and Smith. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that the appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to 7 Appeal 2017-001989 Application 13/272,550 the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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: NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation