Ex Parte Whitlaw et al

Board of Patent Appeals and Interferences

Nov 13, 2009

10843984 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH L.WHITLAW, MICHAEL P. TOBEN,
ANDRE EGLI, JEFFREY N. CROSBY,
and CRAIG S. ROBINSON
____________

Appeal 2009-002213
Application 10/843,984
Technology Center 1700
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Decided: November 13, 2009
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 4, 5, 7, and 10-12. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE CASE
Appeal 2009-002213
Application 10/843,984

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Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A method of forming an article comprising:

a) providing a metal alloy substrate;

b) coating the metal alloy substrate with a photoresist;

c) exposing the photoresist to actinic radiation to form a pattern on the
photosensitive compound;

d) developing the exposed photoresist to expose a pattern of the metal
alloy substrate;

e) etching the exposed metal alloy substrate to a depth of 0.75 microns
to 4 microns with a persulfate compound to inhibit whisker formation;

f) stripping remaining photoresist from the metal alloy substrate to
form a patterned metal alloy substrate; and

g) depositing a tin or tin alloy coating on the metal alloy substrate to
form the article.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kurihara JP 05-033187 Feb. 9, 1993
Akahoshi US 5,294,291 Mar. 15, 1994
Maki US 5,965,036 Oct. 12, 1999
Schetty US 2003/0201188 A1 Oct. 30, 2002

Harry J. Levinson, “Principles of Lithography”, pp 3-8 (2001)

THE REJECTION(S)
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Application 10/843,984

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Claims 1, 4, 5, 7, and 10 stand rejected under 35 U.S.C. § 103(a) over
Maki in view of the publication entitled "Principles of Lithography" by
Levinson, Schetty III., and Akahoshi.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) over Maki
in view of the publication entitled "Principles of Lithography" by Levinson,
Schetty III., Akahoshi, and further in view of Kurihara.

ISSUE
Have Appellants shown reversible error in the Examiner’s rejection
by showing that the there is no motivation to combine Maki in view of
Akahoshi because the Examiner’s proposed modification of Maki would
require a substantial reconstruction and redesign of the invention of Maki?
We answer this in the affirmative.

FINDINGS OF FACT
Maki is specifically directed to the use of a microetching agent
comprising a small amount of a polymer compound which contains
polyamine chains or a cationic group, or both, which produces a deep
irregularly etched surface on the surface of copper or a copper alloy. Maki,
col.1, ll. 34-42. Akahoshi uses a completely different type of etchant
comprising an ammonium persulfate solution. Akahoshi, Example 1.
The Examiner does not specifically address Appellants’ argument that
the proposed modification of Maki would require a substantial
reconstruction and redesign of the invention of Maki. See Ans. generally.

PRINCIPLES OF LAW
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A proposed modification or combination of the prior art that would
change the principle of operation of the prior art invention being modified,
weighs against a conclusion of prima facie obviousness. In re Ratti, 270
F.2d 810, 813 (CCPA 1959).

ANALYSIS
As an initial matter, we group the claims based upon Appellants’
argument. Appellants argue the limitation found in independent claims 1
and 10, and specifically address Maki in view of Akahoshi in connection
with this limitation. Hence, we need only consider claims 1 and 10. Also,
we need only address Maki in view of Akahoshi in making our
determinations herein. 37 C.F.R. § 41.37(c)(1)(vii).
On page 9 of the Brief, Appellants argue that substitution of the
etchant of Maki with the ammonium persulfate of Akahoshi would require a
substantial redesign of the invention of Maki. As such, Appellants conclude
that the references have been improperly combined. See also Appellants’
Reply Brief, pages 8-9. We agree. Maki is specifically directed to the use
of a microetching agent comprising a small amount of a polymer compound
which contains polyamine chains or a cationic group, or both, which
produces a deep irregularly etched surface on the surface of copper or a
copper alloy. Maki, col.1, ll. 34-42. As pointed out by Appellants on page 9
of the Brief, the Examiner does not explain how the invention of Maki (to
produce a deep irregularly etched surface by using a specific type of
microetching agent) would be achieved by substituting the polymer
compound based etchant of Maki with the completely different type of
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Application 10/843,984

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etchant used by Akahoshi. In re Ratti, 270 F.2d at 813. The Examiner does
not address this specific point raised by Appellants. See Ans. generally.
Furthermore, the Examiner appears to shift his position entirely, in his
reply to Appellants’ arguments, by stating, on pages 7-8 of the Answer, that
Maki was only relied upon for teaching etching depth. However, in so
doing, the Examiner does not then provide a rationale in support of a prima
facie case of obviousness regarding this shift in position.
In view of the above, we therefore reverse each of the rejections.
CONCLUSIONS OF LAW
Appellants have shown reversible error in the Examiner’s rejection by
showing that there is no motivation to combine Maki in view of Akahoshi
because the proposed modification of Maki would require a substantial
reconstruction and redesign of the invention of Maki.

DECISION
Each of the rejections 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).

REVERSED

Appeal 2009-002213
Application 10/843,984

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PL Initial:
sld

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