Ex Parte Yokochi et alDownload PDFPatent Trials and Appeals BoardMay 24, 201913981777 - (D) (P.T.A.B. May. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/981,777 08/26/2013 42798 7590 05/28/2019 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street, Suite 2100 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Seigo Y okochi 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. 20374-134996 2691 EXAMINER MARTIN, MATTHEW T ART UNIT PAPER NUMBER 1721 MAIL DATE DELIVERY MODE 05/28/2019 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 SEIGO YOKOCHI and HIROKI HAYASHI Appeal2017-009265 Application 13/981,777 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-11 of Application 13/981,777 under 35 U.S.C. § 103(a). Final Act. (Nov. 27, 2015) 4--9. Appellants 1 seek reversal of the rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we REVERSE. 1 Hitachi Chemical Company, Ltd., is identified as the real party in interest. Appeal Br. 3. Appeal2017-009265 Application 13/981,777 BACKGROUND The present application generally relates to a conductive adhesive composition which contains (A) conductive particles, (B) a thermosetting resin, and (C) a flux activator. Spec. 2 4:8-11. The viscosity of the conductive adhesive composition is taught to be 5 to 30 Pa· sand made up of 70 to 90% conductive particles by mass. Id. at 4: 12-13. Such composition is stated to be useful in the "electrical connection of a plurality of solar battery cells." Id. at 1:8-9. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A conductive adhesive composition comprising conductive particles (A) containing metal having a melting point of equal to or lower than 210°C, a thermosetting resin (B), and a flux activator (C), wherein viscosity of the conductive adhesive composition is 5 to 30 Pa· sat 25°C and 2.5 rpm, and a content of the conductive particles (A) is 70 to 90% [0030] by mass with respect to the total amount of the conductive adhesive composition. Appeal Br. 29 (Claims App.). 2 Specification dated July 25, 2013 (hereinafter "Spec."). 2 Appeal2017-009265 Application 13/981,777 REJECTIONS The Examiner maintains the following rejections3: 1. Claims 1-5 and 10 are rejected under 35 U.S.C. § I03(a) (pre- AIA)4 as obvious over Higuchi et al. 5 in view of Morimoto et al. 6 Final Act. 4--6. 2. Claim 6 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as obvious over Higuchi in view of Morimoto and further in view of Murozono. 7 Id. at 6. 3. Claims 7, 9, and 11 are rejected under 35 U.S.C. § I03(a) (pre- AIA) as obvious over Higuchi in view of Morimoto and further in view of Hishida et al. 8 Id. at 6-7. 4. Claim 8 is rejected under 35 U.S.C. § I03(a) (pre-AIA) as obvious over Higuchi in view of Morimoto and further in view of Hishida and Murozono. Id. at 8-9. 3 In the Final Rejection, the Examiner rejected claims 1-9 for lack of enablement. Final Act. 2-3. This rejection was subsequently withdrawn. Answer 7. 4 Because the present application claims priority to JP 2011-015 629, filed Jan. 27, 2011, prior to the March 16, 2013 effective date of the America Invents Act, we apply the pre-AIA version of 35 U.S.C. § 103. 5 US 2011/0049439 Al, published March 3, 2011 ("Higuchi"). 6 JP 2009-138155 A, published June 25, 2009 ("Morimoto"). 7 US 2006/0185716 Al, published Aug. 24, 2006 ("Murozono"). 8 US 2008/0121265 Al, published May 29, 2008 ("Hishida"). 3 Appeal2017-009265 Application 13/981,777 DISCUSSION Rejection 1. The Examiner rejected claims 1-5 and 10 as obvious over Higuchi in view of Morimoto. Id. at 4---6. In support of the rejection, the Examiner found that Higuchi teaches an electrically conductive paste that includes conductive metal particles, a thermosetting resin, and a flux activator. Id. at 4--5. The Examiner concedes, however, that the viscosity values exemplified in Higuchi are "around 1,000 Pa*s." Id. at 5. The Examiner further finds that Higuchi teaches that viscosity may be adjusted with a thixotropy imparting additive. Id. The Examiner additionally finds that Morimoto teaches an electroconductive adhesive, suitable for application by dispenser, that has a viscosity range of 10---50 Pa·s. Id. Appellants argue that the cited references teach away from the claimed viscosity range. Appeal Br. 23. Appellants assert that Higuchi teaches that its viscosity may be lowered by the addition of a diluent. Id. at 24. Appellants argue, however, that so much diluent would be needed to reduce the viscosity from over 1000 Pa·s to 50 Pa·s that the composition would no longer satisfy the limitation of being 70 to 90% by mass conductive metal particles. Id. This is insufficient to show error as the Appellants do not supply an evidence-based numerical analysis indicating how much solvent would be required to reduce the viscosity so as to fall within the claimed range. Appellants additionally argue that both Higuchi and Morimoto teach away from the use of a large amount of solvents because they cause voids in the composition which increase electrical resistance. Id. In support of such argument, Appellants cite to Morimoto's teaching that "if a lot of solvents and diluents as a viscosity controlling agent are added, a void will occur." 4 Appeal2017-009265 Application 13/981,777 Id. (citing Morimoto ,r 6). Appellants additionally cite to Higuchi's statement that "the present application has the objects that ... the electrically conductive path can exclude or reduce the voids which could form therein." Id. ( citing Higuchi ,r 20). The Examiner does not directly dispute these teachings but finds that Higuchi teaches that viscosity is adjustable by addition of a suitable amount of additive and that in the prior art "a low viscosity is preferred to prevent conductive particles [from] settling out of the adhesive composition." Answer 9. Thus, the Examiner's proposed hypothetical composition includes a significant portion of additive. Prior art may teach away if it "criticize[ s ], discredit[ s ], or otherwise discourage[s] the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, "[a] reference 'teaches away' when it 'suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant."' Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). Here, both the primary reference, Higuchi, and the secondary reference, Morimoto, teach that the addition of significant quantities of additives is undesirable because such additives increase the number of voids present in the composition upon hardening and thereby reduce conductivity. See Higuchi ,r,r 13, 14, 18, 20; Morimoto ,r,r 6, 10, 13. Indeed, Morimoto is titled "Solventless Conductive Adhesive." Accordingly, we do not adopt the Examiner's finding that a person of ordinary skill in the art would have been motivated by the teachings of Higuchi (see, e.g., ,r 55) to adjust the viscosity of the compositions of Higuchi from greater than 1,000 Pa·s (measured at 1.0 rpm) to less than 30 Pa·s (measured at 2.5 rpm). See Answer 9. 5 Appeal2017-009265 Application 13/981,777 In view of the foregoing, we determine that Appellants have shown error in the rejection of claim 1 and claims 2-11 which depend therefrom. See Appeal Br. 29-31 (Claims App.). Appellants present separate argument regarding claim 3. Id. at 26-27. As we have determined that the rejection of claim 1 (from which claim 3 depends) was made in error, the rejection of claim 3 will be reversed and we need not consider Appellants' additional arguments in this regard. Rejections 2-4. The Examiner rejected claims 6-9 and 11 over Higuchi in view of Morimoto and further in view of certain additional references. Final Act. 6-9. None of the additional references are relied upon to remedy the deficiency identified by the Appellants. Accordingly, the rejections of dependent claims 6-9 and 11 are reversed for the reasons set forth above. CONCLUSION The rejections of claims 1-11 as obvious are 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). REVERSED 6 Copy with citationCopy as parenthetical citation