Materion Corporation

Patent Trials and Appeals Board

Feb 17, 2022

2020005628 (P.T.A.B. Feb. 17, 2022)

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. 15/435,856 02/17/2017 Ramesh Kothandapani 1205225 (05801- MTRN(AM)) 5866 175538 7590 02/17/2022 COZEN O''CONNOR - DC - Gendzwill 3WTC, 175 Greenwich Street 55th Floor New York, NY 10007 EXAMINER STONER, KILEY SHAWN ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 02/17/2022 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): jgendzwill@cozen.com nyipdocketing@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAMESH KOTHANDAPANI, SINLI TAN, and CHEE KONG LEE Appeal 2020-005628 Application 15/435,856 Technology Center 1700 ____________ Before KAREN M. HASTINGS, DONNA M. PRAISS, and JENNIFER R. GUPTA, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 3-7, 9-12, and 20-29, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Specification filed Feb. 17, 2017 (“Spec.”), the Final Office Action dated Sept. 13, 2019 (“Final Act.”), the Appeal Brief filed Apr. 13, 2020 (“Appeal Br.”), the Examiner’s Answer dated May 26, 2020 (“Ans.”), and the Reply Brief filed July 27, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies MATERION CORPORATION as the real party in interest. Appeal Br. 1. Appeal 2020-005628 Application 15/435,856 2 We AFFIRM and designate our affirmance as new grounds of rejection for the reasons discussed herein. STATEMENT OF THE CASE The invention relates to a solder preform for use in ceramic package hermetic sealing applications. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal (emphasis added). 1. A method of making a solder preform, comprising: receiving a ribbon consisting of raw solder material; forming a first annular solder preform by laser cutting the ribbon along an exterior peripheral cutting edge and an interior peripheral cutting edge, wherein the first annular solder preform has a square shape; laser cutting a second annular solder preform from an inner cutout section of the first annular solder preform, wherein the second annular solder preform has a square shape; and cleaning the exterior peripheral cutting edge and the interior peripheral cutting edge of the first annular solder preform. Appeal Br. 60 (Claims Appendix). Claims 20 and 21 are the other independent claims in this Appeal directed to a method of making multiple annular solder preforms from a single ribbon. Claim 20 is similar to claim 1 but requires the first annular solder preform has “rounded corners,” the second annular solder preform has a “square shape,” the raw material is formed from an alloy having 80 wt% gold and about 20 wt% tin, and further recites “remelting and refining unused portions of the ribbon.” Appeal Br. 61-62. Claim 21 is similar to claim 1, but does not require a particular shape for the first or second annular Appeal 2020-005628 Application 15/435,856 3 preforms and further recites “wherein the interior peripheral cutting edge serves as an exterior cutting edge of the second annular preform.” Id. at 62. ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the argued claims in light of each of Appellant’s arguments, we are not persuaded Appellant has identified reversible error in the appealed rejections. The Examiner rejects claims 1, 3-7, 9-12, and 20-29 as follows for the reasons provided in the Final Office Action and the Answer.3 Final Act. 2-17; Ans. 3-8. 3 In the Answer, the Examiner restates the rejections from the Final Office Action omitting claim 8 (cancelled claim) but adding claim 21 in the first rejection. Compare Ans. 3, with Final Act. 2. The addition of claim 21 appears to be a typographical error. The Examiner also adds six new grounds of rejection. Ans. 4-8. Appeal 2020-005628 Application 15/435,856 4 Claim(s) 35 U.S.C. § Basis/Reference(s) 1, 3-5, 10, 12 103 Hartnett, 4 Indium,5 Schaeffer,6 Woolslayer,7 Autry8 6, 9 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Kothandapani9 7 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Hascoe10 11 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Pereira11 20 103 Hartnett, Kothandapani, Indium, Woolslayer, Autry, Handbook,12 Hascoe 21 103 Hartnett, Indium, Woolslayer, Schaeffer 1 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry 20 103 Hartnett, Kothandapani, Henning,13 Woolslayer, Autry, Handbook, Hascoe 21 103 Hartnett, Henning, Woolslayer, Schaeffer 22-29 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Maruyama14 4 US 2011/0186617 A1, pub. Aug. 4, 2011. 5 NanoFoil® Preforms product sheet, http://www.indium.com:80/nanofoil/preforms/ (accessed Apr. 5, 2017). 6 Ronald D. Schaeffer & Gabor Kardos, Post-Laser Processing Cleaning Techniques, http://www.photomachining.com/articles/print/volume- 23/issue-5/features/technology-report/post-last-processing-cleaning- techniques.html (accessed May 5, 2017). 7 US 4,094,051, iss. June 13, 1978. 8 US 5,923,083, iss. July 13, 1999. 9 US 2015/0340298 A1, pub. Nov. 26, 2015. 10 US 4,232,814, iss. Nov. 11, 1980. 11 US 8,474,681 B1, iss. July 2, 2013. 12 Brazing Handbook, 4th ed., Fig. 3.3, 52. 13 GB 2401246 A, pub. Nov. 3, 2004. 14 US 2009/0294033 A1, pub. Dec. 3, 2009. Appeal 2020-005628 Application 15/435,856 5 Claim(s) 35 U.S.C. § Basis/Reference(s) 22-29 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Maruyama 26, 28 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Crossley15 27 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Henderson16 29 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Anderson17 26, 28 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Crossley 27 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Henderson 29 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Anderson We address each claim separately argued by Appellant. Claim 1: Hartnett, Indium, Schaeffer, Woolslayer, and Autry The Examiner finds Hartnett discloses making a solder preform using a ribbon consisting of raw solder material and forming a first annular (washer-shaped) solder preform by cutting the ribbon along an exterior peripheral cutting edge and an interior peripheral cutting edge. Final Act. 2. The Examiner determines it would have been obvious to utilize Indium’s laser cutting method for Hartnett’s cutting to accurately cut solder preforms with complex shapes. Id. at 3. The Examiner also determines it would have been obvious to post-laser clean the entire laser cut preform as Schaeffer teaches to remove any debris after laser cutting that may interfere with the 15 US 2012/0012677 A1, pub. Jan. 19, 2012. 16 GB 1441122, pub. June 30, 1976. 17 US 6,923,877 B1, iss. Aug. 2, 2005. Appeal 2020-005628 Application 15/435,856 6 soldering process. Id. The Examiner finds Woolslayer discloses cutting concentric rings from a single sheet and determines it would have been obvious to cut Indium’s solder sheet in Woolslayer’s configuration in order to form different size solder rings with little waste. Id. The Examiner finds Autry teaches a square annular solder preform and determines it would have been obvious to form preforms of a desired shape and size as taught by Autry because the modification is merely a matter of choice. Id. at 3-4. Appellant contends the Examiner erred because (1) Hartnett’s gaps are not annular based on the Specification’s definition of “annular” requiring parallel edges, (2) Indium does not teach laser cutting solder preforms, but, rather, a material that delivers a significant amount of heat energy and then plates the material with solder post cutting, (3) there is no reason to combine Indium with Hartnett because Indium does not use flux while Hartnett is designed to accommodate flux with its gaps, thus the combination would make Hartnett’s gaps superfluous and nonfunctional, (4) Woolslayer is non- analogous art because it cuts multiple metal sheaves from different metal materials for use as wire guides for a pulley system used in the oil and gas industry, and (5) Hartnett teaches away from any combination with Woolslayer because modifying Hartnett to remove sharp angles would necessitate removal of Hartnett’s required gaps and negatively impact its function, and (6) Autry fails to disclose two annular solder preforms. Appeal Br. 6-10. In the Reply Brief, Appellant asserts the Examiner acknowledges Hartnett does not teach the parallel shapes that Appellant’s Specification exemplifies. Reply Br. 8-9. Appellant contends nothing in Indium suggests that a Nanofoil® is coated with solder and then cut via laser. Id. at 9. Appeal 2020-005628 Application 15/435,856 7 Appellant also maintains that Woolslayer is not in the same field of endeavor on the basis that Woolslayer’s sheaves for pulleys is not analogous to solder preforms. Id. Appellant’s arguments are not persuasive of reversible error because even if Hartnett’s washer-shaped solder preform does not encompass an annular shaped solder preform as required by claim 1, Appellant admits that it was “conventional” to form “an annular solder preform” by stamping the shape out of a “ribbon . . . made from a raw metal alloy material such as a gold-tin alloy (e.g. 80Au-20Sn).” Spec. ¶ 40. Moreover, the prior art cited in this Appeal record also discloses annular shaped solder preforms consistent with Appellant’s asserted definition. Kothandapani ¶ 48 (“The solder preform is annular” refers to solder preform 650 in Figures 9A and 9B having parallel edges.); Autry Fig. 1, item 5, 2:50 (“a square ring shaped lead/tin/silver preform 5”). An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro- Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (a statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). Appellant’s assertion that Indium does not disclose laser cutting solder preforms, but, rather, laser cutting the underlying heat source material and then plating the material with solder post cutting is not supported by a Appeal 2020-005628 Application 15/435,856 8 preponderance of the evidence. As the Examiner points out, the Indium reference refers to two versions of its trademarked NanoFoil® products: “standard” and “solder plated.” Ans. 10 (emphasis omitted); Indium 2 (“NanoFoil® preforms are available in a range of thicknesses from 40- 150µm in both standard NanoFoil® and solder plated NanoFoil®.”). Immediately following the identification of the two versions of its NanoFoil® product, Indium states “NanoFoil® preforms are formed by die cutting, laser cutting or chemical etching.” Indium 2. Thus, Indium suggests that both versions of its product are formed by, inter alia, laser cutting. Even if Indium does not disclose or suggest using laser cutting on its solder product, Indium, at minimum, teaches that laser cutting is a known alternative to stamping. Indium also teaches that “[l]aser cutting [is] ideal for high precision complex shapes” compared to stamping, which is described by Indium as “economical choice for simple shapes.” Id. Thus, Indium discloses a benefit for using laser cutting as an alternative to stamping, which Appellant admits is the conventional method of forming solder preforms. We also are not persuaded that the Examiner erred in combining Woolslayer’s teachings for cutting metal sheets with minimal waste with the teachings of solder preform art because, even if cutting metal sheets is not Appellant’s field of use, Woolslayer’s teachings are reasonably pertinent to the problem with which the inventor was concerned. The analogous-art test requires that the Board show a reference is either (1) in the field of the applicant’s endeavor or (2) is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Appeal 2020-005628 Application 15/435,856 9 References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’--in other words, common sense---in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979))). The Specification describes the problems solved by the invention as “maximizing usage of the ribbon, reducing manufacturing costs, and shortening lead-time.” Spec. ¶ 46; see Spec. ¶ 4 (“When the solder preform is formed with a stamping tool, only a small amount of the ribbon of raw material is used for production.”). Similarly, Woolslayer describes simultaneously cutting a plurality of concentric rings of different diameters from a metal plate for the benefit of producing “little waste material” in making sheaves. Woolslayer 1:31-38, 2:30-31. Thus, Woolslayer describes solving the same problem of wasted starting material in the same manner taught by the Specification, namely, cutting concentric rings. Appellant’s distinctions based on the end use of Woolslayer’s metal rings are not persuasive of error because minimizing waste produced from cutting metal plates or sheets is independent of the applied technology. Cf. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367-68 (Fed. Cir. 2006). (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example, because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”); Appeal 2020-005628 Application 15/435,856 10 see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” (quoting KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007)). Appellant’s assertion that Autry fails to disclose two annular solder preforms (Appeal Br. 9-10) is not persuasive of error because the Examiner relies on Woolslayer for teaching the concentric placement of shapes to minimize wasted starting material, not Autry. Ans. 12. Claim 1: Henning Substituted for Indium The Examiner also rejects claim 1 over the combination of Hartnett, Henning, Schaeffer, Woolslayer, and Autry. Final Act. 10. The Examiner relies on Henning rather than Indium for teaching laser cutting complex solder preforms and determines it would have been obvious to utilize Henning’s laser cutting for the cutting of solder preforms in order to provide improved precisions and decrease the change of the material warping where it is being cut. Id. at 11. In addition to the arguments presented above, Appellant argues that Henning cuts solder sheets rather than a ribbon and does not remedy the asserted failings of Hartnett. Appeal Br. 29-30. Appellant’s arguments are not persuasive of error for the reasons expressed above. In addition, as the Examiner notes, it would have been obvious to a skilled artisan that Henning’s disclosure to use laser cutting to form solder preforms would work with any solder sheet or ribbon. Ans. 15. As discussed above, both Appeal 2020-005628 Application 15/435,856 11 Hartnett and Appellant’s admitted prior art cut solder preforms from ribbons. It would have been within the level of skill for a person having ordinary skill in the art to apply Henning’s teachings regarding laser cutting to a ribbon as a known starting material for forming solder preforms. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Claim 1 Summary In sum, Appellant’s arguments are not persuasive of error in the Examiner’s conclusion of obviousness for claim 1. Accordingly, we affirm the Examiner’s rejections of claim 1 for the reasons provided above and in the Final Office Action and Answer. We also affirm the rejections of claims 4 and 12, which depend from claim 1 and for which Appellant does not provide additional arguments. See 37 C.F.R. § 41.37(c)(1)(iv). Dependent Claim 3 Claim 3 depends from claim 1 and recites “wherein the inner cutout section has an outer perimeter defined by the interior peripheral cutting edge of the first annular solder preform.” Appeal Br. 60 (Claims Appendix). The Examiner rejects claim 3 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claim 1 and further finds Woolslayer discloses defining an outer perimeter by the interior peripheral cutting edge of a first annular ring. Final Act. 4. Appellant contends the Examiner erred in rejecting claim 3 based on its dependency from claim 1 reiterating that Hartnett and Woolslayer teach away from the combination because Hartnett requires non-parallel exterior Appeal 2020-005628 Application 15/435,856 12 portions of the solder preform that allows gaps to extend inward while Woolslayer requires parallel exterior portions. Appeal Br. 10. Appellant’s arguments are not persuasive for the reasons discussed above in connection with claim 1. As noted above, even if Hartnett’s washer-shaped solder preform does not encompass an annular shaped solder preform as required by claim 1, Appellant admits that it was “conventional” to form “an annular solder preform” by stamping the shape out of a “ribbon . . . made from a raw metal alloy material such as a gold-tin alloy (e.g. 80Au- 20Sn).” Spec. ¶ 40. Moreover, the prior art cited in this Appeal record also discloses annular shaped solder preforms consistent with Appellant’s asserted definition. Kothandapani ¶ 48 (“The solder preform is annular” refers to solder preform 650 in Figures 9A and 9B having parallel edges.); Autry Fig. 1, item 5, 2:50 (“a square ring shaped lead/tin/silver preform 5”). An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro- Devices, Inc., 848 F. 2d at 1570. Thus, the preponderance of the evidence in this Appeal record supports the Examiner’s rejection of claim 3. Dependent Claim 5 Claim 5 depends from claim 1 and recites “wherein the ribbon of raw solder material is formed from a gold-tin alloy, a lead-based alloy, or a lead- free alloy.” Appeal Br. 60 (Claims Appendix). The Examiner rejects claim 5 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claim 1 and further finds “Schaeffer [Hartnett] teaches wherein the ribbon of raw solder material Appeal 2020-005628 Application 15/435,856 13 is formed from a gold-tin alloy, a lead-based alloy, or a lead-free alloy (paragraph 24).” Final Act. 4. Appellant contends the Examiner erred in rejecting claim 5 based on its dependency from claim 1 and because Schaeffer does not disclose solder ribbons or the alloy required by the claim. Appeal Br. 11. Appellant’s arguments are not persuasive for the reasons discussed above in connection with claim 1. Appellant’s arguments also are not persuasive of reversible error because the Examiner’s stated rejection contains an apparent typographical error. After the Examiner finds that Hartnett discloses a ribbon of raw solder material in paragraph 24 (Final Act. 2), the Examiner again references paragraph 24 for the composition of the ribbon being a gold-tin alloy (id. at 4). Schaeffer, on the other hand, is a reference that the Examiner cites with page numbers rather than paragraph numbers (see, e.g., id. preceding paragraph). The Examiner’s finding that gold-tin alloy is disclosed for a ribbon of raw solder material is supported by the record. Hartnett ¶ 24. Accordingly, we sustain the Examiner’s rejection of claim 5. Dependent Claim 10 Claim 10 depends from claim 1 and recites “wherein the exterior peripheral cutting edge and the interior peripheral cutting edge are free of burrs.” Appeal Br. 61 (Claims Appendix). The Examiner rejects claim 10 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claim 1 and further finds “the collective process of Hartnett, Indium, and Schaeffer will Appeal 2020-005628 Application 15/435,856 14 intrinsically result in the exterior peripheral cutting edge and the interior peripheral cutting edge that are free of burrs.” Final Act. 4. Appellant contends the Examiner erred in rejecting claim 10 based on its dependency from claim 1 and asserting that (1) Hartnett alone fails to teach or suggest the edges are free of burrs, (2) Hartnett is designed to allow for the presence of burrs, and (3) modifying Hartnett to be burr free would change the operation of Hartnett’s solder preform. Appeal Br. 12. Appellant’s arguments are not persuasive for the reasons discussed above in connection with claim 1. As noted above, even if the shape of Hartnett’s solder preform does not encompass or function as an annular shaped solder preform as required by claim 1, Appellant admits that it was “conventional” to form “an annular solder preform” by stamping the shape out of a “ribbon . . . made from a raw metal alloy material such as a gold-tin alloy (e.g. 80Au-20Sn).” Spec. ¶ 40. Moreover, the prior art cited in this Appeal record also discloses annular shaped solder preforms consistent with Appellant’s asserted definition. Kothandapani ¶ 48 (“The solder preform is annular” refers to solder preform 650 in Figures 9A and 9B having parallel edges.); Autry Fig. 1, item 5, 2:50 (“a square ring shaped lead/tin/silver preform 5”). An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro-Devices, Inc., 848 F. 2d at 1570. Thus, Hartnett’s particular shape containing gaps does not negate Schneider’s teaching to clean after laser cutting, which the Examiner determines would have intrinsically resulted in the exterior peripheral cutting edge and the interior peripheral cutting edge of an annular solder preform being free of burrs as required by Appeal 2020-005628 Application 15/435,856 15 claim 10. Accordingly, Appellant does not identify reversible error in the Examiner’s rejection of claim 10. Dependent Claims 6 and 9 Claim 6 depends from claim 1 and recites “wherein the gold-tin alloy is about 80 wt% gold and about 20 wt% tin.” Appeal Br. 61 (Claims Appendix). Claim 9 also depends from claim 1 and recites “wherein the annular solder preform has a melting temperature of from about 200ºC to about 350ºC.” Id. The Examiner rejects claims 6 and 9 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claims 1 and 5 and further finds Kothandapani discloses a gold-tin alloy of about 80 wt% gold and about 20 wt% tin as required by claim 6 and a melting temperature of from about 200ºC to about 350ºC as required by claim 9. Final Act. 5. Appellant contends the Examiner erred in rejecting claims 6 and 9 based on their dependency from claim 1 and because the cited portion of “Kothandapani is silent as to the use of a ‘ribbon’ out of which a solder preform is cut.” Appeal Br. 14. Appellant’s arguments are not persuasive of reversible error for the reasons discussed above in connection with claim 1. Appellant’s arguments also are not persuasive of reversible error because the Examiner relies on Hartnett rather than Kothandapani for disclosing forming a solder preform from a ribbon. Final Act. 2; Ans. 13. Kothandapani is relied upon for teaching the composition of the raw material itself as the Examiner explicitly states in the rejection: “it would have been obvious to one of ordinary skill in the art to utilize the solder alloy of Kothandapani in the collective process Appeal 2020-005628 Application 15/435,856 16 of Hartnett, Indium, and Schaeffer, Woolslayer, and Autry.” Final Act. 5. Accordingly, we affirm the Examiner’s rejection of claims 6 and 9. Dependent Claim 7 Claim 7 depends from claim 1 and recites “further comprising remelting and refining unused portions of the ribbon.” Appeal Br. 61 (Claims Appendix). The Examiner rejects claim 7 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claims 1 and 5 and further combines Hascoe’s teaching it was known to remelt and refine unused portions of preform raw material for the purpose of saving money. Final Act. 5-6. Appellant contends the Examiner erred in rejecting claim 7 based on its dependency from claim 1 and because there is no motivation to combine Hascoe with any of the cited references. Appeal Br. 15. According to Appellant, Hascoe teaches away from a ribbon of material and annular solder preforms by highlighting their inherent limitations and using a wire of solder material laid against a lid to form a seal. Id. Appellant’s arguments are not persuasive of reversible error for the reasons discussed above in connection with claim 1. Appellant’s arguments also are not persuasive of reversible error because in a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). While Hascoe’s inventive method Appeal 2020-005628 Application 15/435,856 17 uses a wire of solder material as Appellant states, Hascoe also discloses existing solder preform manufacturing methods that start with a ribbon of raw material include the steps of remelting and refining of the unused portions of the ribbon. Hascoe 1:48-62. Because the combination of prior art references cited by the Examiner relate to forming solder preforms from a ribbon of raw material, the Examiner appropriately relies on Hascoe’s teaching about processing solder preforms from a ribbon. Appellant does not adequately explain why a skilled artisan starting with a ribbon of raw material to laser cut a multitude of concentric solder preforms would be discouraged by Hascoe’s method of using a wire merely because Hascoe proposes wire--as opposed to Woolslayer’s concentric annular rings for saving starting material--as a solution to a low yield of the solder ribbon. See Hascoe 1:68-2:4 (“A substantial economic disadvantage of obtaining such a low yield of the solder ribbon in the finished solder preform is the requirement than an excessive amount of precious metal--usually gold-- must be tied up in inventory and work in process.”). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In view of the cited prior art references as a whole, including Woolslayer’s teaching that “there is very little waste material” associated with cutting concentric rings from metal sheet material, Hascoe’s alternative method of using a solder wire does not amount to a teaching away from the method of claim 7 merely because there are benefits associated with it. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining “[t]he prior art’s mere disclosure of more than one Appeal 2020-005628 Application 15/435,856 18 alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Accordingly, we affirm the Examiner’s rejection of claim 7. Dependent Claim 11 Claim 11 depends from claim 1 and recites “wherein a plurality of annular solder preforms are formed from the ribbon of raw material.” Appeal Br. 61 (Claims Appendix). The Examiner rejects claim 11 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claims 1 and 5 and further combines Pereira’s teaching to form a plurality of annular solder preforms from the ribbon of raw material, reasoning that simultaneously forming multiple preforms from a ribbon would have been obvious to increase productivity. Final Act. 6. Appeal 2020-005628 Application 15/435,856 19 Appellant contends the Examiner erred in rejecting claim 11 based on its dependency from claim 1 and for the same reasons presented with respect to claim 5 (Schaeffer’s silence as to a ribbon of raw material). Appeal Br. 16. Because we are not persuaded of reversible error in the Examiner’s rejections of claims 1 and 5 for the reasons discussed above, we likewise find Appellant’s arguments unpersuasive of reversible error for the same reasons. Claim 20: Hartnett, Kothandapani, Indium, Woolslayer, Autry, Handbook, and Hascoe The Examiner finds Hartnett discloses making a solder preform using a ribbon consisting of raw solder material and forming a first annular (washer-shaped) solder preform by cutting the ribbon along an exterior peripheral cutting edge and an interior peripheral cutting edge. Final Act. 7. The Examiner finds Kothandapani teaches the ribbon of raw material is formed from a gold-tin alloy in the proportions of 80 wt% gold and 20 wt% tin. Id. The Examiner determines it would have been obvious to utilize Indium’s laser cutting method for Hartnett’s cutting to accurately cut solder preforms with complex shapes and use Kothandapani’s solder alloy to form a solder joint with the desired melting temperature. Id. The Examiner finds Woolslayer discloses cutting concentric rings from a single sheet and determines it would have been obvious to cut Indium’s solder sheet in Woolslayer’s configuration in order to form different size solder rings with little waste. Id. at 7-8. The Examiner finds Autry teaches a square annular solder preform and determines it would have been obvious to form preforms of a desired shape and size as taught by Autry because the modification is Appeal 2020-005628 Application 15/435,856 20 merely a matter of choice. Id. at 8. The Examiner also relies on Handbook for teaching rounded corners on solder preforms and Hascoe for teaching remelting and refining unused portions of solder. Id. at 8-9. Appellant contends the Examiner erred because (1) Hartnett’s gaps are not annular based on the Specification’s definition of “annular” requiring parallel edges, (2) Indium does not teach laser cutting solder preforms, but, rather, a material that delivers a significant amount of heat energy and then plates the material with solder post cutting, (3) there is no reason to combine Indium with Hartnett because Indium does not use flux while Hartnett is designed to accommodate flux with its gaps, thus the combination would make Hartnett’s gaps superfluous and nonfunctional, (4) Woolslayer is non- analogous art because it cuts multiple metal sheaves from different metal materials for use as wire guides for a pulley system used in the oil and gas industry, (5) Hartnett teaches away from any combination with Woolslayer because modifying Hartnett to remove sharp angles would necessitate removal of Hartnett’s required gaps and negatively impact its function, (6) Autry fails to disclose two annular solder preforms, (7) Handbook illustrates metal filler components not solder preforms, and (8) Hascoe teaches away from a solder preform, using wire solder to alleviate waste. Appeal Br. 16- 23. Appellant’s arguments are not persuasive of reversible error for the same reasons discussed above in connection with claim 1. Appellant’s arguments directed to Hascoe are not persuasive of error because Hascoe stands for the proposition for which the Examiner relies on the prior art reference. Specifically, Hascoe states “[o]rdinarily, the gold or other precious or semiprecious metals in the scrap are recycled by melting . . . and Appeal 2020-005628 Application 15/435,856 21 reusing for manufacturing additional solder preforms.” Hascoe 1:55-59. Hascoe also states due to the accumulation of foreign materials “[t]he solder must then be refined into its various pure metal components.” Id. at 1:59-62. Hascoe’s disclosure of the typical process for recycling and refining solder preform materials is not negated by Hascoe’s inventive method for sealing a semiconductor device. As the Examiner finds, when solder ribbon is used to form solder preforms, there is motivation to remelt and refine (recycle) unused portions of the solder ribbon to reduce waste for cost and environmental reasons. Ans. 14. Regarding Appellant’s assertion that the rounded corners illustrated by Handbook are for metal structures other than preforms, Handbook’s disclosure nevertheless supports the Examiner’s position that it would have been obvious to form solder preforms in a desired shape. Final Act. 8. Claim 20: Henning Substituted for Indium The Examiner also rejects claim 20 over the combination of Hartnett, Kothandapani, Henning, Woolslayer, Autry, Handbook, and Hascoe. Final Act. 12. The Examiner relies on Henning rather than Indium for teaching laser cutting complex solder preforms and determines it would have been obvious to utilize Henning’s laser cutting for the cutting of solder preforms in order to provide improved precisions and decrease the change of the material warping where it is being cut. Id. at 13. In addition to the arguments presented above regarding claim 20, Appellant argues that Henning cuts solder sheets rather than a ribbon and does not remedy the asserted failings of Hartnett. Appeal Br. 35-36. Appellant’s arguments are not persuasive of error for the reasons expressed Appeal 2020-005628 Application 15/435,856 22 above. In addition, as the Examiner notes, it would have been obvious to a skilled artisan that Henning’s disclosure to use laser cutting to form solder preforms would work with any solder sheet or ribbon. Ans. 15. As discussed above, both Hartnett and Appellant’s admitted prior art cut solder preforms from ribbons. It would have been within the level of skill for a person having ordinary skill in the art to apply Henning’s teachings regarding laser cutting to a ribbon as a known starting material for forming solder preforms. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Claim 20 Summary In sum, Appellant’s arguments are not persuasive of error in the Examiner’s conclusion of obviousness for claim 20. Accordingly, we affirm the Examiner’s rejections of claim 20 for the reasons provided above and in the Final Office Action and Answer. Claim 21: Hartnett, Indium, Woolslayer, and Schaeffer The Examiner finds Hartnett discloses making a solder preform using a ribbon consisting of raw solder material and forming a first annular (washer-shaped) solder preform by cutting the ribbon along an exterior peripheral cutting edge and an interior peripheral cutting edge. Final Act. 9. The Examiner determines it would have been obvious to utilize Indium’s laser cutting method for Hartnett’s cutting to accurately cut solder preforms with complex shapes. Id. at 10. The Examiner also determines it would have been obvious to post-laser clean the entire laser cut preform as Schaeffer teaches to remove any debris that may interfere with the soldering process. Appeal 2020-005628 Application 15/435,856 23 Id. The Examiner finds Woolslayer discloses cutting concentric rings from a single sheet and determines it would have been obvious to cut Indium’s solder sheet in Woolslayer’s configuration in order to form different size solder rings with little waste. Id. Appellant contends the Examiner erred because (1) Hartnett’s gaps are not annular based on the Specification’s definition of “annular” requiring parallel edges, (2) Indium does not teach laser cutting solder preforms, but, rather, a material that delivers a significant amount of heat energy and then plates the material with solder post cutting, (3) there is no reason to combine Indium with Hartnett because Indium does not use flux while Hartnett is designed to accommodate flux with its gaps, thus the combination would make Hartnett’s gaps superfluous and nonfunctional, (4) Woolslayer is non- analogous art because it cuts multiple metal sheaves from different metal materials for use as wire guides for a pulley system used in the oil and gas industry, and (5) Hartnett teaches away from any combination with Woolslayer because modifying Hartnett to remove sharp angles would necessitate removal of Hartnett’s required gaps and negatively impact its function. Appeal Br. 23-28. Appellant’s arguments are not persuasive of reversible error for the reasons discussed above in connection with claim 1. Claim 21: Henning Substituted for Indium The Examiner also rejects claim 21 over the combination of Hartnett, Henning, Woolslayer, and Schaeffer. Final Act. 15. The Examiner relies on Henning rather than Indium for teaching laser cutting complex solder preforms and determines it would have been obvious to utilize Henning’s Appeal 2020-005628 Application 15/435,856 24 laser cutting for the cutting of solder preforms in order to provide improved precision and decrease the chance of the material warping where it is being cut. Id. at 15-16. In addition to the arguments presented above regarding claim 21, Appellant argues that Henning cuts solder sheets rather than a ribbon and does not remedy the asserted failings of Hartnett. Appeal Br. 41-42. Appellant’s arguments are not persuasive of error for the reasons expressed above. In addition, as the Examiner notes, it would have been obvious to a skilled artisan that Henning’s disclosure to use laser cutting to form solder preforms would work with any solder sheet or ribbon. Ans. 15. As discussed above, both Hartnett and Appellant’s admitted prior art cut solder preforms from ribbons. It would have been within the level of skill for a person having ordinary skill in the art at the time of Appellant’s invention to apply Henning’s teachings regarding laser cutting to a ribbon as a known starting material for forming solder preforms. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Claim 21 Summary In sum, Appellant’s arguments are not persuasive of error in the Examiner’s conclusion of obviousness for claim 21. Accordingly, we affirm the Examiner’s rejections of claim 21 for the reasons provided above and in the Final Office Action and Answer. Rejections of Claims 22-29 Claims 22-25 each depend from claim 1 and specify the laser is a carbon dioxide laser (claim 22), a YAG laser (claim 23), an excimer laser Appeal 2020-005628 Application 15/435,856 25 (claim 24), and an ultraviolet (UV) laser (claim 25). Appeal Br. 62-63 (Claims Appendix). Claims 26-29 each depend from claim 1 and specify the cleaning is performed by pressure washing (claim 26), high-temperature outgassing (claim 27), water rinsing (claim 28), and drying with compressed clean air (claim 29). Id. at 63. The Examiner rejects claims 26-29 over the combination of Hartnett, Indium, Schaeffer, Woolslayer, and Autry as applied to claim 1 in further view of Maruyama. Final Act. 16. The Examiner also rejects claims 26-29 over the combination of Hartnett, Henning, Schaeffer, Woolslayer, and Autry as applied to claim 1 and further in view of Maruyama. Id. at 16-17. The Examiner finds Maruyama teaches cutting with a carbon dioxide laser, YAG laser, excimer laser, and a UV laser and determines that it would have been obvious to use Maruyama’s laser cutting for Indium’s laser cutting to precisely cut solder preforms. Id. The Examiner also takes Official Notice that all of the cleaning methods of claims 26-29 are well known and a skilled artisan would have been motivated to use them to clean the laser cut solder preforms. Id. The Examiner formally identifies in new grounds of rejection Crossley for teaching cleaning by pressure washing and water rinsing as required by claims 26 and 28, Henderson for teaching cleaning by high-temperature outgassing as required by claim 27, and Anderson for teaching cleaning by drying with compressed clean air as required by claim 29. Ans. 6-8. Appellant contends claims 22-29 are patentable based on their dependency from claim 1. Appeal Br. 45-51. Appellant also contends the Examiner’s rejections of claims 22-25 are based on hindsight because Maruyama is directed to cutting and winding resin tubing and a skilled Appeal 2020-005628 Application 15/435,856 26 artisan would not be motivated to combine the teachings of Maruyama. Appeal Br. 45-48. Similarly, Appellant argues the rejections of claims 26- 29 are based on impermissible hindsight to rationalize combining the known cleaning methods of Crossley, Henderson, and Anderson, which Appellant characterizes as “disparate references” that have no relationship to solder preforms because Crossley is a spray gun handle and quick release trigger assembly, Henderson joins tubular components for heat exchangers, and Anderson uses a laser in ink jet printing for preening. Id. at 48-51; Reply Br. 3-5. Appellant’s arguments are not persuasive of error for the reasons discussed above in connection with claim 1. The Examiner did not err in determining that cleaning methods were known in the art for removing debris following laser cutting and that the claimed lasers were known in the art for laser cutting. Under the flexible inquiry set forth by the Supreme Court, the USPTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). One of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole, including the cited prior art references generally teaching laser cutting applicable to forming solder preforms (Indium and Henning) and cleaning debris after laser cutting (Schaeffer), that the use of such known cleaning and laser cutting tools would have been within the skill and creativity of one of ordinary skill in the art. Accordingly, we affirm the rejections of dependent claims 22-29. Appeal 2020-005628 Application 15/435,856 27 CONCLUSION For these reasons and those provided in the Final Office Action and Answer, we affirm the Examiner’s rejections of claims 1, 3-7, 9-12, and 20-29. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3-5, 10, 12 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry 1, 3-5, 10, 12 1, 3-5, 10, 12 6, 9 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Kothandapani 6, 9 6, 9 7 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Hascoe 7 7 11 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Pereira 11 11 20 103 Hartnett, Kothandapani, Indium, Woolslayer, Autry, Handbook, Hascoe 20 20 21 103 Hartnett, Indium, Woolslayer, Schaeffer 21 21 1 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry 1 1 Appeal 2020-005628 Application 15/435,856 28 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 20 103 Hartnett, Kothandapani, Henning, Woolslayer, Autry, Handbook, Hascoe 20 20 21 103 Hartnett, Henning, Woolslayer, Schaeffer 21 21 22-29 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Maruyama 22-29 22-29 22-29 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Maruyama 22-29 22-29 26, 28 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Crossley 26, 28 26, 28 27 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Henderson 27 27 29 103 Hartnett, Indium, Schaeffer, Woolslayer, Autry, Anderson 29 29 26, 28 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Crossley 26, 28 26, 28 Appeal 2020-005628 Application 15/435,856 29 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 27 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Henderson 27 27 29 103 Hartnett, Henning, Schaeffer, Woolslayer, Autry, Anderson 29 29 Overall Outcome 1, 3-7, 9-12, 20-29 1, 3-7, 9-12, 20-29 FINALITY AND RESPONSE We designate the above-listed grounds of rejection as new grounds of rejection pursuant to 37 C.F.R. § 41.50(b), because we have relied on additional facts and reasoning in support of the obviousness conclusion. Our new grounds of rejection designation preserves the procedural safeguards that must be afforded to Appellant. In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-005628 Application 15/435,856 30 (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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b)