Takahashi, Yoshihiro et al.

Patent Trials and Appeals Board

Dec 17, 2019

15133838 - (D) (P.T.A.B. Dec. 17, 2019)

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.
15/133,838 04/20/2016 Yoshihiro Takahashi 20371-138431-US 8529
42798 7590 12/17/2019
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
FUNG, CHING-YIU
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
12/17/2019 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 YOSHIHIRO TAKAHASHI,
YASUO KAMIGATA, HIKARI MURAI, MASAHIRO AOSHIMA,
SHINJI TSUCHIKAWA, MASATO MIYATAKE,
TOMOHIKO KOTAKE, and HIROYUKI IZUMI
Appeal 2019-003334
Application 15/133,838
Technology Center 1700
Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Hitachi Chemical
Company, Ltd. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a laminate plate used in semiconductor
packages and printed wiring boards. Spec. ¶ 1. The plate comprises a base
material coated with a thermosetting resin composition that has low thermal
expansion characteristics as well as good drilling processability and heat
resistance properties. Id. Claim 1, reproduced below from the Claim
Appendix (Appeal Br. 12), is illustrative of the claimed subject matter:
1. A laminate plate for wiring boards, obtained by coating a
thermosetting resin composition containing (E) a
thermosetting resin, (F) silica, and (G) at least one
molybdenum compound selected from calcium molybdate,
and magnesium molybdate, with a content of the silica (F)
being 20% by volume or more and not more than 60% by
volume of the thermosetting resin composition, on a base
material in a film form or fiber form, then performing semi-
curing to form a prepreg, and laminating and molding the
prepreg.
REJECTIONS ON APPEAL
On appeal, the Examiner maintains the rejection of claims 1–8 under
35 U.S.C. § 103 as unpatentable over Ogima2 in view of Mori.3 Final Act.
4–9; Ans. 4.

2 Ogima et al., US 6,361,866 B1, issued Mar. 26, 2002.
3 Mori, et al., WO 2006/129480 A1, published December 7, 2006. For
convenience, the Examiner, without objection from Appellant, relies on the
English language counterpart, US 2010/0190899 A1, published July 29,
2010.
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OPINION
We sustain the above rejection based primarily on the Examiner’s
findings of fact, conclusions of law, and rebuttals to Appellant’s arguments,
as expressed in the Final Action and Answer. The following comments are
added for emphasis.
Appellant presents arguments for independent claim 1, but does not
present any arguments for the dependent claims that depend from these
claims. Therefore, we limit our discussion to independent claim 1, which we
select as representative under 37 C.F.R. § 41.37(c)(1)(iv). By this rule,
claims 2–8 stand or fall with claim 1.
The Examiner finds that Ogima discloses a resin composition
comprising an epoxy resin (i.e., a thermosetting resin), a molybdenum
compound, and a filler, and a substrate impregnated with the resin
composition or to which the resin composition is applied. Ans. 4 (citing
Ogima, Abstract, 4:14–24); Final Act. 5. The Examiner further finds that
Ogima lists calcium molybdate as an example of a molybdenum compound,
and silica as an example of a filler. Ans. 4–5 (citing Ogima, 3:62–4:24);
Final Act. 5.
The Examiner acknowledges that Ogima does not disclose the use of a
specific type or amount of silica in the resin composition, but contends that
Mori discloses an epoxy resin composition comprising a filler such as
spherical silica or spherical fused silica in an amount of 0.1 to 80 mass %
and more preferably 30 to 70 mass %. Ans. 7 (citing Mori ¶¶ 81–82); Final
Act. 7. According to the Examiner, Mori teaches that spherical silica or
spherical fused silica are desirable because they can improve the properties
of the hardened material formed from the resin, including high glass
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transition temperature, low linear expansion coefficient, tensile strength,
elongation, and flexibility. Ans. 7 (citing Mori ¶ 76); Final Act. 8. The
Examiner thus determines that it would have been obvious to a person of
ordinary skill in the art to use the amount and type of silica disclosed in Mori
in Ogima’s resin composition to provide desirable properties of the hardened
material. Ans. 8; Final Act. 8.
Appellant argues that Ogima only discloses calcium molybdate and
silica as single members of separate lists, and that none of Ogima’s
examples include calcium molybdate or silica. Appeal Br. 5–6. Appellant
thus argues that, absent hindsight, there would have been no reason to select
calcium molybdate from Ogima’s list of molybdate compounds, and silica
from Ogima’s list of optional fillers, and combine these materials in a
thermosetting resin composition. Id. at 6; Reply 4. Appellant further argues
that Mori does not cure this deficiency because Mori describes a filler as
optional and is silent regarding the combination of calcium molybdate with
silica in a thermosetting resin. Appeal Br. 6–7. Appellant also argues that a
person of ordinary skill in the art “would not have thought to use the silica
and amounts thereof taught by [] Mori to improve the drilling processability”
of a laminate plate because, according to Appellant, it was known that
increasing silica lowered drilling processability. Reply 5.
Appellant also contends the claimed invention provides “unexpectedly
superior results over the subject matter that is disclosed in Ogima.” Appeal
Br. 7. Appellant directs us to Tables 2–5 in the Specification in support of
its assertion that Examples 6 and 7 “provided excellent drilling
processability and low thermal expansion properties and no problems with
respect to moldability and electrical insulating properties,” whereas the
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comparative examples demonstrated inferior moldability, electrical
insulating properties, and drilling processability. Id. at 8. Appellant argues
these improved properties would have been unexpected in view of Ogima
because Ogima does not disclose how to achieve these improved properties,
the amount of silica to use, or the effect of the amount of silica used. Id.
at 9.
We are not persuaded by Appellant’s arguments. It is undisputed that
Ogima teaches the combination of calcium molybdate and silica. See, e.g.,
Ans. 4–5; Final Act. 5; App. Br. 6. The fact that these components appear as
single members of separate lists, are listed among several other possible
ingredients, and are not used in the examples does not detract from the fact
that the reference teaches the combined use of these two components. For
purposes of an obviousness analysis, we look to the entire reference for all
that it teaches or suggests to a person of ordinary skill in the art. See In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012). Furthermore, the fact that
Ogima suggests the combination of the claimed components undermines
Appellant’s hindsight argument. It also renders moot Appellant’s argument
that Mori does not cure the purported deficiency in Ogima.
As to Appellant’s arguments regarding combining the teachings of
Mori and Ogima (Reply 5), Appellant does not direct us to any documentary
evidence supporting the assertion that increasing silica results in lower
drilling processability. The Examiner, however, does direct us to
documentary evidence demonstrating that using a specific amount of
spherical fused silica in resin compositions can provide desirable properties
of the hardened material, such as high glass transition temperature, low
linear expansion coefficient, tensile strength, elongation, and flexibility.
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Ans. 7; Mori ¶ 76. In view of this, and considering that Ogima itself
discloses the use of silica, we agree with the Examiner that a person of
ordinary skill in the art would have had a reason to use the spherical fused
silica with the content (i.e., 40 Vol. %) of Mori in the resin composition of
Ogima, namely to provide desirable properties of the hardened material.
Ans. 12.
With regard to Appellant’s unexpected results arguments, we agree
with the Examiner’s position that Appellant’s data is not commensurate in
scope with the claims. Ans. 13–14. For example, whereas the claims
encompass, inter alia, any type of silica between 20% and 60% by volume,
Appellant has not provided data to show the alleged unexpected results
occur over the entire claimed range of silica. Id. at 14 (noting, in particular,
that Appellant failed to present any data when the silica content is at the
upper limit of 60% by volume). We are not persuaded by Appellant’s
response that the tests results for Example 6, containing 49% by volume of
silica, are sufficient because “49% by volume of silica is reasonably close to
the claimed content of silica being not more than 60% by volume.” Reply 8.
Appellant offers no evidence to support this assertion. See In re Clemens,
622 F.2d 1029, 1036 (CCPA 1980).
In addition, Appellant offers no persuasive response to the Examiner’s
finding that the claimed invention does not provide unexpected results
because Examples 1, 2, 4 and 5 in the Specification provide the same
advantageous properties as Examples 6 and 7, but use zinc molybdate, a
compound not recited in the claims. Ans. 14 (also noting that zinc
molybdate is used in Ogima examples 1–7); see Reply 9 (responding only by
seeking comment from the Board on a broader claim scope).
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For all of the foregoing reasons, we are not persuaded that the
Examiner erred in rejecting claims 1–8 as obvious under 35 U.S.C. § 103 in
view of Ogima and Mori.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103 Ogima, Mori 1–8
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).
AFFIRMED