TATSUTA ELECTRIC WIRE & CABLE CO., LTD.

Patent Trials and Appeals Board

Oct 15, 2021

2020006628 (P.T.A.B. Oct. 15, 2021)

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.
15/507,431 02/28/2017 Hiroshi TAJIMA 1946-0002US01 3574
47649 7590 10/15/2021
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
PATEL, ISHWARBHAI B
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
10/15/2021 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):
eofficeaction@appcoll.com
kfagin@potomaclaw.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROSHI TAJIMA and MASAHIRO WATANABE

____________

Appeal 2020-006628
Application 15/507,431
Technology Center 2800
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1 and 2.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Tatsuta Electric Wire & Cable Co., Ltd. as the real party
in interest. Appeal Brief filed February 27, 2020 (“Appeal Br.”), 1.
2 Non-Final Office Action entered June 24, 2019 (“Non-Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims a reinforcing member for a flexible printed wiring
board. Appeal Br. 1–3. Claim 1, the sole pending independent claim,
illustrates the subject matter on appeal, and reads as follows:
1. A reinforcing member for a flexible printed wiring board,
which allows a ground wiring pattern of the flexible printed
wiring board to conduct with an external ground potential, the
reinforcing member comprising:
a metal base including a connection surface to be
connected to the ground wiring pattern and an open surface to
be connected to the external ground potential;
a nickel layer formed on the connection surface of the
metal base; and
a conductive adhesive layer formed on the nickel layer,
the nickel layer including phosphorus in a range from 5
percent by mass to 20 percent by mass, the rest of the nickel
layer being nickel and inevitable impurities, and
the nickel layer being 0.2 μm to 0.9 μm thick.

Appeal Br. 11 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1 and 23 under
35 U.S.C. § 103 as unpatentable over Happoya (US 2015/0264806 A1,

3 The Examiner does not list Yamasaki (US 2008/0099906 A1, published
May 1, 2008) in the heading for this rejection in the Non-Final Action, but
appears to rely on Yamasaki as a prior art reference in the body of the
rejection. Compare Non-Final Act, 3, with Non-Final Act. 4. As Appellant
indicates (Appeal Br. 4, n. 2), it is thus unclear whether the Examiner relies
on Yamasaki as an applied prior art reference in the rejection of claims 1 and
2. We need not address Yamasaki for purposes of this appeal, however,
because we affirm the rejection of claims 1 and 2 over Happoya in view of
Hiroshi, Takahashi, and Lee. In the event of further prosecution of this
application, the Examiner may wish to clarify the basis for the Examiner’s
reliance on Yamasaki.
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published September 17, 2015) in view of Hiroshi (CN 102933024 A,
published February 13, 2013), Takahashi (US 2008/0185172 A1, published
August 7, 2008), and Lee (US 2013/0003332 A1, published January 3,
2013) in the Examiner’s Answer entered May 14, 2020 (“Ans.”).

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1 and 2 under 35 U.S.C. § 103 for reasons set forth in the Non-Final
Office Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to independent claim 1 only, to
which we accordingly limit our discussion. Appeal Br. 4–10; 37 C.F.R.
§ 41.37(c)(1)(iv).
Happoya discloses flexible printed wiring board 11 comprising
conductive reinforcing plate 22 (metal base), circuit board 21 having
electrical ground pattern 25 (ground wiring pattern) disposed on its surface,
and conductive adhesive 31 “provided between the reinforcing plate 22 and
the ground pattern 25.” Happoya ¶¶ 24, 25, 29; Fig. 3. Happoya discloses
that conductive adhesive 31 “adhesively bonds the center of the reinforcing
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plate 22 and the ground pattern 25 together . . . while also electrically
connecting together the reinforcing plate 22 [connection surface] and the
ground pattern 25.” Happoya ¶ 29; Fig. 3. Happoya does not disclose
forming a nickel layer on the connection surface of reinforcing plate 22
(metal base).
Hiroshi discloses a printed wiring board comprising enforcing
member 135 (reinforcing member), conductive bonding agent 130, and
printed circuit board 110 including circuit pattern 115 (ground wiring
pattern). Hiroshi Abstr.; ¶¶ 40, 41; Fig. 1. Hiroshi discloses that enforcing
member 135 (reinforcing member) is comprised of stainless steel base
material 135a (metal base) having nickel layer 135b formed on its surface
(formed on connection surface of metal base). Hiroshi Abstr.; Fig. 1.
Hiroshi discloses that conductive bonding agent 130 is coated on the surface
of nickel layer 135b, and electrically connects nickel layer 135b of enforcing
member 135 (reinforcing member) to circuit pattern 115 (connection surface
of metal base connected to the ground wiring pattern). Hiroshi ¶¶ 40, 41;
Fig. 1.
Hiroshi does not disclose that nickel layer 135b includes phosphorus
as recited in claim 1. Takahashi, however, discloses a printed wiring board
comprising electrodes embedded in an insulation layer, and a connection
conductive pattern on the surface of the insulating layer. Takahashi ¶ 6; Fig.
1. Takahashi discloses forming the electrodes from nickel containing 9 to 11
weight percent phosphorus “using a plating method to form electrodes on a
surface of [a] conductive layer.” Takahashi ¶¶ 59, 71. Takahashi discloses
that adding 9 to 11 weight percent phosphorus to the nickel prevents
formation of pinholes on the electrode surfaces, provides “high corrosion
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resistance to heat,” and “stable resistance values.” Takahashi ¶¶ 44, 45, 72,
73.
Lee discloses a printed circuit board having a plated layer including a
nickel coating containing 8 weight percent or more phosphorus, preferably 9
to 11 weight percent. Lee ¶¶ 13, 16, 18. Lee discloses that including
phosphorus in the nickel coating prevents oxidation of the coating. Lee ¶¶
16, 18, 19, 24, 41, 48. Lee discloses that the nickel coating has a thickness
of 0.2 to 1 µm, and Lee explains that when the thickness exceeds 1 µm,
improved electrical characteristics are not realized, and when the thickness is
less than 0.2 µm, “deterioration of corrosion resistance” occurs. Lee ¶ 37.
In view of these disclosures in Happoya, Hiroshi, Takahashi, and Lee,
the Examiner concludes that it would have been obvious to one of ordinary
skill in the art “to provide the reinforcing member of Happoya with a nickel
layer formed on a surface of the metal base, the nickel layer including
phosphorus in a range from 5 percent by mass to 20 percent by mass, the rest
of the nickel layer being nickel and inevitable impurities, and the nickel
layer being 0.2 μm to 0.9 μm thick, as taught by Hiroshi, Takahashi, Lee and
Yamasaki, in order to have desired properties, including protection of the
reinforcing member and better adhesion.” Non-Final Act. 4–5.
Appellant argues that one of ordinary skill in the art would not have
been motivated to form a nickel/phosphorus layer on Happoya’s metal base
because Takahashi and Lee do not disclose forming a nickel layer on the
connection surface of a metal base of a reinforcing member. Appeal Br. 9–
10. Appellant argues that instead, Takahashi discloses forming a nickel
layer on an insulation layer to form electrodes, while Lee discloses forming
a nickel layer to permit a surface treatment plated layer and external devices
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to be connected to each other using a wire bonding scheme. Appeal Br. 9–
10 (citing Takahashi ¶¶ 67–71, Fig. 1; Lee ¶ 13). Appellant argues that
Takahashi applies a nickel/phosphorus layer to electrodes to reduce surface
pitting or pinholing on the electrodes in order to obtain consistent
connection-contact surface area and stable resistance values, while Lee
“relates to nickel/phosphorus coating of the entire plated layer.” Appeal Br.
8–9 (citing Takahashi ¶ 72). Appellant argues that the concerns motivating
use of nickel/phosphorus layers in Takahashi and Lee “do not arise in the
context of a reinforcing member” as disclosed in Happoya, and, therefore,
“the combination of references is ‘forced’ using hindsight.” Appeal Br. 8–9.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Although the Examiner applies Happoya as the primary reference in
the Examiner’s rejection of claim 1, as discussed above, Hiroshi discloses
enforcing member 135 (reinforcing member) for a printed wiring board
having the features recited in claim 1, except Hiroshi does not disclose that
nickel layer 135b includes phosphorus in the recited amount, and does not
disclose that nickel layer 135b has a thickness as recited. Takahashi and
Lee, however, both provide reasons to form a nickel layer including
phosphorus on the connection surface of Happoya’s reinforcing plate 22
(metal base), and also to include phosphorus in Hiroshi’s nickel layer 135b.
Specifically, Takahashi discloses that adding 9 to 11 weight percent
phosphorus to nickel material used to form a surface coating on electrodes
provides “high corrosion resistance to heat” and achieves “stable resistance
values.” One of ordinary skill in the art reasonably would have expected
that adding phosphorus to Hiroshi’s nickel layer 135b in the amount
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disclosed in Takahashi would impart stable resistance values and corrosion
resistance to Hiroshi’s nickel layer 135b. Takahashi ¶¶ 44, 45, 72, 73. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d
894, 903‒04 (Fed. Cir. 1988)). As also discussed above, Lee discloses that
including 9 to 11 weight percent phosphorus in a nickel coating for a printed
circuit board prevents oxidation of the nickel coating. One of ordinary skill
in the art reasonably would have expected that adding phosphorus to
Hiroshi’s nickel layer 135b in the amount disclosed in Takahashi would
provide the additional benefit of preventing oxidation of Hiroshi’s nickel
layer 135b. Kubin, 561 F.3d at 1360.
Takahashi and Lee’s disclosure of weight percentages of phosphorus
encompassed within the range recited in claim 1 render the recited range
prima facie obvious. In re Peterson, 315 F.3d 1325, 1329–330 (Fed. Cir.
2003) (“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness. . . . Selecting a narrow range from within a
somewhat broader range disclosed in a prior art reference is no less obvious
than identifying a range that simply overlaps a disclosed range. In fact,
when as here, the claimed ranges are completely encompassed by the prior
art, the conclusion is even more compelling than in cases of mere overlap.”)
And Lee’s disclosure that when the nickel layer has a thickness
exceeding 1 µm improved electrical characteristics are not realized, and
when the thickness is less than 0.2 µm “deterioration of corrosion
resistance” occurs, would have led one of ordinary skill in the art to form
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Hiroshi’s suggested nickel/phosphorus layer with a thickness of 0.2 to 1 µm,
which encompasses the range recited in claim 1, rendering the recited range
prima facie obvious. Peterson, 315 F.3d at 1329–330.
Although Takahashi and Lee disclose forming nickel/phosphorous
coatings on different components of a printed wiring board than a stainless
steel base material (metal base) of an enforcing member (reinforcing
member) as disclosed in Hiroshi, both references nonetheless disclose
numerous advantages of including phosphorous in a nickel coating applied
to a printed wiring board component, which advantages one of ordinary skill
in the art reasonably would have considered desirable for Hiroshi’s nickel
layer 135b formed on stainless steel base material 135a (metal base) of
enforcing member 135 (reinforcing member). KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”); In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (“[A] prior art reference must be
‘considered together with the knowledge of one of ordinary skill in the
pertinent art.”) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
Although the concerns motivating use of nickel/phosphorus layers in
Takahashi and Lee may not “arise in the context of a reinforcing member” as
Appellant argues, both references nonetheless disclose advantages of
incorporating phosphorous in a nickel coating, including providing corrosion
and oxidation resistance and stable resistance values, which one of ordinary
skill in the art would have recognized would be beneficial for Hiroshi’s
nickel layer 135b formed on base material 135a (metal base) of Hiroshi’s
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enforcing member 135 (reinforcing member), and for the connection surface
of Happoya’s reinforcing plate 22 (metal base). In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“[T]he test for combining references is not what
the individual references themselves suggest but rather what the combination
of disclosures taken as a whole would suggest to one of ordinary skill in the
art.”).
Furthermore, the Examiner’s rejection of claim 1 is based on explicit
disclosures in the applied prior art references, and the rejection, therefore, is
not based on hindsight as Appellant asserts.
Appellant argues that even if a person having ordinary skill in the art
would have modified Happoya’s flexible printed wiring board in view of
Hiroshi, Takahashi, and Lee, the person “would not arrive at the invention of
present claim 1.” Appeal Br. 10. Appellant argues that “if a person having
ordinary skill in the art were to modify Happoya[‘s] device in view of
Takahashi or Lee (or Yamasaki), they might form the nickel layer on the
‘targets’ described in these references, i.e., the electrodes or the surface
treatment plated layer (or the busbars), but they would not have been
motivated to form a nickel layer containing phosphorus on the connection
surface of the metal base of a reinforcing member.” Id.
As discussed above, however, Takahashi and Lee disclose numerous
advantages of including phosphorus in a nickel coating formed on a
component of a printed wiring board. One of ordinary skill in the art
reasonably would have expected that such advantages would also result from
including phosphorus in Hiroshi’s nickel layer 135b formed on base material
135a (metal base) of Hiroshi’s enforcing member 135 (reinforcing member),
and from forming a nickel layer including phosphorus on the connection
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surface of Happoya’s reinforcing plate 22 (metal base). Contrary to
Appellant’s arguments, the combined disclosures of Hiroshi, Takahashi, and
Lee, therefore, reasonably would have led one of ordinary skill in the art to
modify Hiroshi’s nickel layer 135b (formed on connection surface of metal
base) to include phosphorus, and/or to modify the connection surface of
Happoya’s reinforcing plate 22 (metal base) to have a nickel layer including
phosphorus, as recited in claim 1.
We, accordingly, sustain the Examiner’s rejection of claims 1 and 2
under 35 U.S.C. § 103.
DECISION SUMMARY

Claims

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 103 Happoya, Hiroshi,
Takahashi, Lee
1, 2

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