Weiming Zhang et al.

Patent Trials and Appeals Board

Jul 31, 2019

13980459 - (D) (P.T.A.B. Jul. 31, 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.
13/980,459 10/16/2013 Weiming Zhang 136617.03200 5382
27557 7590 07/31/2019
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
EXAMINER
GONZALEZ RAMOS, MAYLA
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
WashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEIMING ZHANG, JEROME MOYER,
and TUNG T. PHAM1
____________

Appeal 2018-000179
Application 13/980,459
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
SHELDON M. MCGEE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Heraeus Precious Metals
North America Conshohocken LLC. Br. 2.
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Application 13/980,459

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Appellants request our review under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1–14. We have jurisdiction over the
Appeal under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. An electroconductive paste composition comprising:
(a) electroconductive metal particles;
(b) glass frit; and
(c) an organic vehicle;
wherein the electroconductive metal particles comprise a
mixture of silver powder and core-shell particles comprising a
silver shell and a core of tin (IV) oxide.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Sawayama et al. US 5,428,249 June 27, 1995
Akimoto US 2009/0211626 A1 Aug. 27, 2009
Iida et al. US 2010/0096014 A1 Apr. 22, 2010
Shaikh et al. WO 2008/134417 A1 Nov. 6, 2008

THE REJECTIONS
1. Claims 1, 2, 7–9, and 14 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Shaikh in view of Sawayama.
2. Claims 1, 2, 5–9, and 12–14 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Akimoto in view of Sawayama.
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3. Claims 3, 4, 10, and 11 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Akimoto in view of Sawayama and
further in view of Iida.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants 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 evidence
presented in this Appeal (including the Final Office Action, the Answer, and
the Appeal Brief), we are persuaded that Appellants identify reversible error.
Thus, we reverse the Examiner’s rejections and add the following primarily
for emphasis.
The dispositive issue in this case is whether the applied art teaches,
inter alia, the claim limitation:
wherein the electroconductive metal particles comprise a
mixture of silver powder and core-shell particles comprising a
silver shell and a core of tin (IV) oxide.

The Examiner relies upon Shaikh as the primary reference for
Rejection 1 as set forth on pages 3–4 of the Answer. Therein, the Examiner
discusses how Shaikh teaches use of metallic particles comprising silver
powder mixed with particles2. Ans. 4. The Examiner recognizes that

2 As Appellants explain on page 4 of the Appeal Brief, these particles are
not core-shell type particles. The materials are silver and nickel metals, and
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Shaikh is silent to the particles having a core-shell structure, wherein the
core of the particles comprises tin oxide. Id.
The Examiner relies upon Sawayama for teaching core-shell
structured particles, e.g., a particle material coated with a metallic layer of,
for example, silver (Sawayama, col. 10, lines 61–67; Figure 25B). Ans. 4.
With regard to the core of the particles being tin (IV) oxide, it is the
Examiner’s position that Sawayama teaches that metal oxides such as tin
(IV) oxide (SnO) are known equivalents to metallic particles comprising Ni
(nickel), Cu (copper), or Pd (palladium). Sawayama, col. 10, ll. 36–46; Ans.
5. The Examiner concludes that it would have been obvious to have
substituted the copper particles of Shaikh with tin oxide because said
materials were known equivalents. Ans. 16.
Appellants disagree that Sawayama indicates that metal oxides such
as tin (IV) oxide (SnO) are known equivalents to metallic particles
comprising Ni (nickel), Cu (copper), or Pd (palladium). Appeal Br. 6.
Appellants argue that the disclosure relied upon by the Examiner at column
10, ll. 36–46 of Sawayama does not indicate equivalency. Id.
Column 10, ll. 36–46 of Sawayama is reproduced below:
Preferable examples of conductive particles are particles of metals,
such as copper, nickel, tin, lead, zinc, aluminum, iron, chromium, and
titanium in addition to gold, silver, platinum, and palladium; particles
of alloys of these metals and other metals: particles of doped metals;
particles of these metals or other metals, which are imparted with a
special distribution; surface-coated particles of these metals or other
metals; and particles of oxides, such as ITO, ZnO, and SnO. The

can be in the form of powder, flake, colloid, salt, and alloy. See ¶ 28 of
Shaikh. Appellants state that Shaikh does mention that silver particles may
be coated with phosphorous in ¶ 48, but there is no teaching of a silver shell
(coating) anywhere in Shaikh. Appeal Br. 4.
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conductive particles may also be mixtures of these particles [emphasis
added].

The above excerpt teaches that the particles of oxides (such as ITO,
ZnO, and SnO) are not surface coated (to be differentiated from the surface-
coated particles of particular metals mentioned previously in this excerpt).
Appellants make this point on pages 5–6 of the Appeal Brief, and we agree.
Therein, Appellants state:
[n]owhere in this disclosure does Sawayama teach or suggest the use
of silver-coated tin (IV) oxide particles. Indeed, in the discussion of
surface-coated particles, Sawayama only teaches that the core may be
formed of metals, such as copper, nickel, tin, lead, zinc, aluminum,
iron, chromium, and titanium, gold, silver, platinum, and palladium.
Sawayama does not teach that the core may be formed of any type of
oxide material.

This valid point made by Appellants is not adequately addressed in
the record by the Examiner. Ans. 14–28. On pages 21 and 22 of the
Answer, for example, the Examiner states that metal oxide particles are most
suitable when their electrical resistances are lowered so it would be obvious
to coat them, and believes coating them would have this effect. However,
aside from this belief not being well-grounded upon facts in the record, it
does not dispel the teachings in the above excerpt from Sawayama which
clearly indicates that surface-coated particles of particular metals are useful,
and that particles of oxides that are not surface coated, are useful. In other
words, Sawayama teaches use of particles of oxides (e.g., SnO), but not in
the form of a core (as part of a core-shell type particle).
Hence, the missing teaching of Shaikh is not cured by Sawayama.
Furthermore, this teaching undermines the Examiner’s equivalency rationale
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as it indicates that while certain metals can be surface-coated, the oxides
cannot be surface-coated.
In view of the above, we reverse Rejection 1. We also reverse
Rejections 2 and 3 because the Examiner relies upon the same flawed
application of Sawayama in making these rejections. Ans. 7–13.
Each rejection is reversed.

REVERSED