Aculon, Inc

Patent Trials and Appeals BoardAug 2, 2021

2020006318 (P.T.A.B. Aug. 2, 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. 16/245,718 01/11/2019 Eric Hanson Aculon-1603 9125 36787 7590 08/02/2021 BLYNN L. SHIDELER THE BLK LAW GROUP 3000 Village Run Road Suite 103-251 WEXFORD, PA 15090 EXAMINER ALONZO MILLER, RHADAMES J ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 08/02/2021 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): blynn@BLKLawGroup.com cbelleci@BLKLawGroup.com patents@BLKLawGroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC HANSON and JOSHUA GARRETSON Appeal 2020-006318 Application 16/245,718 Technology Center 2800 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1 and 4–20 which are all claims pending in the application. Appeal Br. 1. Claims 2 and 3 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Aculon, Inc. Appeal Br. 2. Appeal 2020-006318 Application 16/245,718 2 STATEMENT OF THE CASE2 The claims are directed to coated articles that demonstrate push- through electrical connectivity. See Spec. ¶ 2. More particularly, “push- through electrical connectivity” in the Specification is described as “an electrically conductive wire or other component can be pushed through the coating layer by piercing or cutting through it to establish an electrical connection with the underlying substrate, without fracturing, chipping, cracking, or otherwise damaging the continuity of the coating layer to cause failure.” Spec. ¶ 19. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphasis and formatting added to contested limitations): l. A coated article comprising: (a) a substrate that demonstrates electrical conductivity, wherein the substrate is an electronic component of a circuit assembly and comprises an electrically conductive circuit pattern imprinted in or on the substrate surface; and (b) a coating layer applied to at least one surface of the substrate; wherein the coating layer demonstrates push-through electrical connectivity. 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Feb 28, 2020); Reply Brief (“Reply Br.,” filed Sept. 9, 2020); Examiner’s Answer (“Ans.,” mailed July 10, 2020); Final Office Action (“Final Act.,” mailed Sept. 30, 2019); and the original Specification (“Spec.,” filed Jan. 11, 2019). Appeal 2020-006318 Application 16/245,718 3 REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Sakugawa et al. (“Sakugawa”) US 2003/0153682 A1 Aug. 14, 2003 Ferdinandi et al. (“Ferdinandi”) US 2010/0025091 Al Feb. 4, 2010 Hanson US 2012/0004388 Al Jan. 5, 2012 REJECTIONS R1. Claims 1, 4, 14, and 19 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Ferdinandi. Final Act. 2. R2. Claims 5–7 and 12 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ferdinandi Sakugawa, and Hanson. Final Act. 4. R3. Claims 8–11, 13, and 15–18 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ferdinandi, Sakugawa, and Hanson. Final Act. 7. R4. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being obvious over the teachings and suggestions of Ferdinandi. Final Act. 14. 1. § 102(a)(1) Rejection R1: Claims 1, 4, 14, and 19 Issue 1 Appellant argues (Appeal Br. 5–7; Reply Br. 4–5) the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Ferdinandi is in error. These contentions present us with the following issue: Appeal 2020-006318 Application 16/245,718 4 Did the Examiner err in finding the cited prior art discloses “[a] coated article” that includes, inter alia, “a coating layer applied to at least one surface of the substrate; wherein the coating layer demonstrates push- through electrical connectivity,” as recited in claim 1? Principles of Law Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed element and the claimed arrangement or combination of those elements is disclosed, inherently or expressly, by a single prior art reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description Appeal 2020-006318 Application 16/245,718 5 contained in the applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Analysis Appellant argues Ferdinandi does not disclose the disputed limitation “a coating layer applied to at least one surface of the substrate; wherein the coating layer demonstrates push-through electrical connectivity” as recited in claim 1 (emphasis added). Appeal Br. 6. Appellant contends Ferdinandi’s coating demonstrates “solder- through” properties which is different from push-through electrical connectivity properties. Id. Appellant contends Ferdinandi’s coating is removed when solder or flux is applied. Id (citing to Ferdinandi ¶¶ 24, 34– 35). Appellant specifically contends its claimed coating is different from Ferdinandi’s in that it is soft enough that it may be penetrated to establish electrical connectivity, whereas the coating used in Ferdinandi must be removed to establish electrical connectivity. Id. Appellant relies upon a Declaration by Eric Hanson, a named inventor in support of the argument that Ferdinandi’s halo-hydrocarbon polymers “do not provide coatings that exhibit push-through electrical connectivity like those of the present invention.” Appeal Br. 7. Appellant contends the Declaration avers that, because of the hardness of the Ferdinandi coating, Mr. Hanson’s experiment cited in the Declaration resulted in a failure of the Ferdinandi coating to achieve push through connectivity, despite a 500 grams applied force, whereas push through connectivity was achieved with a force of only 210 grams with the coated article as described in Appellant’s disclosure. Id.; Decl. pp. 2–4. Appeal 2020-006318 Application 16/245,718 6 In the anticipation rejection, the Examiner merely provides a list of string citations without a clear mapping of the claim terms to specific findings. See Final Act. 2–3. The Examiner also does not address specific points made in the submitted Declaration in its 102 findings in either the Final Action or the Answer. See, e.g., Final Act. 2–3; Ans. 14–15. Appellant responds in the Reply Brief: The coating layer used in the present invention is soft enough that it can be pierced or punctured without causing the coating to crack or otherwise fail structurally and thus compromise its electrical insulating properties. In contrast, the coating layer used by Ferdinandi is too hard to allow for such a property (see the declaration filed 6/20/2019 by inventor Eric Hanson under 37 CFR 1.132). Thus, the coated article of the present invention is different from that of Ferdinandi. As noted by inventor Eric Hanson in the declaration, because of the hardness of the Ferdinandi et al. coating, push-through connectivity was not achieved, even at 500 g applied force and the use of a thinner film than the coated substrate of the present invention. Clearly the coated article of the present invention is different from that of Ferdinandi et al. because it possesses demonstrably different properties. The coating used in the coated article of the present invention is soft enough that it may be penetrated to establish electrical connectivity, whereas the coating used in Ferdinandi et al. must be removed during flux application or soldering to establish electrical connectivity. The fact that the coating of Ferdinandi needs to be removed at the point of soldering makes it clear that it does not possess push-through connectivity. Thus, not only is the coating used in the coated article of the present invention different from that of the Ferdinandi et al. reference, the push-through electrical connectivity exhibited by the coating layer is not equivalent to what Ferdinandi teaches. Regardless, again, the concept of "equivalence" as used by the Examiner is not a standard for anticipation under 35 USC §102. Appeal 2020-006318 Application 16/245,718 7 Reply Br. 4–5. We are persuaded by Appellant’s arguments. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Therasense, 593 F.3d at 1332. As our reviewing court has instructed, [u]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). Based on our review of the record, we find the Examiner has erred in rejecting claim 1 as being anticipated by Ferdinandi because the Examiner does not provide a clear mapping of the individual terms to the corresponding specific features found in Ferdinandi with particularity. See 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” (Emphasis added)). Furthermore, after consideration of Appellant’s data in the Specification (¶¶ 19, 49) and the Declaration evidence, we find a preponderance of the evidence supports Appellant’s arguments as advanced in the Briefs. Specifically, we are persuaded that the arguments distinguishing the materials characteristics claimed in claim 1 with those of Ferdinandi, as well as the experimental data relating to the failure of push- Appeal 2020-006318 Application 16/245,718 8 through connectivity of Ferdinandi’s substrate, even at an applied force of 500 grams, and despite using a thinner film than the coated substrate disclosed by Appellant, persuades us that Ferdinandi does not disclose the disputed limitation. See Decl. 2–4. Consequently, we agree with Appellant that the Examiner did not give sufficient weight in considering the evidence of the Declaration in the anticipation rejection. Accordingly, on this record, we are constrained to reverse the Examiner's § 102 rejection. See In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (Failure to meaningfully address submitted evidence is error.); In re Rinehart, 531 F.2d 1048, 1053–54 (CCPA 1976) (Failure to consider the rebuttable evidence in the affidavit relied upon by Appellant is error). Therefore, we reverse the Examiner’s anticipation rejection of independent claim 1 and dependent claims 4, 14, and 19, rejected on the same basis as claim 1. 2. § 103 Rejections R2–R4 of Claims 5–13, 15–18, and 20 In light of our reversal of anticipation Rejection R1 of independent claim 1, supra, we also reverse obviousness Rejection R2 through R4 under § 103 of claims 5–13, 15–18, and 20 which variously and ultimately depend from claim 1. On this record, the Examiner has not shown how the additionally cited Sakugawa and Hanson references overcome the aforementioned deficiencies with Ferdinandi, as discussed above regarding claim 1. Appeal 2020-006318 Application 16/245,718 9 CONCLUSION We reverse the Examiner’s rejections of claims 1 and 4–20. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 14, 19 102(a)(1) Ferdinandi 1, 4, 14, 19 5–7, 12 103 Ferdinandi, Sakugawa, Hanson 5–7, 12 8–11, 13, 15–18 103 Ferdinandi, Sakugawa, Hanson 8–11, 13, 15–18 20 103 Ferdinandi 20 Overall Outcome 1, 4–20 REVERSED