Condalign AS

Patent Trials and Appeals Board

May 26, 2021

2020006622 (P.T.A.B. May. 26, 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.
15/312,485 11/18/2016 Robert R. PRAINO 37441.0053U1 9390
23859 7590 05/26/2021
BALLARD SPAHR LLP
SUITE 1600
999 PEACHTREE STREET
ATLANTA, GA 30309-4421
EXAMINER
SCHALLER, CYNTHIA L
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT R. PRAINO, DENISE A. RADKOWSKI, and
HENRIK HEMMEN
__________

Appeal 2020-006622
Application 15/312,485
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–12 and 15–17. 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. The Appellant identifies the real party in interest as CONDALIGN AS.
Appeal Brief dated April 2, 2020 (“Appeal Br.”), at 2.
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Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitations at issue are italicized.
1. A method for arranging particles at an interface between
a) at least one selected from the group consisting of a
water soluble matrix, and a non-water soluble matrix, and
b) a matrix comprising a viscous material and particles,
the method comprising the steps of:
contacting the matrix comprising the viscous material and
particles with a support comprising at least one side, the at least one
side of the support contacting the matrix comprising the viscous
material and particles, thereby forming a support contacting side on
the matrix comprising the viscous material and particles;
on a side opposite the support contacting side of the matrix
comprising the viscous material and particles placing at least one
selected from the group consisting of the water soluble matrix and the
non-water soluble matrix in contact with the matrix comprising the
viscous material and particles thereby providing a structure
comprising at least one interface between at least one selected from
the group consisting of the water soluble matrix and the non-water
soluble matrix, and the matrix comprising the viscous material and
particles;
subjecting the particles in the structure to an electric field
thereby forming the particles into at least one pathway of particles, the
at least one pathway of particles comprising a termination at the at
least one interface between at least selected one from the group
consisting of the water soluble matrix and the non-water soluble
matrix, and the matrix comprising the viscous material and particles;
and
fixating the viscous material so as to fixate the at least one
pathway of particles, the termination being exposed upon removal by
dissolution of at least one from the group consisting of the water
soluble matrix and the non-water soluble matrix.
Appeal Br. 26.
The Examiner maintains the following grounds of rejection on appeal:
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(1) claims 1, 2, 4, 6–8, 10–12, and 17 under 35 U.S.C. § 103 as
unpatentable over Jin 2492 in view of Jin 922;3
(2) claim 3 under 35 U.S.C. § 103 as unpatentable over Jin 249 in view of
Jin 922, further in view of Soong;4
(3) claim 5 under 35 U.S.C. § 103 as unpatentable over Jin 249 in view of
Jin 922, further in view of Choi;5
(4) claim 9 under 35 U.S.C. § 103 as unpatentable over Jin 249 in view of
Jin 922, further in view of Drew;6 and
(5) claims 15 and 16 under 35 U.S.C. § 103 as unpatentable over Jin 249
in view of Jin 922, further in view of Jin 815.7
B. DISCUSSION
1. Rejections (1), (3), and (4)
The Appellant contends that the claimed method produces the structure
illustrated in the block diagram reproduced below. Appeal Br. 9.

2 US 5,045,249, to Jin et al., issued September 3, 1991 (“Jin 249). The Examiner
refers to this reference as “Jin.”
3 US 5,975,922, to Jin, issued November 2, 1999 (“Jin 922”). The Examiner refers
to this reference as “Jin II.”
4 US 2011/0155945, to Soong, published June 30, 2011 (“Soong”).
5 US 2012/0280138, to Choi et al., published November 8, 2012 (“Choi”).
6 US Re. 21,762 to Drew, reissued April 8, 1941 (“Drew”).
7 US 5,509,815 to Jin et al., issued April 23, 1996 (“Jin 815”). The Examiner
refers to this reference as “Jin III”).
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A block diagram depicting, from top to bottom,
a water soluble matrix or non-water soluble matrix,
a matrix comprising viscous material and particles,
and a support.
After the structure illustrated above is produced, the Appellant contends that
the particles in the structure are subjected to an electric field, thereby forming the
particles into at least one pathway of particles. Id. The at least one pathway of
particles comprises a termination at the interface between (1) at least one selected
from the group consisting of the water soluble matrix and the non-water soluble
matrix and (2) the matrix comprising viscous material and particles. Id.
Subsequently, the at least one pathway of particles is fixated and upon removal of
(1) at least one selected from the group consisting of the water soluble matrix and
the non-water soluble matrix, the termination is exposed. Id.
The Appellant recognizes Jin 249 discloses that conductive particles are
aligned in a connection medium using a magnetic field.8 Appeal Br. 9. In contrast
to the claimed invention, however, the Appellant argues that Jin 249 “discloses that
the connection medium always has a free surface so that the conductive particles
can easily protrude from the free surface when a magnetic field is applied.”
Appeal Br. 12 (emphasis added); see also Appeal Br. 17 (arguing that “[t]he
arguments related to claim 1 are applicable for claim 17”).
In response, the Examiner finds Jin 249 teaches that “an upper ‘free’ surface
is one in which the particles protrude into the air or into an easily penetrable
material.” Ans. 4 (emphasis added).9 For support, the Examiner directs our

8 Jin 249 uses the terms “connection medium” and “interconnection medium”
interchangeably in the Specification.
9 Examiner’s Answer dated July 24, 2020.
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attention to column 2, lines 43–50, col. 3, lines 40–41, and claims 1, 3, and 5 of Jin
249. Ans. 3–4.
Jin 249 discloses that a magnetic field may be applied to align electrically
conductive, magnetic particles into essentially straight chains and the end particles
of those chains “protrude from a free surface on at least one side of the
interconnection medium.” Jin 249, col. 2, ll. 18–24 (emphasis added).
Jin 249 does not expressly define the term “free surface.” Nonetheless, Jin
249 describes the conditions by which particles may protrude from at least one side
of the interconnection medium. Jin 249 discloses that “[f]or particles to protrude
from one surface only [of the interconnection medium], manufacture of the
interconnection medium conveniently involves magnetic field alignment of a layer
which is supported from below and which has a free upper surface.” Jin 249, col.
2, ll. 24–28 (emphasis added). To make an interconnection medium having
particles protruding at both surfaces, Jin 249 discloses that a substrate is coated
with an easily penetrable, removable substrate, such as grease or honey, and a
composite material is deposited thereon. Jin 249, col. 2, ll. 25–29. Subsequently, a
magnetic field is applied, the composite material is cured, the cured composite
material is peeled from the substrate, and the coating substance is removed. Jin
249, col. 2, ll. 39–42.
Jin 249 also discloses that “in the interest of more positive control of upper
surface flatness, a substrate having an easily penetrable, soft coating may be placed
on top of a connection medium during curing.” Jin 249, col. 2, ll. 47–50 (emphasis
added); see also Final Act. 5.10 The Examiner finds, and the Appellant does not
dispute, that Jin 249 teaches that a magnetic field may be applied and the

10 Final Office Action dated October 11, 2019.
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connection medium may be cured simultaneously in the disclosed method. See
Ans. 4; Jin 249, col. 3, ll. 40–44.
Based on the foregoing, a preponderance of the evidence supports a finding
that an easily penetrable, soft coating may be applied on both sides of Jin 249’s
interconnection medium followed by the application of a magnetic field.11 See
Ans. 5.
The claims of Jin 249 support that finding. See Final Act. 11. Claim 1 of
Jin 249 recites a method for making an electrical interconnection medium wherein
a layer of a composite material is exposed to a magnetic field. Jin 249, col. 4, ll.
30–32. The composite material comprises magnetic, electrically conductive
particles in a nonconductive matrix material. Jin 249, col. 4, ll. 32–35. Claim 1 of
Jin 249 further recites,
said magnetic field being applied for a period during which said
matrix material undergoes at least partial hardening and while at least
one surface of said layer is essentially unconstrained,
whereby, during said period, magnetic particles are aligned into
mutually isolated chains essentially perpendicular to said layer and
such that end particles of chains protrude from said matrix material at
said at least one layer surface.
Jin 249, col. 4, ll. 37–45 (emphasis added). Notably, the claims of Jin 249 use the
term “essentially unconstrained” rather than the term “free” to describe the
surfaces of the composite material. See Jin 249, col. 4, ll. 30–57.

11 Independent claims 1 and 17 recite that the particles in the structure are
subjected to an electric field rather than a magnetic field. See Appeal Br. 26, 29.
The Examiner concludes that it would have been obvious to one of ordinary skill in
the art to apply an electric field as claimed based on the teachings of Jin 922. Final
Act. 7. The Appellant does not direct us to any error in the Examiner’s conclusion
or the Examiner’s underlying factual findings.
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We interpret claim 1 of Jin 249 as including the situation where both (i.e.,
opposite) surfaces of the composite material layer12 are “essentially unconstrained”
while the magnetic field is applied, whereby the magnetic particles are aligned into
chains and the end particles of those chains protrude at both surfaces of the
composite material layer. Jin 249, col. 4, ll. 30–45; see also Jin 249, col. 2, ll. 35–
42 (disclosing an interconnection medium having particles protruding at both
surfaces).
Claim 5 of Jin 249 depends from claim 1 and recites that “said end particles
protrude into an easily penetrable material.” Jin 249, col. 4, ll. 54–55. Thus, in the
scenario identified above, the end particles, protruding at both surfaces of the
composite material layer, protrude into an easily penetrable material at both
surfaces of the composite material layer when the magnetic field is applied.
For the reasons set forth above, the obviousness rejection of claims 1 and 17
is sustained. The Appellant does not present arguments in support of the separate
patentability of any of dependent claims 2 and 4–12. Therefore, the obviousness
rejections of claims 2 and 4–12 are sustained.
2. Rejection (2)
Claim 3 depends from claim 1 and recites that “at least one selected from the
group consisting of the water soluble matrix and the non-water soluble matrix
comprises the particles.” Appeal Br. 27.
The Examiner finds Soong discloses a polymer foam having pathways of
electrically conductive particles that are partially embedded in a removable layer
“‘so as to increase surface exposure of the electrically conductive particles when

12 See Jin 249, col. 4, ll. 50–51 (reciting, in claim 3, that “both surfaces of said
layer are essentially unconstrained”).
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the removable layer is removed.’”13 Final Act. 14. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to add electrically
conductive particles to Jin 249’s easily penetrable coatings (e.g., grease or honey)
to achieve the same benefit. Final Act. 14.
The Appellant does not direct us to any error in the Examiner’s findings as
to Soong. Rather, the Appellant appears to argue that the Examiner’s reliance on
Soong does not cure the deficiencies in Jin 249 in the obviousness rejection of
claim 1. See Appeal Br. 19 (arguing that “Soong teaches away from adding a
material on the top of the polymer foams”). For the reasons discussed above, there
are no deficiencies in the rejection of claim 1 that require curing by Soong.
The obviousness rejection of claim 3 is sustained.
3. Rejection (5)
Claim 15 depends from claim 1 and recites that “the at least one from the
group consisting of the water soluble matrix and the non-water soluble matrix is
the water soluble matrix, and wherein the water soluble matrix includes at least one
water soluble polymer selected from the group consisting of polyvinyl alcohol
[among others].” Appeal Br. 28. Similarly, claim 16 depends from claim 1 and
recites that “the at least one from the group consisting of the water soluble matrix
and the non-water soluble matrix is the water soluble matrix, and wherein the
water soluble matrix comprises polyvinyl alcohol.” Appeal Br. 28.
The Examiner finds that Jin 249 and Jin 922 do not disclose the water
soluble materials recited in claims 15 and 16. Final Act. 16. The Examiner,

13 It appears that the Examiner’s reliance on Soong is cumulative of Jin 249’s
disclosure, which teaches that particles may extend into an easily penetrable
material on both sides of the connection medium.

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however, finds that Jin 815 teaches the equivalency of honey, one of the easily
penetrable materials disclosed in Jin 249, and polyvinyl alcohol. Final Act. 17.
Based on that finding, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art to substitute honey in Jin 249’s method with any of
the water soluble materials disclosed in Jin 815, including polyvinyl alcohol. Final
Act. 17.
The Appellant argues that the water soluble materials disclosed in Jin 815
are insulating materials. Appeal Br. 23. The Appellant argues that one of ordinary
skill in the art would not have used polyvinyl alcohol in Jin 249’s method as
proposed by the Examiner because the function of the easily penetrable materials
disclosed in Jin 249 and the function of the insulating materials disclosed in Jin
815 “are completely unrelated.” Appeal Br. 24.
In response, the Examiner finds Jin 815 discloses that the water soluble
insulating materials, which include polyvinyl alcohol, are “desirably soft,
elastically and plastically, so that [they] do not exert excessive stresses on an
adjacent solder layer.” Ans. 6 (citing Jin 815, col. 3, ll. 5–17). Thus, one of
ordinary skill in the art would have expected the elastically and plastically soft
materials disclosed in Jin 815 to be easily penetrable. Ans. 7. Based on those
findings, the Examiner explains that one of ordinary skill in the art would have
considered polyvinyl alcohol (as well as the other water soluble materials disclosed
in Jin 815) to be a suitable substitute for the water soluble, easily penetrable
materials disclosed in Jin 249. Ans. 7. The Appellant does not direct us to any
evidence to the contrary.
The obviousness rejection of claims 15 and 16 is sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.
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In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6–8,
10–12, 17
103 Jin 249, Jin 922 1, 2, 4, 6–8,
10–12, 17

3 103 Jin 249, Jin 922,
Soong
3
5 103 Jin 249, Jin 922,
Choi
5
9 103 Jin 249, Jin 922,
Drew
9
15, 16 103 Jin 249, Jin 922,
Jin 815
15, 16
Overall
Outcome
1–12, 15–17

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