Condalign ASDownload PDFPatent Trials and Appeals BoardMay 26, 20212020006622 (P.T.A.B. May. 26, 2021) Copy Citation 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. Appeal 2020-006622 Application 15/312,485 2 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: Appeal 2020-006622 Application 15/312,485 3 (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”). Appeal 2020-006622 Application 15/312,485 4 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. Appeal 2020-006622 Application 15/312,485 5 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. Appeal 2020-006622 Application 15/312,485 6 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. Appeal 2020-006622 Application 15/312,485 7 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”). Appeal 2020-006622 Application 15/312,485 8 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. Appeal 2020-006622 Application 15/312,485 9 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. Appeal 2020-006622 Application 15/312,485 10 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). 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