Ex Parte Albrecht et al

Patent Trials and Appeals BoardMar 21, 2019

10554274 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/554,274 31217 7590 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 09/13/2006 03/25/2019 FIRST NAMED INVENTOR Hans-Jurgen Albrecht 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 ATTORNEY DOCKET NO. CONFIRMATION NO. H06020/PCT/US 3094 EXAMINER COHEN, STEFANIE J ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 03/25/2019 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-JURGEN ALBRECHT, KLAUS HEINRICH GEORG BARTL, WERNER KRUPPA, KLAUS MULLER, MATHIAS NOWOTTNICK, GUNNAR PETZOLD, HECTOR ANDREW STEEN, KLAUS WILKE and KLAUS WITTKE Appeal2017-005997 Application 10/554,274 Technology Center 1700 Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (W.C. Heraeus GMBH) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 3, 8, 9, 19, and 26. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The claims are to a lead-free soldering material. Claim 3 is illustrative: 3. A lead free soldering material consisting essentially of Sn (tin), 2 to 10 wt.% Ag, Bi, 1 to 3 wt.% Sb, Appeal2017-005997 Application 10/554,274 0.5 to 3 wt.% Cu and 0.05 to 0.3 wt.% Ni, wherein the Sb:Bi wt.% ratio is from 1:1.5-3. Gonya Sato The References us 5,393,489 US 6,517,602 B2 The Rejections Feb.28, 1995 Feb. 11, 2003 Claims 3, 8, 9, 19, and 26 stand rejected under 35 U.S.C. Â§ 103(a) over Gonya in view of Sato and over Sato. OPINION We reverse the rejections. Rejection over Gonya in view of Sato Gonya discloses a lead-free, high solidus temperature, high service temperature, high strength solder that flows at low enough temperature to avoid damage to electronic materials, and wets and forms a chemically and thermally stable intermetallic with metals typically used in electronics fabrication such as Cu, Au, Ag, and Pd while avoiding wetting organic materials such as substrates and solder masks (col. 3, 11. 27--42). An exemplified solder contains about 93.5 to about 94.0 wt% Sn, about 2.5 to about 3.0 wt% Ag, about 1.0 to about 2.0 wt% Bi, about 1.0 to about 2.0 wt% Sb, and about 1.0 wt% Cu (col. 4, 11. 8-13). Sato discloses "a solder ball having high sphericity, high dimension accuracy, narrow dimension distribution and smooth and clean surface" (col. 3, 11. 8-10). An exemplified Sn solder ball contains 1.5-3.5 mass% Ag, 0.5-1.5 mass% Bi, 0.3---0.9 mass% Cu, and, to improve welding strength, 0.006---0.1 mass% ofat least one of Ni, P, Mn, Au, Pd, Pt, S, In, and Sb, 2 Appeal2017-005997 Application 10/554,274 where Sb also functions to smooth the solder ball's surface (col. 5, 11. 59---62; col. 7, 11. 9-11, 62---65). Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The Examiner concludes that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate nickel in the amount as taught by Sato in the alloy as taught by Gonya because Sato teaches Ni improves a welding strength of a solder" (Ans. 3), and "[i]t would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference" (id.) by optimization (Ans. 3--4). The Examiner does not establish that Sato would have indicated to one of ordinary skill in the art that Sato's at least one of Ni, P, Mn, Au, Pd, Pt, S, In, and Sb would improve the welding strength of solders generally or Gonya' s solder in particular, and would not negatively impact the above- stated solder properties desired by Gonya. Thus, the Examiner has not established that Sato would have provided one of ordinary skill in the art with an apparent reason to modify Gonya's solder as proposed by the Examiner. Rejection over Sato The Examiner finds that "Sato does not teach the exact same proportions as recited in the instant claims" (Ans. 4), and concludes that "[i]t would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from 3 Appeal2017-005997 Application 10/554,274 the ranges disclosed in the prior art reference" (Ans. 5) by optimization and routine investigation (id.). Sato desires to achieve the above-stated solder ball properties whereas the Appellant's desired solder properties are comparatively low melting point and highest possible usage temperature (Spec. ,r 4). The Examiner does not establish that optimizing Sato' s solder composition to achieve the solder ball properties desired by Sato would produce the Appellant's solder composition having components and their amounts for achieving solder properties that differ from those desired by Sato. Thus, the record indicates that the Examiner's rejection over Sato is based upon impermissible hindsight in view of the Appellant's disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art."). For the above reasons we reverse that rejections. DECISION The rejections of claims 3, 8, 9, 19, and 26 under 35 U.S.C. Â§ 103(a) over Gonya in view of Sato and over Sato are reversed. The Examiner's decision is reversed. REVERSED 4