Ex Parte Doyel et al

Patent Trial and Appeal BoardApr 18, 2016

13316063 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/316,063 12/09/2011 27479 7590 04/18/2016 COCHRAN FREUND & YOUNG LLC 2026 CARIBOU DR SUITE 201 FORT COLLINS, CO 80525 FIRST NAMED INVENTOR Kyle J. Doyel 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. KYZE.42USU1 4935 EXAMINER CARRILLO, BIBI SHARIDAN ART UNIT PAPER NUMBER 1711 MAILDATE DELIVERY MODE 04/18/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYLE J. DOYEL, MICHAEL L. BIXENMAN, DAVID T. LOBER, WAYNE RANEY, and KEVIN SOUCY Appeal2014-009350 Application 13/316,063 1 Technology Center 1700 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the decision2 of the Primary Examiner rejecting claims 87-115. Final Act. 2---6. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. OPINION Appellants' invention relates "to a composition and method for removing solder flux." Spec. 1. 1 Appellants identify the real party-in-interest as Kyzen Corporation. Appeal Br. 1. 2 Final Office Action, mailed February 4, 2014 ("Final Act."). Appeal2014-009350 Application 13/316,063 Claim 87, reproduced below, is representative of the appealed subject matter: 87. A method of removing solder flux from a substrate comprising washing said substrate with a composition consisting of: (A) tripropylene glycol butyl ether; (B) an alkali; (C) optionally one or more secondary solvents chosen from: (1) a glycol ether of the formula Ri-O-(CxH2xO)n-H, wherein: Ri is an alkyl group having 1 to 6 carbon atoms, n is integer from 1 to 4, xis integer from 1 to 4, and mixtures thereof; (2) an alcohol of the formula R2-0H, wherein: R2 is an alkyl group having 1 to 8 carbon atoms or a tetrahydrofurfuryl group, and mixtures thereof; (3) an N-alkyl pyrollidone of the formula R3Npyrr, wherein: Npyrr represents a pyrollidone ring, and R3 is an alkyl group having 1to8 carbon atoms; and mixtures thereof, (4) a dibasic ester of the formula R4-0-CO-(CH2)k-CO- O-R4, wherein: R4 is Methyl, ethyl, or isobutyl, and k is an integer from 2 to 4, and mixtures thereof; and ( 5) mixtures thereof; and 2 Appeal2014-009350 Application 13/316,063 (D) optionally, one or more additives chosen from water, a non ionic surface active agent, a corrosion inhibitor, a buffering agent, and a chelating agent, and having a pH of at least about 7.5, in a single washing stage at a temperature and a contact time sufficient to remove said solder flux. Appeal Br. 12-13. The Examiner rejected claims 87-95, 97-107, and 115 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Sachdev3 and Bivins.4 Final Act. 2--4. The Examiner also rejected claims 96 and 108-114 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Sachdev, Bivins, and Tropsch. 5 Id. at 4--5. In rejecting each of these claims, the Examiner relied on Sachdev in light of Bivins to teach or suggest the claimed "remov[al of] solder flux." Id. at 3--4. Appellants argue that Sachdev teaches only removing screening paste, not removing solder flux. Appeal Br. 6. We do not find this argument persuasive of harmful error on the part of the Examiner. Sachdev teaches removal of "solder paste" from various components. Sachdev ,-r 34. Bivins teaches that "[s]older paste" includes flux. Bivins, col. 1, 11. 23-25. Accordingly, the combination of Sachdev and Bivins teaches or suggests the claimed removal of solder flux. As to Sachdev's teaching being limited to removal of solder paste specifically from "masks and screens," Sachdev ,-r 34, Appellants have not explained how Appellants' claims, which recite the removal of solder flux "from a substrate," Appeal Br. 12, are limited to removing solder flux from non-mask, non-screen substrates. 3 Sachdev et al., US 2001/0039251 Al, published Nov. 8, 2001. 4 Bivins et al., U.S. Patent No. 6,511,546 Bl, issued Jan. 28, 2003. 5 Tropsch et al., US 2004/0009889 Al, published Jan. 15, 2004. 3 Appeal2014-009350 Application 13/316,063 Appellants also argue that the Examiner committed harmful error by relying on Sachdev to teach or suggest the recited "tripropylene glycol butyl ether," because this represents the Examiner's selection of a single claimed compound "out of a broad disclosure of hundreds or thousands of compounds." Appeal Br. 7. This is incorrect as a factual matter. Claim 10 of Sachdev teaches only eleven compounds, 6 not "hundreds or thousands." Accordingly, the cases cited by Appellants are inapposite. This is not a situation like that in Ex parte Strobel, 160 USPQ 352 (Pat. Off. Bd. App. 1968), in which the prior art disclosed a "host of possible combinations and permutations," nor is it like the situation in Jn re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994 ), in which the "claimed compound [was] encompassed by a disclosed generic formula." On the present record, and on the arguments presented by Appellants, we cannot conclude that the Examiner committed harmful error by finding that Sachdev's disclosure of eleven compounds constituted a teaching or suggestion of one of those compounds, specifically tripropylene glycol butyl ether. Appellants argue that Sachdev and Bivins cannot be combined, both because they are directed to different types of paste and because neither reference contains a "suggestion ... to make the combination of Sachdev and Bivins." Appeal Br. 8-10. On the former point, as discussed above, 6 The compounds are (1) benzyl alcohol, (2) di propylene glycol methyl ether, (3) dipropylene glycol ethyl ether, (4) dipropylene glycol propyl ether, ( 5) dipropylene glycol butyl ether, ( 6) tripropylene glycol methyl ether, (7) tripropylene glycol ethyl ether, (8) tripropylene glycol propyl ether, (9) tripropylene glycol butyl ether, (10) 3-methoxy-1-butanol, and (11) methoxy propanol. Sachdev, claim 10 (limiting "alkyl" to "butyl, ethyl, methyl, and propyl" forms). 4 Appeal2014-009350 Application 13/316,063 Sachdev and Bivins both discuss the removal of solder paste, Sachdev if 34, Bivins, col. 1, 11. 23-25, and Appellants have not explained why the solder paste in Sachdev should be treated as limited to a different material than the solder paste in Bivins. On the latter point, we disagree with Appellants that the Supreme Court merely "criticized the ... teaching, suggestion, or motivation [TSM] ... test of the Federal Circuit." Appeal Br. 9. Instead, the Court held that, although the TSM test can be "a helpful insight," it cannot be used as a rigid or mandatory formula. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Accordingly, to support a rejection based on obviousness, the Examiner need only provide "some articulated reasoning with some rational underpinning" to combine known elements in the manner required by the claim. Id. at 418 (citing In re Kahn, 441 F.3d 977, 977 (Fed. Cir. 2006)). Appellants' argument that "[t]here is no suggestion ... to make the combination of Sachdev and Bivins" does not show why the Examiner failed to do this. Accordingly, we are not persuaded of harmful error on the part of the Examiner by Appellants' reason-to-combine arguments. With respect to the rejection of claims 96 and 108-114, Appellants argue that Tropsch, relied upon by the Examiner, is irrelevant because it is non-analogous art. Appeal Br. 10-11. According to Appellants, Tropsch "is concerned with detergents and cleaners of the type commonly used for laundering clothing and the like ... as well as [for cleaning] kitchen and bathroom surfaces," so it would not have been obvious to a person of ordinary skill in the art to combine the teachings of Tropsch with those of Sachdev and Bivins. Id. We are not persuaded by this argument. "Two separate tests define the scope of analogous prior art: (1) whether the art is 5 Appeal2014-009350 Application 13/316,063 from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011 ). Thus, even if Tropsch is in a field different from that of Appellants' endeavor, it still is reasonably pertinent if, because of the matter with which it deals, it logically would have commended itself to the attention of a person of ordinary skill in the art in considering the problem solved by Appellants' invention. Tropsch teaches that its cleaning compounds "are also very valuable auxiliaries ... for completely removing soldering pastes or other flux residues after assembly." Tropsch ,-r 42. As discussed above, Bivins defines "solder paste" as including solder flux. Bivins, col. 1, 11. 23- 25. Accordingly, Tropsch teaches using its cleaning compounds to remove solder flux. Given that Appellants' invention is concerned with the removal of solder flux, we cannot conclude that Tropsch is not reasonably pertinent to the problem solved by Appellants' invention. Because none of Appellants' arguments is persuasive of harmful error on the part of the Examiner, we affirm all the Examiner's rejections. ORDER The Examiner's rejections under 35 U.S.C. Â§ 103(a) of claims 87-95, 97-107, and 115 as obvious over the combination of Sachdev and Bivins; and of claims 96 and 108-114 as obvious over the combination of Sachdev, Bivins, and Tropsch are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. 6 Appeal2014-009350 Application 13/316,063 AFFIRMED 7