Ex Parte Kotake et al

Patent Trials and Appeals BoardFeb 21, 2019

13980385 - (D) (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/980,385 08/28/2013 42798 7590 02/21/2019 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street, Suite 2100 Chicago, IL 60603-3406 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Tomohiko Kotake 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. 20371-134966 7596 EXAMINER NELSON, MICHAEL B ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 02/21/2019 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 TOMOHIKO KOT AKE, MASATO MIY ATAKE, SHUNSUKE NAGAI, SHINTARO HASHIMOTO, YASUO INOUE, SHIN T AKANEZA WA, and HIKARI MURAI Appeal2018-000947 Application 13/980,385 Technology Center 1700 Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 1-21 and 34--39. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Our Decision refers to the Specification ("Spec.") filed July 18, 2013, Appellants' Appeal Brief ("Appeal Br.") filed June 5, 2017, the Examiner's Answer ("Ans.") dated September 5, 2017, and Appellants' Reply Brief ("Reply Br.") filed November 3, 2017. 2 Appellants identify Hitachi Chemical Company, Ltd. as the real party in interest (Appeal Br. 2). Appeal2018-000947 Application 13/980,385 STATEMENT OF THE CASE The invention relates to a modified silicone compound suitable for a semiconductor package and a printed wiring board, as well as a thermosetting insulating resin composition suitable for a prepreg, a laminated plate, and a printed wiring board using this compound (Spec. ,r 1 ). Appellants disclose that an objective of the invention is to provide the composition with excellent low water absorbability and low thermal expansion properties (id. ,r 7). To achieve this objective, Appellants disclose the modified silicone compound is prepared by reacting a siloxane diamine, a maleimide compound with at least two N-substituted maleimide groups, and an amine compound with an acidic substituent (id. ,r 9). Appellants additionally disclose that an amine compound with at least two primary amino groups per molecule may be included in the above reaction mixture (id. ,I 12). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. A modified silicone compound prepared by reacting: (A) a siloxane diamine represented by a general formula (1 ); (B) a maleimide compound with at least two N-substituted maleimide groups in a molecular structure; (C) an amine compound with an acidic substituent represented by a general formula (2), R1 ", R:3 I t . ! ! ! H2N-R5 Si---- a+------ s1---Re-NH2 (1) ! I I '" R2 _) n R4 wherein a plurality ofR1s each independently represent an alkyl group, a phenyl group, or a substituted phenyl group and may be the same as or different from each other, a plurality of 2 Appeal2018-000947 Application 13/980,385 R2s each independently represent an alkyl group, a phenyl group, or a substituted phenyl group and may be the same as or different from each other, R3 and R4 each independently represent an alkyl group, a phenyl group, or a substituted phenyl group, Rs and R6 represent C3H6, and n represents an integer of 2-50, wherein R9 or a plurality of R9s each independently represent a hydroxyl, a carboxyl, or a sulfonic group that is an acidic substituent, R 10 or a plurality of R 10s each independently represent a hydrogen atom, an aliphatic hydrocarbon group with 1-5 carbon atoms, or a halogen atom, x represents an integer of 1-5, y represents an integer of 0-4, and x+y=5. The remaining independent claim 2 recites a modified silicone compound prepared from the reaction mixture as in claim 1, additionally including an amine compound with at least two primary amino groups per molecule. REJECTIONS The Examiner maintains, and Appellants request our review of, the following grounds of rejection: 1. Claims 1-21 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement; and 3 Appeal2018-000947 Application 13/980,385 2. Claims 1-21 and 34--39 under 35 U.S.C. Â§ I03(a) as unpatentable over Kotake3 in view of Rosenfeld. 4 ANALYSIS Rejection 1: Â§ 112, first paragraph, written description requirement The Examiner finds that the written description of the invention fails to support the recitation in claim 1 where Rs and R6 of formula 1 represent C3H6 (Ans. 2). The Examiner finds that the written description of the invention also fails to support the range of amine equivalents recited in claims 20 and 21 (id. at 3). The Examiner finds that the only descriptive support for Rs and R6 being C3H6 and the amine equivalents recited in claims 20 and 21 are the particular disclosed tradenamed products, which fail to support applying C3H6 for Rs and R6 and these amine equivalent values generally to the claimed invention (id.). In particular, the Examiner finds that the ordinary artisan would not consider there to be support for these attributes being applied broadly to compounds, other than the disclosed tradenamed compounds (id. at 11 ). The Examiner further finds that "it is not even clear that these [tradenamed] compounds fall within the scope of the claimed formula [1]" (id. at 12). Appellants assert that the Specification discloses that Rs and R6 independently represent a divalent organic group, and note that C3H6 is a divalent organic group (Appeal Br. 7). Appellants further assert that the Specification discloses several tradenamed examples of siloxane diamines, 3 Kotake et al., WO 2010/110433 Al, published September 30, 2010. The Examiner relies on, without objection, the English-language equivalent to US 2012/0077401 Al, published March 29, 2012 ("Kotake"). 4 Rosenfeld et al., US 5,856,425, issued January 5, 1999 ("Rosenfeld"). 4 Appeal2018-000947 Application 13/980,385 including KF-8010, KF-8012, X-22-161A, and X-22-161B, within the scope of formula ( 1) (id.). Appellants direct our attention to SILICONES FOR RESIN MODIFICATION,s which teaches that each ofKF-8010, KF-8012, X-22-161A, and X-22-161B has C3H6 in positions corresponding to Rs and R6 of fornmla ( 1) (id. at 7-8). Appellants argue that any person skilled in the art would find that the Specification, as originally filed, provides adequate written description of Rs and R6 representing a divalent organic group including C3H6 in formula (1) over the full scope ofR1 through R4 and n (id. at 8). In addition, Appellants assert that the Specification discloses examples of siloxane diamines having amine equivalent values at the endpoints and with the range recited in both claims 20 and 21 (id. at 9). In rejecting a claim under the first paragraph of 35 U.S.C. Â§ 112 for lack of adequate descriptive support, it is incumbent upon the Examiner to establish that the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellants had possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Adequate description under the first paragraph of 35 U.S.C. Â§ 112 does not require literal support for the claimed invention. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) ("In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue."); see also In re Herschler, 591 F.2d 693, 701 (CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re Wertheim, 541 F.2d 257,262 s Shin-Etsu Chemical Co., Ltd., SILICONES FOR RESIN MODIFICATION 1-12 (2011). 5 Appeal2018-000947 Application 13/980,385 (CCP A 197 6). Rather, it is sufficient if the originally-filed disclosure would have conveyed to one having ordinary skill in the art that an appellant had possession of the concept of what is claimed. In re Anderson, 4 71 F .2d 1237, 1242 (CCPA 1973). In other words, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. Purdue Pharma, supra ("Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims."). Here, there is no dispute that Appellants' Specification, as originally filed, discloses siloxane diamines of formula (1 ), wherein Rs and R6 represent a divalent organic group. There is also no dispute that the Specification discloses several tradenamed siloxane diamine products including KF-8010, KF-8012, X-22-161A, and X-22-161B. Further, although the Examiner questions whether these tradenamed siloxane diamine products are within the scope of formula ( 1) of claim 1, we note the Specification clearly teaches this relationship (Spec. ,r 17). In addition, we note the Specification also teaches the amine equivalent for each of these tradenamed siloxane products, thereby providing specific examples of amine equivalents of 430, 2200, 800, and 1500, respectively (id.). Where specific examples of substituents in a chemical formula are disclosed, such examples may generally be relied on for written description support for a claim requiring these substituents in the chemical formula absent some reasoning or evidence that the substituents may not be so freely substituted. See In re Driscoll, 562 F.2d 1245, 1249-50 (CCP A 1977) (reversing a written description rejection of a claimed compound whose substituent was limited to C1-C6 alkylsulfonyl, where the specification 6 Appeal2018-000947 Application 13/980,385 disclosed genus of compounds having any of 14 classes of substituents at R, one class being C1-C6 alkylsulfonyl); In re Johnson, 558 F.2d 1008, 1018- 19 (CCP A 1977) (reversing a written description rejection where claims excluded two species within a genus, where specification disclosed the genus and numerous species therewithin). Here, the Examiner provides neither reasoning nor evidence to question Appellants' possession of compounds of formula (1) limited to C3H6 at positions Rs and R6. Likewise, where specific species of compounds within the scope of a genus are disclosed, as well as a specific value of a property for each species, such examples may generally be relied on for written description support for a range for that property bounded by the specific values of the disclosed species. In re Blaser, 556 F.2d 534, 536 (CCP A 1977); Wertheim, 541 F .2d at 262. Here, the Examiner provides neither reasoning nor evidence to question Appellants' possession of the range of amine equivalents from 430 to 2,200. Accordingly, we will not sustain the Examiner's written description rejection of claims 1-21. Rejection 2: Â§ 103(a) Obviousness Appellants argue all the claims as a group. As 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2016) provides, we select claim 1 as representative and remaining claims 2-21 and 34--39 stand or fall with claim 1. After review of the opposing positions Appellants and the Examiner articulate and the Examiner's evidence of obviousness in light of the Appellants' countervailing evidence, we determine that a preponderance of the evidence supports the Examiner's conclusion regarding the obviousness 7 Appeal2018-000947 Application 13/980,385 of claim 1. Thus, Appellants have not identified reversible error in the Examiner's obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). The Examiner finds that Kotake discloses a thermosetting resin composition produced by reacting a maleimide with two N-substituted maleimide groups ( corresponding to component (B) of claims 1 and 2) with a diamine, wherein the diamine may be a mixture of diamines including phenylenediamine (corresponding to component (D) of claim 2) (Ans. 4). The Examiner also finds that Kotake discloses that the maleimide compound and the diamine compound should be reacted with an acidic diamine (corresponding to component (C) of claims 1 and 2) (id.). The Examiner acknowledges that Kotake fails to teach use of a siloxane diamine (id.). For this feature, the Examiner finds that Rosenfeld also discloses a thermosetting resin composition produced by reacting a maleimide with two N-substituted maleimide groups ( corresponding to component (B) of claims 1 and 2) with a diamine, wherein the diamine may be a mixture of a non-siloxane diamine and a siloxane diamine having the structure of formula (1) where n is 7-200, R1 and R2 are methyl, and Rs and R6 are C3H6 (corresponding to component (A) of claims 1 and 2) (Ans. 4--5). The Examiner also finds that Rosenfeld teaches that the resulting resin has good reactivity, long pot life and storage, excellent adherence, low modulus and temperature independent flexibility, and low water absorptivity (id. at 5). The Examiner concludes that it would have been obvious to have combined a siloxane diamine with the non-siloxane diamine of Kotake in order to improve the resin's reactivity, long pot life and storage, adherence, modulus 8 Appeal2018-000947 Application 13/980,385 and temperature independent flexibility, and water absorptivity, as taught by Rosenfeld (id.). Appellants argue that there would have been no apparent reason to combine teachings of Kotake and Rosenfeld because the purposes of Kotake and Rosenfeld are at odds (Appeal Br. 10-11). According to Appellants, Kotake discloses a preference for high reactivity between a maleimide and a diamine, whereas Rosenfeld uses a siloxane-containing diamine to lower the reactivity between a maleimide and a diamine (id.; see also Reply Br. 6-9). This argument is not persuasive of reversible error in the Examiner's obviousness rejection. As the Examiner responds (Ans. 13), Appellants' argument mischaracterizes Rosenfeld' s teachings. Specifically, while Rosenfeld desires a long pot life, Rosenfeld also desires high reactivity and short reaction times between the maleimide and the diamine (see Rosenfeld Abstract ("[t]he resin paste has a long pot life and a short cure time"), 1 :34--38 ("cures rapidly, typically in less than five minutes at temperatures up to 190Â° C" and "do not react at room temperature, resulting in a long pot life"), 4:40-55). However, it is important to note that these objects are not in conflict-Rosenfeld' s long pot life is at room temperature and maleimide/diamine reactivity is performed at elevated temperatures (id.). Similarly, we note Kotake's maleimide/diamine reactivity is performed at elevated temperatures (Kotake ,r,r 65, 114). Thus, not only is there no apparent conflict between Kotake and Rosenfeld's objectives, these references share a common preference for high maleimide/diamine reactivity at elevated temperatures. Appellants next argue that one skilled in the art would not have expected a decrease in the composition's coefficient of thermal expansion 9 Appeal2018-000947 Application 13/980,385 ("TEC") from a combination of Kotake and Rosenfeld (Appeal Br. 12). In addition, Appellants argue that the present invention provides unexpectedly superior results over Kotake (id. at 13). Appellants assert that Rosenfeld does not disclose an improvement in the TEC of the composition, but instead discloses that, due to its low modulus, the composition is flexible when heated or cooled (id. at 12). Appellants direct our attention to Le Bourhis, 6 which teaches that a material's TEC, a, and elastic modulus, E, are mathematically related by the formula: "Yc;PCv Ct Â·:::::. ------ ..., ---~----- 5 Â£ where the Griineisen constant, ya, varies (0.4