Ex Parte Low

Patent Trial and Appeal Board

Aug 31, 2017

12758555 (P.T.A.B. Aug. 31, 2017)

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.
12/758,555 04/12/2010 Chau-Chin Low STL16110 5190
136310 7590 09/05/2017
Faegre Baker Daniels LLP
PATENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
EXAMINER
CARLEY, JEFFREY T.
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAU-CHIN LOW
Appeal 2016-003557
Application 12/758,555
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chau-Chin Low (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 9—15 and 21—25. See Appeal
Br. 12. Claims 16—20 have been canceled, and claims 1—8 have been
withdrawn. See id. at 13—15, Claims App. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Seagate
Technology. Appeal Br. 2.
Appeal 2016-003557
Application 12/758,555
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates generally to “a flexible printed
circuit cable with a multi-layer interconnection.” Spec., p. 1,11. 2—3.
Claim 9, reproduced below, is the sole independent claim appealed and is
representative of the subject matter on appeal.
9. A method comprising:
providing a multi-sided flex circuit with a first
conductive layer on a first side of a flexible insulative layer and
a second conductive layer on an opposing second side of the
insulative layer;
forming a partial aperture in the flex circuit by removing
a portion of the insulative and first conductive layers to expose
a portion of the second conductive layer that spans said
aperture;
placing a solder material in the partial aperture; and
electrically interconnecting the first and second
conductive layers by reflowing said solder material to fill less
than an entirety of the partial aperture.
The Examiner relied on the following evidence in rejecting the claims
EVIDENCE
on appeal:
Jiang
McCormack
US 6,163,957
US 6,326,555 B1
US 6,396,141 B2
Dec. 26, 2000
Dec. 4, 2001
May 28, 2002Schueller
2
Appeal 2016-003557
Application 12/758,555
REJECTIONS
The following rejections are before us for review:
I. Claims 9, 12—15, and 22—25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schueller and McCormack.
Non-Final Act. 2^4.
II. Claims 10, 11, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schueller, McCormack, and Jiang.
Id. at 4—6.
ANALYSIS
Independent claim 9 recites, in relevant part, a method including a
step of “electrically interconnecting the first and second conductive layers
by reflowing said solder material to fill less than an entirety of the partial
aperture.” Appeal Br. 14, Claims. App. Appellant argues that the claimed
subject matter would not have been obvious because there is no reason to
modify the method of Schueller based on the teachings of McCormack to
include reflowing the solder to fill less than an entirety2 of the aperture. See
id. at 6—10. We agree that a sustainable case of obviousness has not been
established.
In rejecting independent claim 9, the Examiner found that Schueller
discloses a method, substantially as claimed, including “electrically
interconnecting the first conductive layer and second conductive layers by
2 Given that an ordinary meaning of the term “entirety” is “sum total,
whole” (Merriam-Webster’s Collegiate Dictionary (11th ed. 2003)), we
understand “less than an entirety of the partial aperture,” as recited in
claim 9, to mean any amount less than the whole of the partial aperture
(i.e., less than 100% of the partial aperture).
3
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Application 12/758,555
reflowing said solder material (figs. 1 and 3; col. 4, lines 1-7).” Non-Final
Act. 2. The Examiner acknowledged that “Schueller . . . does not explicitly
disclose that the reflowing of the solder material fills less than an entirety of
the partial aperture.” Id. However, the Examiner found that “McCormack
teaches that it is well known to reflow solder (20) to fill less than an
entirety (22) of a partial aperture (18) (figs. 3-5; col. 8, lines 15-33).” Id.
The Examiner concluded that, given the teachings of the prior art, “[i]t
would have been obvious to one of ordinary skill in the art to have modified
the current invention of Schueller to incorporate the partial aperture filling
during reflow of McCormack.” Id. at 3. The Examiner explained:
Both references are considered to be analogous prior art as they
are in the same field of endeavor (i.e. manufacture of layered
circuit substrates) and are for solving the same problem (e.g.
increasing component pitch density without deleterious thermal
mismatch, delamination[,] or misalignment during manufacture);
as such[,] the analogous references would have been obvious to
combine.
Id. According to the Examiner, “McCormack simply serves to demonstrate
that a partial filling of the aperture would be obvious to try for one of
ordinary skill in the art based upon the intended application,” and “the
known advantage of decreasing the possibility of costly solder overflow
would have been obvious at the time the invention was made.” Id.
Here, the Examiner erred by not articulating sufficient reasoning
supported by rational underpinnings why a person having ordinary skill in
the art would have been prompted to modify the method of Schueller to
include reflowing solder material to fill less than the entirety of Schueller’s
partial aperture. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(stating that “[r]ejections on obviousness grounds cannot be sustained by
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Application 12/758,555
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
Schueller discloses flexible circuit 18 having first conductive layer 22
and second conductive layer 26 on opposite sides of dielectric layer 20. See
Schueller, col. 3,11. 27—30. Schueller also discloses forming passage 30
through first conductive layer 22 (i.e., open end 32 of passage 30) and
dielectric layer 20 to second conductive layer 26, which covers closed
end 34 of passage 30. See id., 11. 30-33, 44-48. According to Schueller,
“solder ball 48 seats in passage 30 in such a way as to engage both the first
conductive layer 22 at open end 32, and the second conductive layer 26 at
closed end 34.” Id., col. 4,11. 2-4. In other words, Schueller discloses
forming a partial aperture (i.e., passage 30) and electrically interconnecting
the conductive layers (i.e., layers 22, 26) by placing solder material (i.e.,
solder ball 48) in the aperture.3
McCormack discloses circuitized layer 10 in which “apertures 18 are
formed in the bonding sheet 14 and the release layer 16 above the
conductive regions 12(a), 12(6), 12(c).” McCormack, col. 6,11. 62—64.
McCormack also discloses that “[a]fter depositing the conductive
3 We note that Schueller further discloses that “second solder ball 50, is
reflow attached directly to a pad region of the first conductive layer 22 and
does not make electrical contact with the second conductive layer 26.”
Schueller, col. 4,11. 7—10. In other words, Schueller discloses reflowing
solder material (i.e., solder ball 50) to connect the solder material to a first
conductive layer (i.e., layer 24), but this reflowing step does not connect the
solder material with the second conductive layer (i.e., layer 26). Thus, it
appears that Schueller does not electrically interconnect the first and second
conductive layers hy reflowing.
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Application 12/758,555
composition 20 in the apertures 18, the conductive composition 20 reflows
to form plural conductive bumps 22.” Id., col. 8,11. 24—26; see id.,
Figs. 4, 5. According to McCormack, “[s]ince the formed conductive
bump[s] 22 extend[] above the upper surface of the bonding sheet 14, good
contact with an overlying conductive region on a circuitized layer laminated
to the upper surface of the bonding sheet 14 is virtually assured.” Id., col. 9,
11. 7—11. In other words, McCormack discloses reflowing solder (i.e.,
conductive composition 20) to fill less than the entirety of a partial aperture
(i.e., aperture 18). See id., Fig. 5 (depicting conductive bumps 22 filling less
than the entirety of each aperture 18). However, of particular relevance, we
find no disclosure in McCormack that conductive bumps 22 electrically
interconnect first and second conductive layers. Instead, conductive
bumps 22 appear to be connected only to a first conductive layer (i.e.,
conductive regions 12(a)—(b)). See id., Fig. 5.
Regarding the Examiner’s proposed combination of teachings from
Schueller and McCormack, the Examiner reasoned that the references are
analogous art, and, as such, it would been obvious to combine them. See
Non-Final Act. 3 (explaining that the references are in the same field and
address the problem of “component pitch density without deleterious
thermal mismatch, delamination[,] or misalignment during manufacture”).
However, although it is required that references be analogous in order to be
combined in an obviousness rejection (see In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004)), this alone is not sufficient to establish a reason to combine
reference teachings. We agree with Appellant that the Examiner has not
provided adequate factual evidence or persuasive technical reasoning to
explain how or why “modifying Schueller with McCormack, as proposed, is
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Application 12/758,555
related to or actually increases ‘component pitch density without deleterious
thermal mismatch, delamination[,] or misalignment during manufacture.’”
Appeal Br. 7 (quoting Non-Final Act. 3).
Moreover, the Examiner’s apparent reliance on McCormack as
providing evidence that the proposed modification Schueller was “obvious
to try” (Non-Final Act. 3) is unavailing to support a conclusion of
obviousness. The “obvious to try” rationale of KSR is based on choosing
from “a finite number of identified, predictable solutions,” “[w]hen there is a
design need or market pressure to solve a problem.” KSR, 550 U.S. at 421.
Here, the Examiner does not offer any evidence that there are a finite
number of identified, predictable solutions to solve a problem evidenced by
design need or market pressure. Namely, we agree with Appellant that the
Examiner has not established a “logical connection between the proposed
modification and the alleged advantage” of decreasing the possibility of
costly solder overflow. Appeal Br. 7, 8. In other words, the Examiner has
not set forth sufficient evidence or reasoning to explain how the proposed
modification to the method of Schueller (reflowing the solder material to fill
less than the entirety of the partial aperture) would adequately function to
electrically interconnect the first and second conductive layers, yet still
“decreas[e] the possibility of costly solder overflow.” Non-Final Act. 3.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Absent improper hindsight
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Application 12/758,555
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify the method of Schueller, which discloses electrically
interconnecting two conductive layers by placing solder material in a partial
aperture, to include a step of reflowing the solder material to fill less than
the entirety of the partial aperture, and an adequate reason for such
modification is not otherwise evident from the record.
We note that the Examiner relied on Jiang for teaching additional
features of dependent claims 10, 11, and 21, but not in any way that would
cure the aforementioned deficiency with respect to the proposed
combination of Schueller and McCormack as applied in the rejection of
independent claim 9. See Non-Final Act. 4—6.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness for the
claimed subject matter. On this basis, we do not sustain the rejection of
independent claim 9. Because each of dependent claims 10-15 and 21—25
depends directly or indirectly from independent claim 9, we likewise do not
sustain the rejections of the dependent claims.
DECISION
We REVERSE the Examiner’s decision rejecting claims 9, 12—15,
and 22—25 under 35 U.S.C. § 103(a) as being unpatentable over Schueller
and McCormack.
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Application 12/758,555
We REVERSE the Examiner’s decision rejecting claims 10, 11, and
21 under 35 U.S.C. § 103(a) as being unpatentable over Schueller,
McCormack, and Jiang.
REVERSED
9