Ex Parte Nakayoshi et al

Patent Trial and Appeal BoardDec 13, 2012

10598967 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/598,967 07/11/2007 Kazumi Nakayoshi DC10031PCT (71,051-070) 2691 27305 7590 12/14/2012 HOWARD & HOWARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 EXAMINER LAM, CATHY FONG FONG ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 12/14/2012 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 KAZUMI NAKAYOSHI, KATSUTOSHI MINE, and AKIHIKO KOBAYASHI __________ Appeal 2011-011676 Application 10/598,967 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011676 Application 10/598,967 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-5, 7, and 9-13. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to a metal base circuit substrate having a transparent cross-linked silicone on a metal substrate and methods for producing such a substrate (Spec. paras. [0001], [0005]). Claims 1 and 5 are illustrative: 1. A metal base circuit substrate for an optical device comprising a metal base substrate made from aluminum or aluminum alloy that supports an electric circuit via an insulation layer, wherein said insulation layer is formed from a transparent cross-linked silicone body having a light transmission of not less than 80%, and said electric circuit is formed directly on said insulation layer. 5. A method of manufacturing a metal base circuit substrate for an optical device comprising the steps of: a) applying a cross-linkable silicone onto the surface of a metal base substrate made from aluminum or aluminum alloy; b) cross-linking said silicone, thereby forming an insulation layer from a transparent cross-linked silicone body having a light transmission of not less than 80%; and then c) forming an electric circuit directly on said insulation layer either by (i) forming a conductive layer by electrolytic or non-electrolytic plating with subsequent etching, or (ii) by printing with a conductive ink. Appeal 2011-011676 Application 10/598,967 3 Appellants appeal the following rejections: 1. Claims 1, 3-5, 7, 9-12, and 13 are rejected under 35 U.S.C. § 102(b) as being unpatentable over the combined teachings of Wolter (US 5,116,472 issued May 26, 1992). 2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings of Wolter in view of Hamakawa (US 4,612,409 issued Sept. 16, 1986). With regard to rejection (1), Appellants argue the subject matter common to independent claims 1 and 5 only (App. Br. 12-16). We select claim 1 as representative. Claim 2 of rejection (2) will stand or fall with our assessment of claim 1. ISSUE Did the Examiner reversibly err in finding that Wolter’s disclosures of a colorless cross-linked silicon resin atop an aluminum substrate made using the same material and method inherently possesses the claimed light transmission of not less than 80% and thereby anticipates the claim? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES The Examiner finds that Wolter teaches a cross-linked silicone coating that is applied to an aluminum substrate (Ans. 3-4). The Examiner finds that Wolter teaches and exemplifies “colorless” or clear silicone resins applied to the aluminum substrate (id. at 4, 6). The Examiner finds that Wolter teaches forming the silicone layer using a condensation or ultraviolet Appeal 2011-011676 Application 10/598,967 4 (UV) radiation (id. at 4). The Examiner finds that since the same materials and same method of making are taught by Wolter and Appellants, the silicone layer formed by Wolter on the aluminum substrate would inherently possess the same properties as claimed (i.e., the light transmission properties and dielectric constant) (id.). Appellants argue that the Examiner has not established that each and every element of the claimed invention is either expressly or inherently disclosed by Wolter (App. Br. 12). Appellants argue that the Examiner has failed to provide any reasoning whatsoever to support a position that the instantly claimed transparency and light transmission are necessarily present in Wolter (id. at 13). Appellants contend that the Examiner’s finding that the same materials processed by the same method would inherently have the same property is based on the incorrect assumption that all silicones possess the same physical properties (id. at 14). Appellants contend that Wolter teaches that different physical properties (i.e., color) result for silicones processed in different ways and that Wolter only discloses one type of silicone chemistry (i.e., condensation-curable silicones) (id.). Appellants argue that the Examiner’s finding that “colorless” means transparent is incorrect because colorless means “white” or without color, not transparent with at least 80% light transmission (id. at 14-15; Reply Br. 4). Contrary to Appellants’ arguments, the Examiner provides reasoning based upon the similarity of the materials and the method of forming the materials (i.e., condensation reactions) as providing a basis for finding that Wolter’s material possesses the transparency and light transmission properties. As conceded, Appellants may use a condensation process to form their silicone layer (Reply Br. 4). We note that the claim does not Appeal 2011-011676 Application 10/598,967 5 require any particular cross-linked silicone. The only claimed requirements that limit the cross-linked silicone are that the silicone is transparent and has at least 80% light transmission. Based on the Examiner’s finding that Wolter exemplifies forming on an aluminum substrate a colorless resin by applying a clear1 (i.e., “transparent”) silicone coating solution formed by a condensation reaction, we find that the Examiner has dispensed with her burden of establishing a prima facie case of anticipation of the claimed invention. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The fact that the resin applied is clear in Wolter’s example 1 and the resulting silicone layer is colorless reasonably includes a transparent layer (Ans. 6). That the same materials (i.e., silicone) are used and the same method is used to form the resin, it is reasonable to find that a silicone layer with at least 80% light transmission would result. Therefore, the burden rests with Appellants to show that Wolter’s silicone resin layer does not possess the same properties. Best, 562 F.2d at 1255. Appellants’ mere attorney argument is insufficient to satisfy this burden. While, Appellants contend that Wolter’s “colorless” disclosure means that the silicon layer formed is “white”, Appellants concede that colorless does not necessarily mean that the film is white or opaque (Reply Br. 4). Appellants do not specifically address the Examiner’s findings that Wolter’s material used to make the silicone coating and method are identical to those claimed and disclosed by Appellants. Rather, Appellants’ arguments address the differences that may result if different silicones are used or what may be the meaning of colorless. Appellants have not satisfied 1 WEBSTER’S NEW WORLD DICTIONARY OF THE AMERICAN LANGUAGE COLLEGE EDITION 271 (1961). Appeal 2011-011676 Application 10/598,967 6 their burden of showing that Wolter’s silicone film fails to satisfy the claimed properties of the film. On this record, the preponderance of the evidence favors the Examiner’s finding of anticipation and conclusion of obviousness. We affirm the Examiner’s § 102(b) and § 103(a) rejections. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED bar