Ex Parte Sakata

Patent Trial and Appeal BoardDec 21, 2012

11385194 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEN SAKATA ____________ Appeal 2011-009408 Application 11/385,194 Technology Center 2800 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009408 Application 11/385,194 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3, 5, and 7-9. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellant’s claimed invention is directed to an insulating cover layer film 32 bonded to the surface of the wiring pattern 24 fabricated in such a manner that only a terminal section 26 is exposed and other parts of the wiring pattern 24 are covered by the insulating cover layer film 32 (Spec. 12; Fig. 1). Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A flexible printed wiring board comprising a wiring pattern that is made of conductive metal on the surface of an insulating base film and that is protected by bonding an insulating cover layer film to the surface of the wiring pattern is such a manner that the terminal section of the wiring pattern is exposed, wherein the cover layer film, which is cut along a line expanded by a range of 100µm to 3 mm from an outermost wiring of the wiring pattern and punched by using a punch and punch hole having a shape that is substantially the same as the shape of the cover layer film, is bonded to a wiring pattern area from which the terminal section is excluded; and wherein the cover layer film has a shape that is substantially the same as that of the wiring pattern area from which the terminal section is excluded, and the cover layer film is formed by a resin and comprises an insulating resin film substrate and film adhesive layer which is formed on a surface of the insulating resin film, Appeal 2011-009408 Application 11/385,194 3 the cover layer film is made of a resin the same as that forming the insulating base film, and said film adhesive layer which is formed on a surface of the insulating resin film is made of a thermosetting resin. REFERENCES and REJECTION The Examiner rejected claims 1, 3, 5, and 7-9 under 35 U.S.C. § 103(a) based upon the teachings of Ushio (U.S. Patent No. 5,288,950, issued Feb. 22, 1994), Oishi (U.S. Patent No. 6,972,966 B1, issued Dec. 6, 2005), and Nakamura (U.S. Patent Application Publication No. 2004/0111882 A1, published June 17, 2004) (Ans. 3-7). ISSUE The issue is whether the Examiner erred in finding that the combination of Ushio, Oishi, and Nakamura teaches the limitation of “cover layer film is formed by a resin” as recited in claim 1. PRINCIPLE OF LAW To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). ANALYSIS Appellant argues that Ushio teaches away from the use of a cover layer made of resin, and thus the Examiner could not modify Ushio with Oishi’s teaching of a cover layer made of resin (App. Br. 11-12). We agree with Appellant (App. Br. 12) that Ushio describes benefits of the cover layer Appeal 2011-009408 Application 11/385,194 4 (6) being formed from a liquid silicone rubber rather than a conventional epoxy resist film (i.e., resin film) and discourages the use of the epoxy resist film which causes cracking and warping (see Ushio, column 3, lines 35-49). See Fulton, 391 F.3d at 1201. Accordingly, we reverse the Examiner’s rejection of claims 1, 3, 5, and 7-9. CONCLUSION The Examiner erred in finding that the combination of Ushio, Oishi, and Nakamura teaches the limitation of “cover layer film is formed by a resin” as recited in claim 1. DECISION The Examiner’s decision rejecting claims 1, 3, 5, and 7-9 is reversed. REVERSED llw