Ex Parte Schulz-Harder et al

Patent Trial and Appeal BoardMar 3, 2015

10560525 (P.T.A.B. Mar. 3, 2015)

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. 10/560,525 03/14/2006 Jurgen Schulz-Harder A-9806 6395 20741 7590 03/03/2015 Welsh Flaxman & Gitler 2000 Duke Street , Suite 100 Alexandria, VA 22314 EXAMINER CAZAN, LIVIUS RADU ART UNIT PAPER NUMBER 3729 MAIL DATE DELIVERY MODE 03/03/2015 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 JURGEN SCHULZ-HARDER, KURT MITTEREGGER, KARL EXEL, and JURGEN WEISSER ____________ Appeal 2013-001190 Application 10/560,525 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, TIMOTHY J. GOODSON, and JAMES J. MAYBERRY, Administrative Patent Judges. GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants Jurgen Schulz-Harder et al. appeal under 35 U.S.C. § 134(a) from the rejection of claims 32, 34, 36–39, 41–44, and 51. App. Br. 3. Claims 1–29, 31, 45–48, and 50 are canceled, and claims 30, 33, 35, 40, and 49 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 51, reproduced below, illustrates the subject matter on appeal: Appeal 2013-001190 Application 10/560,525 2 51. A method for manufacturing a metal-ceramic substrate the method comprising the steps of: a. applying a metallization to at least one surface side of a ceramic layer by means of a direct copper bonding process, b. structuring the metallization into a plurality of individual metal areas such that the metal areas on the at least one surface side of the ceramic layer are at a distance from another, c. progressively heating only the ceramic layer in a thermal treatment process with a laser beam in the areas in between all the plurality of individual metal areas and progressively shock-cooling partially and linearly the ceramic layer in between all the plurality of individual metal areas to produce break-off lines by controlled fracture or weakening between a top side and a bottom side of the material in the ceramic layer, wherein the heating of the ceramic layer during the thermal treatment process takes place without vaporization or burning off the ceramic material in a focused treatment area that moves in relation to the ceramic layer, wherein the ceramic layer has a thickness between 0.1 and 3 mm, and wherein the plurality of individual metal areas have a thickness between 0.02 and 0.6 mm and are at a distance of 0.1–3 mm from each other and wherein the plurality of individual metal areas are at a distance of 0.05–1.5 mm from a respective break-off line in between the plurality of individual metal areas and wherein the ceramic layer is selected from the group consisting of, Al2O3, AlN, Si3N4, SiC, BeO, TiO2, ZrO2, and Al2O3 with ZrO2 content. PRIOR ART The Examiner relies on the following evidence in rejecting the claims that are the subject of this appeal: Kondratenko Shulz-Harder ’221 Shulz-Harder ’592 US 5,609,284 US 6,207,221 B1 US 6,638,592 B1 Mar. 11, 1997 Mar. 27, 2001 Oct. 20, 2003 Appeal 2013-001190 Application 10/560,525 3 Carter, C. and M. Norton, CERAMIC MATERIALS SCIENCE & ENGINEERING, pp. 3–14 (2007). GROUNDS OF REJECTION Claims 32, 34, 36–39, 42–44, and 51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kondratenko, Shulz-Harder ’221, and Shulz-Harder ’592. Ans. 4. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kondratenko, Shulz-Harder ’221, Shulz-Harder ’592, and Applicant’s admitted prior art. Id. at 8. OPINION Appellants argue claims 32, 34, 36–39, 42–44, and 51 as a group. Appeal Br. 8–14; Reply Br. 2–5. We select claim 51 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2012). The remaining claims in this group stand or fall therewith. The Examiner finds that Kondratenko teaches a method of progressively heating and shock-cooling a ceramic layer to produce break- off lines. Ans. 4–5 (citing Kondratenko Abstract, col. 3, ll. 41–53, col. 5, ll. 49–67, col. 6, ll. 5–18, col. 11, ll. 39–42). The Examiner further finds that Schulz-Harder ’221 discloses a metal-ceramic substrate having an AlN ceramic layer with a thickness of 0.2 to 2 mm and individual metal areas, applied by direct copper bonding, with thicknesses of 0.1 to 6 mm. Id. at 6 (citing Schulz-Harder ’221 col. 2, ll. 1–6 and 21–29). The Examiner also finds that Schulz-Harder ’592 discloses producing individual metal-ceramic substrates by breaking a larger substrate along scored lines, in which the metal areas are at a distance of 0.05 to 1 mm from a break line and 0.1 to 2 Appeal 2013-001190 Application 10/560,525 4 mm from each other. Id. at 6–7 (citing Schulz-Harder ’592, Fig. 3, col. 4, ll. 25–26). The Examiner determines that it would have been obvious to utilize Kondratenko’s method to separate the substrates of Schulz-Harder ’221 and ’592 into individual substrates “for the advantages the technique of Kondratenko provides over conventional methods, such as, for example, increased cutting speed.” Id. at 7 (citing Kondratenko col. 5, ll. 20–23). The Examiner also takes the view that the claimed dimensions are “merely exemplary” insofar as the Specification “does not reveal any criticality to the claimed metal and substrate thickness, or the spacing between metal areas. Id. Appellants argue that Kondratenko’s process is for cutting glass, which is unlike the claimed ceramic material, the crystalline structures of which make it difficult to reliably produce break-off lines. Appeal Br. 9, Reply Br. 3. However, as the Examiner correctly notes, Kondratenko discloses that “[i]n addition to cutting plate and sheet glass, the disclosed method was employed for cutting such non-metallic materials as . . . ceramics.” Ans. 10 (quoting Kondratenko col. 11, ll. 39–42). The Examiner also adduces evidence that glass is a type of ceramic. Id. at 9 (citing Carter & Norton 4). Appellants maintain that “glass and ceramics are very different,” but Appellants do not cite any evidence supporting this argument. See Reply Br. 4. Nor do Appellants address Kondratenko’s teaching that its method was employed for ceramics. Appellants contest the Examiner’s statement that the claimed dimensions are not critical. See Appeal Br. 10; Reply Br. 4. In particular, Appellants argue that the thicknesses and distances are necessary to avoid overlap between the weakening resulting from the metallization process and Appeal 2013-001190 Application 10/560,525 5 the weakening due to forming the break-off lines. Appeal Br. 10–11, 13–14; Reply Br. 2–4. In support of this argument, Appellants quote from a declaration one of the inventors submitted during prosecution. Appeal Br. 13–14. The Examiner responds that nothing in the Specification “explicitly states the thickness of the metal areas is in any way related to and should be chosen as a function of the other dimensions, and none of the criticality implied by Appellants in their arguments is even remotely suggested by the disclosure.” Ans. 11–12. While we agree with the Examiner that Appellants have not pointed to support in the Specification for their argument that the claimed dimensions are necessary to avoid overlapping of stresses or weakening, 1 we note that arguments and evidence responsive to an obviousness rejection need not be within a specification in order to be considered. See In re Chu, 66 F.3d 292, 298 (Fed. Cir. 1995). The more significant problem with Appellants’ argument is that, as summarized above, the Examiner found that the claimed dimensions are disclosed in the cited Schulz-Harder references. Ans. 6. Appellants do not contest these findings. Because it is undisputed that the claimed dimensions were taught by the cited references, it is unclear why it matters whether they should or should not be considered critical. The Examiner also articulated a reason why it would have been obvious to combine the Schulz-Harder references with Kondratenko. Id. at 7. Appellants do not apprise us of any error in the Examiner’s stated reason for the combination. Appellants argue that obviousness is not applicable “[w]here problems confronting the applicant are not applicable to the cited art.” Appeal Br. 13 1 Indeed, our review of the Specification does not reveal any discussion of the problem of interference or overlapping of stresses. Appeal 2013-001190 Application 10/560,525 6 (citing In re Klein, 647 F.3d 1343 (Fed. Cir. 2011)). 2 Klein sets forth the tests for determining whether a reference qualifies as analogous art for an obviousness determination. Klein, 647 F.3d at 1348. The Examiner determines that the Schulz-Harder references qualify as analogous art “because they are directed to substrates almost identical to that claimed” and that Kondratenko is analogous art “because it is directed to the problem of splitting ceramic substrates.” Ans. 14–15. Substantial evidence supports the Examiner’s findings, which Appellants do not challenge in their Reply Brief. For the foregoing reasons, we sustain the Examiner’s rejection of claims 32, 34, 36–39, 42–44, and 51. Appellants do not present any separate argument directed to claim 41, apart from its dependency from claim 51. Appeal Br. 15. Thus, we also sustain the Examiner’s rejection of claim 41. DECISION We affirm the rejections of claims 32, 34, 36–39, 41–44, and 51. 2 This argument is somewhat unclear, but we understand from the citation to Klein that Appellants intend to argue that the references do not qualify as analogous art. To the extent that Appellants intend to argue against the proposed combination on the basis the cited references do not teach using the claimed method in order to avoid the problem of interference or overlapping of stresses, the argument is unpersuasive. “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007). Thus, it is not necessary for the Examiner to show that Kondratenko teaches progressively heating and shock-cooling a ceramic layer for the same reason that Appellants utilized that technique. Appeal 2013-001190 Application 10/560,525 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mp