Ex Parte Tanno et al

Patent Trial and Appeal Board

Apr 29, 2016

13274897 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/274,897 10/17/2011 Katsuhiko TANNO
22850 7590 05/03/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
388019US53DIV 8127
EXAMINER
CHEN, XIAOLIANG
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA TSUHIKO TANNO and YOUICHIROU KAWAMURA
Appeal2014-005376 1
Application 13/274,897
Technology Center 2800
Before CARLA M. KRIVAK, JASON V. MORGAN, and
JOHN A. EVANS, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1-11.3 We have jurisdiction under
1 Appellants waived the Oral Hearing scheduled April 14, 2016.
2 The Appeal Brief identifies Ibiden Co., LTD, as the real party in interest.
App. Br. 1.
3 Claims 1-11 stand Rejected. Final Act. 1. Appellants do not indicate
which claims are appealed, but specifically argue Claim 1, the only
independent claim, and Claims 2 and 5. See App. Br. 4, 7. We will assume
that all claims are appealed.
Appeal2014-005376
Application 13/274,897
35 U.S.C. § 6(b).
We AFFIRM.4
STATEMENT OF THE CASE
The claims relate to a method of manufacturing a printed wiring board
having solder bumps. See Abstract.
Claim 1 is independent. An understanding of the invention can be
derived from a reading of exemplary Claim 1, which is reproduced below
with some formatting added:
1. A multilayer printed wiring board comprising:
a substrate having a first side and a second side opposing
the first side;
a laminated structure including alternately laminated
interlayer resin insulating layers and conductor layers, the
laminated structure being provided on at least one of the first or
second side of the substrate;
a solder-resist layer provided on an outermost layer of the
laminated structure, a solder resist layer having apertures
exposing respective portions of the conductor layer of the
laminated structure, said apertures including at least one first
aperture having a first size and at least one second aperture
having a second size, the first size being smaller than the
4 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 4, 2013, "App. Br."), the Reply
Brief (filed February 28, 2014, Reply Br."), the Examiner's Answer (mailed
December 30, 2013, "Ans."), the Final Action (mailed April 4, 2013, "Final
Act."), and the Specification (filed October 17, 2011, "Spec.") for their
respective details.
2
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Application 13/274,897
second size; and
a solder bump provided in each of said at least one first
aperture and said at least one second aperture, the solder bumps
having substantially equal volumes and substantially equal
heights such that a difference in height of no greater than 10 µm
occurs between a solder bump provided in a first aperture and a
solder bump provided in a second aperture.
References and Rejections
The Examiner relies upon the prior art as follows:
Brunnbauer
Kawamura et al. 5
US 2007/0164418 Al
US 2008/0078810 Al
The claims stand rejected as follows:
July 19, 2007
Apr. 3, 2008
1. Claims 9-11 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. 6 Final Act. 2-3.
2. Claims 1---6 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing the written description requirement. Final Act. 3.
3. Claims 1, 2, and 4--6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kawamura. Final Act. 4--7.
5 Assigned to the Assignee of the present application.
6 In addition, Claim 9 stands objected to as being informal. Final Act. 4.
We decline to reach the merits thereof because the Board lacks jurisdiction
over objections. See 37 C.F.R. § 1.181 (2013); MPEP § 608.04(c); and Jn re
Mindick, 371F.2d892, 894 (CCPA 1967).
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Application 13/274,897
4. Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kawamura and Brunnbauer. Final Act. 7.
5. Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as obvious over
Kawamura. Final Act. 8-1.
CLAIMS 1-11: WRITTEN DESCRIPTION/ENABLEMENT
We summarily sustain the enablement rejection of Claims 1-11
because Appellants have failed to present arguments in traversal. Filing a
Board appeal does not, unto itself, entitle an appellant to de nova review of
all aspects of a rejection. If an appellant fails to present arguments on a
particular issue- or, more broadly, on a particular rejection-the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection. In re Frye, 2010 WL 889747 at 4 (BPAI) (precedential)
(citing Hyatt v. Dudas, 551F.3d1307, 1313-14 (Fed. Cir. 2008) (the Board
may treat arguments appellant failed to make for a given ground of rejection
as waived).
CLAIMS 1, 2, AND 4--6: ANTICIPATION BY KAWAMURA
CLAIMS 3 AND 7-11: OBVIOUSNESS OVER KAWAMURA AND BRUNNBAUER
Based upon our review of the administrative record, the pivotal issue
before us is whether Kawamura qualifies as prior art under 35 U.S.C. § 102.
Integral to this analysis is a determination of the critical reference date of
Kawamura. Sections 102(c), (d), (f), and (g) of the Patent Act are
inapplicable to the Kawamura reference. We therefore examine Kawamura
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Application 13/274,897
in the context of§§ 102(a), (b), and (e).
The present Application (12/274,897) is a division of 12/120,076,
filed May 13, 2008, which is a continuation of PCT/JP07 /051354, filed
January 29, 2007, and claims the priority of Japanese Application 2006-
019065, filed January 27, 2006. See Application Data Sheet.
Kawamura was published April 3, 2008, which occurs after the
priority date of the present Application. Kawamura does not claim priority
to a non-provisional application under 35 U.S.C. § 120, or to a provisional
application under 35 U.S.C. § 119. Id. Therefore, Kawamura does not
qualify as prior art under§§ 102(a), (b), or (c).7 Nor does Kawamura qualify
as prior art under§ 103(a).
Appellants fail to question the qualification of the references. Thus,
this argument is technically waived. 37 C.F.R. § 41.37(iv) (2013) ("any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board"); see also Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) ("Any bases for asserting error, whether
factual or legal, that are not raised in the principal brief are waived.").
However, this is an issue that the Board raises sua sponte. See In re
Konetski, Appeal 2009-007124 (BPAI, Dec. 15, 2010); In re Sonkin, 2009-
006045, slip op., available at https://e-foia.uspto.gov/Foia/RetrievePdf?
system= BP AI&f1Nm=fd2009006045-04-28-2010-1 (BP AI Apr. 28, 2010).
7 Should further prosecution occur in this case, we suggest the Examiner and
Appellants also review the qualifications of Brunnbauer as prior art.
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Application 13/274,897
Failing to consider such a blatant error on the part of the Examiner in relying
on an unqualified reference would jeopardize any deference the Board
would receive upon appellate review because such an affirmance would lack
the requisite substantial evidence to support our findings. 8 We therefore,
will not sustain the rejection of Claims 1-11under35 U.S.C. §§ 102 or 103.
DECISION
The rejection of Claims 1-11under35 U.S.C. § 112 is affirmed.
The rejections of Claims 1, 2, and 4---6 under 35 U.S.C. § 102, and of
Claims 3 and 7-11 under§ 103, are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
8 See In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
Additionally, the inevitable discovery of this error in a later proceeding
would impose further costs on the USPTO and the public. See In re Sonkin,
2009-006045, slip. op. at 10 (BPAI Apr. 28, 2010) (Jeffery, APJ,
concurring).
6