Ex Parte Vivari

Patent Trial and Appeal Board

Aug 11, 2017

13207214 (P.T.A.B. Aug. 11, 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.
13/207,214 08/10/2011 John A. Vivari JR. 098974.021907 5490
75534 7590 08/15/2017
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EXAMINER
CIRA CENTER, 12th FLOOR KATZ, VERA
2929 ARCH STREET
PHILADELPHIA, PA 19104 ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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
following e-mail address(es):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. VIVARI, JR.
Appeal 2016-002207
Application 13/207,214
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 2—10 and 23—29. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
1 We cite to the Specification (“Spec.”) filed August 10, 2011, as amended
April 11, 2013; Final Office Action (“Final Act.”) dated January 13, 2015;
Appellant’s Appeal Brief (“Appeal Br.”) dated July 13, 2015; Examiner’s
Answer (“Ans.”) dated October 21, 2015; and Appellants’ Reply Brief
(“Reply Br.”) dated December 14, 2015.
2 Appellant identifies Nordson Corporation as the real party in interest.
Appeal Br. 3.
Appeal 2016-002207
Application 13/207,214
BACKGROUND
The subject matter involved in this appeal relates to solder fluxes and
solder materials having a predetermined temperature-viscosity relationship.
Spec. 12. Solder paste contains particles of a solder alloy and a flux. Id.
13. The flux is formulated to treat a surface to be soldered and thereby
improve the soldering operation. Id. In use, solder paste is deposited,
heated to a flux activation temperature, and then further heated to a melt
temperature of the solder alloy. Id. Appellant explains that the flowable
nature of solder paste limits post-deposition operations because, during a
period after the paste is deposited and before soldering, the paste may be
inadvertently transferred to other surfaces or be depleted or removed entirely
due to contact with foreign objects. Id. 1 6. Appellant describes a solder
material which is formulated such that the flux is non-flowable and inactive
at temperatures below a predetermined maximum storage temperature above
27 °C, flowable and inactive at temperatures within a deposition temperature
range, and flowable and active at temperatures at or above an activation
temperature. Id. ^ 9.
Claim 10—the sole independent claim on appeal—is reproduced from
the Claims Appendix of the Appeal Brief as follows, with emphasis added to
highlight key recitations in dispute:
10. A solder material comprising:
a solder/flux mixture of solder particles dispersed in a
flux,
wherein the solder/flux mixture is a solid at room
temperature;
the flux comprises a first constituent including a
polyglycol and one or more secondary constituents selected
from solvents, thickeners, and metal oxide reducing agents;
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Appeal 2016-002207
Application 13/207,214
the flux has a temperature profile in which the flux is in a
non-flowable inactive state at temperatures at and below a
maximum storage temperature, a liquid active state at an
activation temperature, and a flowable inactive state in a
deposition temperature range above the maximum storage
temperature and below the activation temperature, the
maximum storage temperature being above about 27°C, and
the solder particles are in a liquid state at or above the
activation temperature.
REJECTIONS
The Examiner maintains the following grounds of rejection:3
I. Claims 2—6, 8, 10, 23, and 26—29 stand rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
recited inU.S. Application Serial No. 13/015,167 (now US 9,073,153,
issued July 7, 2015).
II. Claims 2—10, 23, and 24 stand rejected under 35 U.S.C. § 102(b) or
§ 103(a) as unpatentable over Zado,4 as evidenced by Ohki.5
III. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zado and Noguchi.6
IV. Claims 26, 27, and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zado and Appellant’s admitted prior art contained in
paragraph 61 of the Specification.
3 Final Act. 3—9; Ans. 3—7. Additional grounds of rejection applied to
claims 26, 27, and 29 under 35 U.S.C. § 103 set forth in the Final Office
Action are withdrawn. See Ans. 7.
4 US 4,495,007, issued January 22, 1985 (“Zado”).
5 US 2005/0187212 Al, published August 25, 2005 (“Ohki”).
6 US 4,429,457, issued February 7, 1984 (“Noguchi”).
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Appeal 2016-002207
Application 13/207,214
DISCUSSION
Rejection I
Appellant acquiesces to the Examiner’s double patenting rejection.
Appeal Br. 4. Accordingly, we summarily sustain Rejection I.
Rejection II
As is relevant to Appellant’s main argument on appeal, the Examiner
finds that Zado describes a solder material comprising a flux which includes
polyethylene glycol7 and inherently is solid at room temperature. Final Act.
4—5 (citing Zado 8:3, 34—35). The Examiner also finds that Zado’s flux
inherently exhibits the claimed temperature-related properties based on a
similarity of Zado’s flux components with those described in Appellant’s
Specification. Id. at 4—6.
Appellant argues that the only composition in Zado that includes
polyethylene glycol is expressly identified as being capable of application to
a surface by dispensing with a syringe, and that the degree of flowability
involved in such dispensing negates the Examiner’s inherency findings.
Appeal Br. 6; Reply Br. 2—3. We agree.
Claim 10 recites, inter alia, that the flux component in the claimed
solder/flux mixture is non-flowable at temperatures below a maximum
storage temperature greater than 27 °C. Appellant’s Specification defines
non-flowable as a condition in which the flux cannot be dispensed, pumped,
or applied to a surface. Spec. 135 (identifying fluxes as non-flowable
“because the viscosities of the fluxes are sufficiently high to prevent the
fluxes from being dispensed”); id. 121 (“At these viscosities, the flux is
7 The Examiner relies on Ohki solely as evidence that polyethylene glycol is
a polyglycol. Final Act. 4—5.
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Appeal 2016-002207
Application 13/207,214
non-flowable. That is, the flux is not conducive to being dispensed,
pumped, or applied to a surface while the temperature of the flux is at a
temperature at or below the maximum storage temperature.”). Conversely,
Appellant defines a flux as flowable (e.g. at temperatures above a maximum
storage temperature) as exhibiting a viscosity that is “low enough to allow
the flux to be dispensed.” Id. at 122.
Zado’s only reference to polyethylene glycol appears in column 8.
There, Zado describes alternative solid or paste fluxes. Zado 8:3. Zado
states that, “where a paste is desired,” the flux composition includes a
solvent, such as an alcohol, “which gives the proper consistency.” Id. at
8:8—10. Zado further teaches that the flux may be combined with a solder
alloy to form a “soldering paste.” Id. at 8:18—24. In that instance,
polyethylene glycol may be provided as a “paste carrier.” Id. at 8:25—29.
“The resulting solder-flux paste may be applied to a surface to be joined by
dispensing (syringe type), rolling, screening or stenciling.” Id. at 8:41 44.
In light of the above-mentioned teachings in Zado, we are persuaded
that Zado’s sole teaching of polyethylene glycol is in connection with a
soldering paste that is characterized as being conducive to application to a
surface by dispensing. Accordingly, under Appellant’s clear definition of
non-flowable in the Specification, Zado’s soldering paste as described in
column 8 cannot be characterized as inherently non-flowable.
Because the Examiner’s inherency finding is contrary to the express
teachings of Zado, we do not sustain Rejection II.
Rejections III, IV
Each of Rejections III and IV is premised on the same deficient
finding of inherency discussed above in connection with Rejection II.
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Application 13/207,214
Neither Noguchi nor Appellant’s admitted prior art is relied upon in a
manner that cures that deficiency. Accordingly, we also do not sustain
either Rejection III or Rejection IV.
DECISION
The Examiner’s unchallenged decision rejecting claims 2—6, 8, 10, 23,
and 26—29 on the ground of nonstatutory obviousness-type double patenting
is summarily affirmed.
The Examiner’s decision rejecting claims 2—10, 23, and 24 under 35
U.S.C. § 102 or § 103 is reversed.
The Examiner’s decision rejecting claims 25—27 and 29 under 35
U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED-IN-PART
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