Ex Parte Yoshida et al

Patent Trial and Appeal Board

Nov 22, 2016

13162198 (P.T.A.B. Nov. 22, 2016)

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.
13/162,198 06/16/2011 Kenichi YOSHIDA 149881 7024
759027049
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
11/25/2016 EXAMINER
VARGHESE, ROSHN K
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
OfficeAction27049@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHI YOSHIDA, YUHEI HORIKAWA,
ATSUSHI SATO, and HISAYUKI ABE
Appeal 2015-000271
Application 13/162,198
Technology Center 2800
Before ROBERT E. NAPPI, MICHAEL J. STRAUSS, and
JOHN D. HAMANN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-000271
Application 13/162,198
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 8—10, and 14—16. Claims 5—7 and 11—13 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We heard oral
arguments on November 17, 2016. A transcript of the hearing will be added
to the record in due course.
We affirm.
THE INVENTION
The claims are directed to a coating and electronic component. Claim
1, reproduced below, is representative of the claimed subject matter:
1. A coating provided on a conductor, comprising:
a first layer containing palladium, the first layer being
deposited on and in direct contact with the conductor without any
intervening layer, the conductor being made of copper, silver, or
an alloy thereof; and
a second layer containing gold, the second layer being
deposited on the first layer such that the first layer is between the
conductor and the second layer,
wherein the first layer has a first region, and a second
region arranged nearer to the second layer than the first region,
wherein the second region has a higher phosphorus
concentration than the first region, and
wherein the phosphorus concentration in the first region is
not more than 0.01 % by mass and the phosphorus concentration
in the second region is more than 0.01% by mass and not more
than 7% by mass.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tiziani US 2003/0127701 A1 July 10,2003
Ejiri US 2010/0071940 A1 Mar. 25,2010
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Andoh US 2010/0258954 A1 Oct. 14,2010
REJECTION
Claims 1—4, 8—10, and 14—16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Andoh, Tiziani, and Ejiri. Ans. 5—9.1
APPELLANTS’ CONTENTIONS
1. One of ordinary skill would not have had a reasonable rationale to
modify Andoh’s structure having a nickel layer according to Tiziani’s
structure having no nickel layer because Andoh teaches a nickel layer
is needed as a barrier to prevent contact between a metal circuit plate
and a plated potion. App. Br. 8.
2. “[0]ne of ordinary skill would not have had a reasonable rationale to
modify Andoh so that the percentage is no more [than the] 0.01 %
disclosed in Ejiri, because such a modification is in direct
contradiction with Andoh’s requirement that this percentage should be
at least 2.6%.” App. Br. 9.
3. Ekiri’s phosphorous percentage of no more than 0.01% “is associated
with the fact that Ejiri requires a nickel layer” such that “one of
ordinary skill would not have had any reasonable rationale to use such
1 Because independent claim 1 was amended after issuance of the Final
Action of December 30, 2013 to incorporate the limitations of claim 5, for
purposes of this appeal, we treat claim 1 and its dependent claims 2—4, 8—10,
and 14—16 as all rejected on the basis set forth in Final Action in connection
with claim 5, i.e., over the combination of Andoh, Tiziani, and Ejiri. See
Advisory Action of March 12, 2014 entering the Amendment After Final
Rejection Under 37 C.F.R. § 1.116 filed February 28, 2014.
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Application 13/162,198
percentage in Andoh’s assertedly modified configuration [having no
nickel layer].” Id.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2—9
and Advisory Action of March 12, 2014) and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(Ans. 2—10) and concur with the conclusions reached by the Examiner. We
highlight the following for emphasis.
In connection with contention 1 Appellants argue:
Andoh requires a nickel layer (Fig. 1; 241) between the asserted
first layer (242) and conductor (22), such that the asserted first
layer is not in direct contact with the asserted conductor (Fig. 1).
The nickel layer is specifically required by Andoh to function as
a barrier layer to prevent the contact between a metal circuit plate
and a plated portion. See paragraph [0051] of Andoh. Also, the
other parameters, such as the [phosphorus (P)] concentration, are
specifically designed to prevent the diffusion of nickel from this
nickel layer. See paragraph [0052] of Andoh. Thus, even if
Tiziani disclosed a structure having no nickel layer, one of
ordinary skill would not have had a reasonable rationale to
combine such Tiziani teaching to remove Andoh’s nickel layer,
because doing so would be in direct contradiction to Andoh's
teaching.
App. Br. 8. The Examiner responds by finding Tiziani discloses using either
a nickel (and/or) a palladium film (i.e., in the alternative to one another) as a
barrier between the plating film and conductor. Ans. 4 quoting Tiziani || 18,
22, and 23. Therefore, the Examiner concludes the combination of Andoh
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and Tiziani (the latter disclosing using only palladium as an alternative to
nickel) would have been obvious to prevent unwanted compound formations
using a thinner layer. Ans. 5.
We find Appellants’ contention 1 unpersuasive of Examiner error. In
particular, Appellants identify insufficient evidence to demonstrate Andoh’s
nickel layer is a requirement. Thus, Tiziani’s disclosure of using either
nickel or palladium layers in the alternative, when combined with Andoh’s
disclosed structure, teaches or suggests the omission of Andoh’s nickel layer
241 in favor of palladium layer 242 such that the latter is in direct contact
with underlying conductor layer 22 as required by the disputed limitation of
claim 1. Furthermore, as explained by the Examiner, “omission of an
element and its function in a combination where the remaining elements
perform the same functions as before, involves only routine skill in the art.”
Ans. 5 citing In re Karls on, 136 USPQ 184 (1963). Appellants admit Andoh
discloses Nickel layer 242 relieves mechanical stress and Palladium layer
242 forms a barrier layer to suppress diffusion of elements. Reply Br. 5—6.
Thus, elimination of the Nickel layer merely eliminates the function of
relieving mechanical stress while the remaining palladium layer suppresses
diffusion and, as such, involves routine skill in the art as evidenced by
Tiziani.
Alternatively, we note in passing and without reliance in formulating
our decision, the same conclusion results when the combination of Andoh
and Tiziani is viewed in a reverse ordering of the references.2 In particular,
Tiziani discloses third film 10 (gold) formed on second film 9 which, when
2 See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (where a rejection is
predicated on two references, each containing pertinent disclosure, the order
of the references is of no significance, but merely a matter of exposition).
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Application 13/162,198
palladium3, provides for the omission of first film 8 (zinc) intermediate
palladium film 9 and underlying copper layer 7. Tiziani || 32—33. When
zinc film 8 is omitted palladium film 9 “is applied directly on the layer 7 of
copper.” Tiziani 134. In connection with the limitation “the second region
has a higher phosphorous concentration than the first region,” Tiziani’s
palladium film 9 may be modified to incorporate Andoh’s P-distributed layer
242 having a varying phosphorous concentration (see Andoh | 52.) One
skilled in the art would have made the modification to suppress diffusion of
palladium toward the gold layer as disclosed by Andoh. Andoh | 59. When
viewed from this vantage, there is no intervening nickel layer to start with
and, therefore, none that need be eliminated.
In connection with contention 2, Appellants argue Andoh specifically
requires the percentage of phosphorus to be at least 2.6% and, as such, it
would be improper to move the phosphorus concentration parameter out of
the required range of concentrations by adopting the lower concentration
limit of Ejiri. App. Br. 8—9. The Examiner responds by finding, rather than
a requirement, Andoh’s lower concentration limit is merely a preference.
Ans. 7. We agree with the Examiner. Appellants provide insufficient
evidence Andoh’s lower concentration limit is either a rigid requirement or
would have otherwise dissuaded one of skill in the art from, instead, using
the lower concentration limit disclosed by Ejiri.
In connection with contention 3, Appellants argue Ejiri’s
concentrations are only applicable to Ejiri’s configuration including a nickel
layer but “is not necessarily suitable for a configuration having no nickel
3 The zinc layer is also unnecessary because, as in the present case, “[wjhen
a pad layer 7 of copper ... is used, the second film 8 of zinc can be omitted
regardless of the nature of the metal film [9].” Tiziani 134.
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layer” as in the configuration taught or suggested by the combination of
Andoh and Tiziani asserted by the Examiner. App. Br. 8. The Examiner
responds by finding “Appellants] ha[ve] not shown how the Ni layer of
Ejiri affects the percentages of P in the claimed layers.” Ans. 9. Appellants
reply, arguing “[the Examiner] bears the burden to show that Ejiri’s
percentage for a configuration having a nickel layer is also suitable for a
configuration without a nickel layer.” Reply Br. 8.
We disagree with Appellants. The Examiner has put forth aprima
facie case of obviousness. In contrast, Appellants’ contention Ejiri’s
percentages are only applicable to the specific configuration of layers taught
by Ejiri and no others is mere attorney argument and speculation
unsupported by factual evidence and is entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument
take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977). Therefore, in the absence of sufficient
persuasive evidence, we agree with the Examiner in concluding the
combination of Andoh, Tiziani, and Ejiri would have been obvious to one
skilled in the art at the time of the invention and such combination teaches or
suggest the disputed limitations of claim 1.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejection of independent claim 1 and, for
the same reasons, the rejection of dependent claims 2—4, 8—10, and 14—16,
which were not argued separately.
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DECISION
We affirm the Examiner’s decision to reject claims 1—4, 8—10, and 14—
16.
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
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