Lockheed Martin CorporationDownload PDFPatent Trials and Appeals BoardNov 10, 20202020000526 (P.T.A.B. Nov. 10, 2020) Copy Citation 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. 14/597,949 01/15/2015 Thomas Rovere 8198.3013.002 (FS-10161) 6736 107783 7590 11/10/2020 Reising Ethington P.C. 755 West Big Beaver Road, Suite 1850 Troy, MI 48084 EXAMINER WANG, NICHOLAS A ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 11/10/2020 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): USPTOmail@gmx.com USPTOmail@reising.com jones@reising.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS ROVERE, JENAI BEDDOW, DANIEL LEE BLASS, and ALFRED A. ZINN ____________ Appeal 2020-000526 Application 14/597,949 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MONTÉ T. SQUIRE, and JEFFREY R. SNAY, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to finally reject claims 1, 3–9, and 13.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 This Decision refers to the Specification filed Jan. 15, 2015 (“Spec.”); Final Office Action dated Dec. 4, 2018 (“Final Act.”); Advisory Action dated Mar. 5, 2019 (“Advisory Act.”); Appeal Brief filed June 24, 2019 (“Appeal Br.”); Examiner’s Answer dated Sept. 6, 2019 (“Ans.”); and Reply Brief filed Oct. 30, 2019 (“Reply Br. “). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Lockheed Martin Corporation as the real party in interest. Appeal Br. 2. 3 Claims 2 and 12 are cancelled and claims 10 and 11 are withdrawn. Appeal Br. 24, 26; Final Act. 2. Appeal 2020-000526 Application 14/597,949 2 We AFFIRM. CLAIMED SUBJECT MATTER The invention relates to repairing broken microvia contact pads on printed circuit boards (PCBs), particularly to a method of repairing a microvia assembly comprising a pad disposed on and in electrical conductive contact with a microvia where at least a portion of the pad is missing from the assembly. Spec. ¶¶ 1, 6; Abstract. Claim 1 illustrates the subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A method for repairing a microvia assembly comprising a microvia and a pad disposed on and in electrical conductive contact with the microvia along a microvia-pad interface, at least a portion of the pad being missing from the assembly and exposing an upper region of the microvia along the microvia-pad interface and wherein at least the upper region of the microvia comprises nanocopper; the method including sintering conductive material comprising nanocopper particles having respective diameters of 20 nanometers or less, to the exposed upper region of the microvia where the missing portion of the pad was located, at a temperature of 200° C or less, such that a direct nanocopper to nanocopper interface is formed between the conductive material and the upper region of the microvia along the microvia-pad interface, wherein the conductive material comprises the nanocopper particles in an amount of greater than 95% by weight. Appeal Br. 24 (key disputed claim language italicized and bolded). Appeal 2020-000526 Application 14/597,949 3 REFERENCES The Examiner relies on the following prior art as evidence in rejecting the claims on appeal: Name Reference Date Centola et al. (“Centola”) US 2002/0071265 A1 June 13, 2002 Hsu et al. (“Hsu”) US 2007/0281503 A1 Dec. 6, 2007 Palmeri et al. (“Palmeri”) US 7,399,930 B1 July 15, 2008 Bessette et al. (“Bessette”) US 2012/0266459 A1 Oct. 25, 2012 Himori et al. (“Himori”) US 2013/0327478 A1 Dec. 12, 2013 Ouchi et al. (“Ouchi”) US 2013/0341077 A1 Dec. 26, 2013 Cho et al., A Low Sintering Temperature and Electrical Performance of Nanoparticle Copper Ink for Use in Ink-Jet Printing, J. Nanosci. Nanotechnol. Vol 10, 6888–6891 (2010) (“Cho”). Appellant’s Admitted Prior Art (“AAPA”).4 REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections: 1. Claims 1, 3, and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ouchi in view of AAPA, Himori, and Cho (“Rejection 1”). Ans. 3. 2. Claims 4–6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ouchi in view of AAPA, Himori, and Cho as applied to claim 1 above, and further in view of Bessette (“Rejection 2”). Ans. 7. 4 The Examiner refers and cites to paragraph 5 of the Specification as “appellants’ admitted prior art” (AAPA). See Ans. 3, 4. Appeal 2020-000526 Application 14/597,949 4 3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ouchi in view of AAPA, Himori, and Cho as applied to claim 1 above, and further in view of Centola (“Rejection 3”). Ans. 8. 4. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ouchi in view of AAPA, Himori, and Cho as applied to claim 1 above, and further in view of Palmeri (“Rejection 4”). Ans. 9. 5. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ouchi in view of AAPA, Himori, and Cho as applied to claim 1 above, and further in view of Hsu (“Rejection 5”). Ans. 9. OPINION Having considered the respective positions the Examiner and Appellant advance in light of this appeal record, we affirm the Examiner’s rejections based essentially on the fact-finding and reasoning the Examiner provides in the Answer, Advisory Action, and Final Office Action. We add the following primarily for emphasis. Rejection 1 The Examiner rejects claims 1, 3, and 13 under § 103(a) as obvious over Ouchi, AAPA, Himori, and Cho. Ans. 3–7. In response to the Examiner’s rejection, Appellant presents arguments for the patentability of independent claims 1 and 13, respectively, under separate headings in the Appeal Brief (Appeal Br. 8, 20), which we address in turn below. Claim 1 Appellant presents argument for the patentability of claim 1 but does not present separate argument for the patentability of claim 3. Appeal Br. 3, Appeal 2020-000526 Application 14/597,949 5 21. We select claim 1 as representative and claim 3 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2018). The Examiner determines that the combination of Ouchi, AAPA, Himori, and Cho suggests a method of repairing a disconnection in a wiring board satisfying the limitations of claim 1 and concludes the combination would have rendered the claim obvious. Ans. 3–6. On this appeal record, we determine a preponderance of the evidence and sound technical reasoning support the Examiner’s findings regarding the teachings of the cited prior art and the Examiner’s conclusion that the combination would have rendered the method of claim 1 obvious to a person having ordinary skill in the art. Ouchi, Abstract, ¶¶ 6, 101–103, 124, 127, Figs. 1, 3; AAPA (Spec. ¶ 5); Himori, Abstract, ¶¶ 3, 51, 65; Cho 6888, 6889, 6891. Appellant argues the Examiner’s rejection of claim 1 should be reversed because the cited prior art is non-enabling and does not teach or render obvious the “sintering conductive material” step of the claim. Appeal Br. 1–2; Reply Br. 2–4. In particular, Appellant argues Ouchi does not enable use of a conductive material having “nanocopper particles in an amount greater than 95% by weight,” as claimed. Appeal Br. 9. Appellant contends that, although Ouchi describes as an embodiment, use of a silver-based conductive material preferably having silver conductive particles in a range of 70% or greater and teaches, alternatively, that copper conductive particles can be used, Ouchi does not disclose or suggest use of a copper-based conductive material preferably having copper conductive particles in a range of 70% or greater. Id. at 9. Rather, Appellant contends Ouchi teaches away from use of a conductive material having a high concentration of conductive particles. Id. at 10–11. Appeal 2020-000526 Application 14/597,949 6 We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection based principally on the fact-finding and reasons the Examiner provides at pages 3–4 and 10–12 of the Answer, which a preponderance of the evidence supports. Regarding the limitation “wherein the conductive material comprises the nanocopper particles in an amount of greater than 95% by weight,” as the Examiner finds (Ans. 3–4), Ouchi teaches a method of repairing a disconnection in a wiring board assembly by applying and sintering a conductive material (conductive paste 13a) to the disconnected portion. Ouchi, Abstract, ¶¶ 6, 124, 127, Fig. 1. As the Examiner further finds (Ans. 4, 10–11), Ouchi teaches that the amount of conductive particles contained in the conductive material is “preferably in a range of 70 wt. % or greater” (Ouchi ¶ 127), which overlaps the claimed range of “greater than 95% by weight.” It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976); see also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (explaining where “the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap”).5 As the Examiner also finds (Ans. 4), Ouchi teaches that the 5 As the Examiner notes (Ans. 12), Appellant does not proffer or direct us to any objective evidence in the record to suggest the criticality of the claimed range or that nanocopper particles in an amount greater than 95% by weight achieves unexpected results relative to the prior art. Peterson, 315 F.3d at 1330 (explaining that “the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious”). The burden of showing that objective indicia support a conclusion of nonobviousness rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Appeal 2020-000526 Application 14/597,949 7 conductive particles “may be made of copper” (Ouchi ¶ 127) and the diameter of a conductive particle is measured on a nanoscale level (id. ¶ 124), which, as the Examiner finds, suggests the conductive particles being “nanocopper” conductive particles. Thus, on the record before us, we agree with the Examiner that Ouchi’s teachings in this regard would have reasonably suggested to one of ordinary skill the “wherein the conductive material comprises the nanocopper particles in an amount of greater than 95% by weight” limitation of the claim. Appellant’s arguments do not reveal reversible error in the Examiner’s factual findings, analysis, and conclusions in this regard. Appellant’s argument that Ouchi is non-enabling is not persuasive because a prior art reference cited by an examiner is presumed to be enabling. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Once such a reference is found, the burden is on the applicant to provide evidence rebutting the presumption. Id. Here, however, Appellant does not identify or direct us to persuasive evidence in the record sufficient to rebut the presumption that Ouchi is enabling. Sasse, 629 F.2d at 681. Appellant’s contention that “Ouchi does not enable use of a conductive material having nanocopper in an amount greater than 95% by weight” (Appeal Br. 9) is conclusory and, without more, insufficient to satisfy Appellant’s burden in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Appeal 2020-000526 Application 14/597,949 8 Appellant’s contentions regarding Ouchi’s disclosure of an embodiment including a silver-based conductive material preferably having conductive particles in a range of 70% or greater and that Ouchi neither discloses nor suggests use of a copper-based conductive material preferably having copper particles in a range of 70% or greater (Appeal Br. 9) are not persuasive because, as the Examiner notes (Ans. 11–12), Ouchi’s teachings are not limited to the disclosures in its examples or preferred embodiments. In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.”); see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure of specific working examples.”). Although Ouchi describes an embodiment that includes a conductive material having silver particles “preferably in a range of 70 wt. % or greater” (Ouchi ¶ 127), such disclosure is merely a preferred embodiment and does not negate or take away from Ouchi’s broad disclosure and suggestion that a conductive material having copper particles in a range of 70 wt. % or greater may also be used. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a prior art reference’s disclosure must be considered for all that it teaches, including “the inferences which one skilled in the art would reasonably be expected to draw therefrom”). Appellant’s contention that Ouchi teaches away from use of a conductive material having a high concentration of conductive particles (Appeal Br. 10–11) is equally unpersuasive because it is conclusory and Appellant does not direct us to evidence in the record or provide a persuasive explanation sufficient to support it. In re De Blauwe, 736 F.2d Appeal 2020-000526 Application 14/597,949 9 699, 705 (Fed. Cir. 1984); see also In re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away where the prior art’s disclosure “does not criticize, discredit, or otherwise discourage the solution claimed”). We will not read into the references a teaching away where no such language exists. Cf. DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, the fact that Ouchi may disclose a particular embodiment comprising a conductive material having a concentration of conductive particles that differs from the claimed range, without more, does not constitute a teaching away. In re Susi, 440 F.2d 442, 445–46 (CCPA 1971) (explaining that disclosure of particular preferred embodiments does not teach away from a prior art reference’s broader disclosure). Appellant further argues the combination of Ouchi and Himori does not enable a person of ordinary skill in the art to obtain a conductive material comprising nanocopper particles having “diameters of 20 nanometers or less” and “in an amount greater than 95% by weight” and that Himori teaches away from a conductive material satisfying both of those limitations of the claim. Appeal Br. 12–13. Appellant contends that, in contrast to the claimed invention, Ouchi teaches an embodiment comprising a silver-based conductive material having a particle diameter of 100 nanometers and Himori teaches a conductive paste (conductive paste 105) having conductive material in an amount “not more than 92 wt. %.” Id. at 12 (citing Himori ¶ 52). Appellant’s arguments in this regard are not persuasive of reversible error in the Examiner’s rejection because they are premised on what Appellant contends the Ouchi and Himori references teach individually, and Appeal 2020-000526 Application 14/597,949 10 not the combined teachings of the cited prior art references as a whole, and what the combined teachings of the references would have suggested to one of ordinary skill in the art. One cannot show non-obviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Contrary to what Appellant’s argument implies, the Examiner does not rely solely upon Himori for teaching both the “diameters of 20 nanometers or less” and “in an amount greater than 95% by weight” limitations of the claim. Rather, the Examiner relies on the combination of Ouchi and Himori for suggesting those limitations. In particular, as the Examiner finds (Ans. 4–6, 12–13), Ouchi teaches a conductive material comprising nanocopper particles in an amount of greater than 95% by weight (Ouchi ¶¶ 124, 127) and Himori teaches a conductive material (conductive paste 105) comprising nanocopper particles (copper powder) having an average particle diameter of not less than 0.5 to 20 nanometers (Himori, Abstract, ¶ 51), which falls within the claimed range of 20 nanometers or less. Wertheim, 541 F.2d at 267. The Examiner also provides a reasonable basis why one of ordinary skill in the art would have had reason to combine the teachings of the references to arrive at those limitations of the claim. Ans. 5–6 (explaining it would have been obvious to one of ordinary skill in the art to modify Ouchi’s method to utilize Himori’s nanocopper material to achieve high density wiring with low resistance between the layers of a multilayer circuit board); Himori ¶¶ 3, 51, 65; Ouchi ¶¶ 124, 127, Fig. 1. See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or Appeal 2020-000526 Application 14/597,949 11 problem known in the art can provide a reason for combining the elements in the manner claimed). Appellant’s arguments do not reveal reversible error in the Examiner’s factual findings, analysis, or conclusions in this regard. Appellant’s contentions that the combination of Ouchi and Himori is non-enabling and Himori teaches away from the claimed conductive material (Appeal Br. 12–13) are not persuasive for principally the same reasons we previously discuss above in addressing similar arguments Appellant raises regarding the Ouchi reference. For example, the fact that Himori may describe a preferred embodiment having a conductive material in an amount “not more than 92 wt. %” (Himori ¶ 52), without more, does not constitute a teaching away. Susi, 440 F.2d at 445–46. Appellant also argues the combination of Ouchi, Himori, and Cho does not enable a person of ordinary skill in the art to sinter a conductive material “at a temperature of 200° C or less,” as claimed. Appeal Br. 13–14; Reply Br. 3. Appellant further contends the combination of Ouchi, Himori, and Cho does not teach or suggest the conductive material comprising “nanocopper particles in an amount of greater than 95% by weight” claim limitation. Appeal Br. 15. Appellant also contends a person of ordinary skill in the art would not have combined the prior art in the manner claimed because the references do not solve the same or similar problem solved by the claimed invention. Id. at 17–18. We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection based principally on fact-finding and reasons the Examiner provides at pages 3–6 and 13–15 of the Answer, which a preponderance of the evidence supports. Regarding the sintering nanocopper Appeal 2020-000526 Application 14/597,949 12 particles “at a temperature of 200° C or less” recitation of claim 1, as the Examiner finds (Ans. 6, 14), Cho teaches copper nanoparticles having a size of 10 to 20 nanometers to produce printed circuits for electronic applications, including printed circuit board, and sintering the copper nanoparticles at a temperature of 200° C (Cho 6888, 6889, 6891), which falls within the claimed range. Wertheim, 541 F.2d at 267. As the Examiner further finds (Ans. 6, 14), Cho teaches that sintering the copper nanoparticles at a temperature of 200° C or less is useful for improving electrical performance in printed circuit board applications. See Cho 6891 (“A low temperature sintering process appears to be useful for electrical performance.”). The Examiner also provides a reasonable basis why one of ordinary skill in the art would have had reason to combine the teachings of the references to arrive at the claimed invention. Ans. 6, 14 (explaining it would have been obvious to one of ordinary skill in the art to modify the method of modified-Ouchi to include the step sintering the nanocopper particles at a temperature of 200° C or less, as Cho teaches, because low temperature sintering results in useful electrical performance); KSR, 550 U.S. at 420. Appellant fails to direct us to persuasive evidence or adequately explain why the Examiner’s articulated reasoning lacks a rational underpinning or is otherwise based on some other reversible error. Appellant’s disagreement as to the Examiner’s factual findings and reason for combining the references, without more, is insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as to the existence of factual disputes do not amount to a developed argument.”). Appeal 2020-000526 Application 14/597,949 13 Appellant’s contention that the combination of Ouchi, Himori, and Cho is non-enabling (Appeal Br. 13–14) is not persuasive because, as we previously explain above, the references are presumed to be enabling and Appellant does not identify or direct us to persuasive evidence in the record sufficient to rebut that presumption. Sasse, 629 F.2d at 681. Appellant’s contention that the combination of Ouchi, Himori, and Cho does not teach or suggest the conductive material comprising nanocopper particles in an amount of greater than 95% by weight (Appeal Br. 15) is also not persuasive because, for the reasons we discuss above, we agree with the Examiner that the cited art does reasonably suggest that limitation of the claim. Appellant’s contentions that “Cho teaches that the max weight percent of copper in the mixture that is sintered is 52.89%” (Appeal Br. 15) and “the copper nanoparticle material of Cho is different from that of Himori” (id. at 16) are not persuasive of reversible error in the Examiner’s rejection because it is based on a specific embodiment Cho describes in Figure 4(a) (see Cho 6891) and not Cho’s teaching as a whole and what those teachings would have reasonably suggested to one of ordinary skill in the art. As the Examiner notes (Ans. 14–15) and we previously discuss above, a reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment. See Applied Materials, 692 F.3d at 1298; Susi, 440 F.2d at 445–46. Appellant’s contention that references do not solve the same or similar problem solved by the claimed invention (Appeal Br. 17–18) is not persuasive of reversible error because prior art references need not address the same problem to be combined under § 103. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known Appeal 2020-000526 Application 14/597,949 14 in the art can provide a reason for combining the elements in the manner claimed); cf. also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (explaining that a prior art reference qualifies as analogous art if it is from the same field of endeavor as the claimed invention regardless of the problem addressed). Here, Ouchi, Himori, Cho and the Appellant’s claimed invention are all within the same field of endeavor because they each relate to conductive materials (pastes) comprising conductive nanoparticles in connection with printed circuit and/or wiring boards. See Ouchi, Abstract, ¶¶ 3, 6; Himori, Abstract, ¶¶ 2, 3; Cho 6888; Spec. ¶ 1. Appellant further argues the Examiner’s rejection should be reversed because the cited prior art does not teach or render obvious “a portion of the pad being missing from the assembly and exposing an upper region of the microvia,” as required by the claim. Appeal Br. 19–20. Appellant contends the cited portion of the Specification identified as AAPA and relied on for disclosing that limitation is not admitted prior art and does not qualify as prior art under § 102. Id. at 19–20 (arguing “the cited portion of the background does not constitute admitted prior art” and “has not been shown to qualify as or to have been admitted to being prior art”). The Manual of Patent Examining Procedure (“MPEP”) § 2129 provides guidance on admissions as prior art. Section I of MPEP § 2129 states that “[a] statement by an applicant in the specification . . . identifying the work of another as ‘prior art’ is an admission which can be relied upon for both anticipation and obviousness,” regardless of whether the admitted prior art would otherwise qualify under one of the categories of 35 U.S.C. § 102. Section I also states that, even if labeled as “prior art,” because the work of the same inventive entity cannot be used against the claims unless it Appeal 2020-000526 Application 14/597,949 15 falls under one of the statutory categories of 35 U.S.C. § 102, “the examiner must determine whether the subject matter identified as ‘prior art’ is applicant’s own work, or the work of another. In the absence of another credible explanation, examiners should treat such subject matter as the work of another.” Consistent with this section of the MPEP, we determine that although the term “prior art” is not used expressly in the specification to describe the prior work of another, the description can nonetheless be treated as admitted prior art if the description provides a reasonable basis for the examiner to conclude that it is the prior work of another. Here, the Examiner concludes the description at paragraph 5 of Appellant’s Specification is AAPA and thus, the prior work of another. Ans. 4–5. Paragraph 5 of the Specification describes: Small conductive elements such as the contact pads atop microvias in a printed circuit board are known to fail. More specifically, the pads or portions of pads are known to crack and break off at their point of contact with a microvia. Common repair techniques for broken microvia contact pads include soldering a tailed copper pad over the site of a missing pad, but this method can leave a solder mass so large that it can inadvertently end up contacting other nearby pads. Another problem with this repair method is that the amount of heat required to solder the replacement pad in place can damage the PCB and/or its components. Based on the above description in the Specification’s background section,6 the Examiner finds applicant admits “it is well known that contact pads atop 6 We note that the portion of the Specification the Examiner cites and identifies as AAPA appears under the major heading “BACKGROUND” and sub-heading “DESCRIPTION OF RELATED ART INCLUDING Appeal 2020-000526 Application 14/597,949 16 microvias in a printed circuit board fail by cracking of breaking off at the point of contact with said microvia.” Id. at 4. Absent any contrary evidence, we agree with the Examiner. Thus, on the record before us, we determine the Examiner has a reasonable factual basis to conclude that the description in paragraph 5 of Appellant’s Specification is admitted prior art of another and treat the disclosure that it is well known that contact pads atop microvias in a printed circuit board fail by cracking of breaking off at the point of contact with said microvia as prior art with respect to the present application. An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced MicroDevices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”); see also In re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). We, therefore, sustain the Examiner’s rejection of claims 1 and 3. Claim 13 Claim 13 is directed to a method for repairing a microvia assembly and recites language similar to claim 1. Compare claim 13 (Appeal. Br. 26–27) with, claim 1 (Appeal Br. 24). As with claim 1, the Examiner rejects INFORMATION DISCLOSED UNDER 37 CFR 1.97 AND 1.98” (see Spec. 1–2). Appeal 2020-000526 Application 14/597,949 17 claim 13 under § 103(a) as obvious over Ouchi, AAPA, Himori, and Cho. Ans. 3–6. Although Appellant nominally presents separate arguments for the patentability of claim 13, enumerated under a separate heading, at pages 20–21 of the Appeal Brief, Appellant does not present any new or additional substantive argument, but instead repeats and relies principally on some of the same arguments it previously presents above in response to the Examiner’s rejection of claim 1. Thus, based on the factual findings, conclusions, and analysis the Examiner provides in this appeal record, and for essentially the same reasons we discuss above for sustaining the Examiner’s rejection of claim 1, we sustain the Examiner’s rejection of claim 13. Accordingly, we affirm the Examiner’s rejection of claims 1, 3, and 13 under pre-AIA 35 U.S.C. § 103(a) as obvious over Ouchi, AAPA, Himori, and Cho. Rejection 2 The Examiner rejects claims 4–6 under § 103(a) as obvious over Ouchi, AAPA, Himori, Cho, and Bessette. Ans. 7–8. In response to the Examiner’s rejection, Appellant presents argument for the patentability of claims 4–6 as a group. Appeal Br. 22. We select claim 4 as representative and claims 5 and 6 stand or fall with claim 4. 37 C.F.R. § 41.37(c)(1)(iv). Claim 4 depends from claim 1 and further recites: the providing step includes providing the conductive material on a microvia of a microvia assembly that is installed in a printed circuit board; and the method includes, before the providing step, the additional step of removing a printed circuit board Appeal 2020-000526 Application 14/597,949 18 component that is carried by the printed circuit board and is blocking access to the damaged microvia assembly. Appeal Br. 24–25 (Claims Appendix) (key disputed claim language italicized and bolded). Appellant argues the Examiner’s rejection of claim 4 should be reversed because Ouchi does not teach or suggest the “removing a printed circuit board component” step of the claim. Appeal Br. 22 (arguing “Ouchi does not ever mention or suggest that such components need be removed” and instead “Ouchi teaches a step ‘of preparing the substrate’”). Appellant’s argument is misplaced and not persuasive of reversible error in the Examiner’s rejection because the Examiner does not rely on Ouchi for teaching that recitation of the claim. See Keller, 642 F.2d at 425. Rather, the Examiner relies on Bessette for teaching that limitation. In particular, the Examiner finds (Ans. 7–8, 16–17), Bessette discloses a method for removing an electronic component from a printed circuit board substrate by heating the component because it allows for removal of the component during repair. Bessette, Abstract, ¶¶ 4, 9. Moreover, based on the factual findings and reasons the Examiner provides at pages 7–8 and 17–18 of the Answer, which a preponderance of the evidence supports, we agree with the Examiner that it would have been obvious to one of ordinary skill in the art to have utilized Bessette’s removal step in modified-Ouchi’s repair method because Ochi suggests that removal of at least one component would be required to access a component located, for example, in the middle of Ouchi’s multilayer wiring board. See Bessette, Abstract, ¶¶ 4, 9; Ouchi ¶ 101, Fig. 3. Appeal 2020-000526 Application 14/597,949 19 Accordingly, we affirm the Examiner’s rejection of claims 4–6 under pre-AIA 35 U.S.C. § 103(a) as obvious over Ouchi, AAPA, Himori, Cho, and Bessette. Rejections 3, 4, and 5 In response to the Examiner’s Rejections 3, 4, and 5 (Ans. 8–10), Appellant does not present any additional substantive arguments. Rather, Appellant relies on the same arguments it previously discusses and presents above in response to the Examiner’s rejection of claims 1 and 13 as obvious over Ouchi, AAPA, Himori, and Cho (Rejection 1). See Appeal Br. 21 (stating “[f]or those reasons above, the Appellant respectfully maintains that claims 1 and 13 (as well as dependent claims 3–9) are patentable over Ouchi, AAPA, Himori, and Cho). Thus, based on the factual findings and reasoning the Examiner provides in this appeal record, and for essentially the same reasons we discuss above for affirming the Examiner’s rejection of claims 1 and 13 (Rejection 1), we affirm the Examiner’s rejection of claim 7 under pre-AIA 35 U.S.C. § 103(a) as obvious over Ouchi, AAPA, Himori, Cho, and Centola (Rejection 3); claim 8 under pre-AIA 35 U.S.C. § 103(a) as obvious over Ouchi, AAPA, Himori, Cho, and Palmeri (Rejection 4); and claim 9 under pre-AIA 35 U.S.C. § 103(a) as obvious over Ouchi, AAPA, Himori, Cho, and Hsu (Rejection 5). Appeal 2020-000526 Application 14/597,949 20 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 13 103(a) Ouchi, AAPA, Himori, Cho 1, 3, 13 4–6 103(a) Ouchi, AAPA, Himori, Cho, Bessette 4–6 7 103(a) Ouchi, AAPA, Himori, Cho, Centola 7 8 103(a) Ouchi, AAPA, Himori, Cho, Palmeri 8 9 103(a) Ouchi, AAPA, Himori, Cho, Hsu 9 Overall Outcome 1, 3–9, 13 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 Copy with citationCopy as parenthetical citation