Lockheed Martin Corporation

Patent Trials and Appeals Board

Nov 10, 2020

2020000526 (P.T.A.B. Nov. 10, 2020)

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3 Claims 2 and 12 are cancelled and claims 10 and 11 are withdrawn.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.
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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).
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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.
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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,
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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.
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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).
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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).
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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
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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
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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
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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
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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.”).
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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
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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
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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
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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).
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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
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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.
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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).
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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