Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Feb 17, 2022

2021001512 (P.T.A.B. Feb. 17, 2022)

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. 15/447,360 03/02/2017 Yoshihiro Kawaguchi 036433.03735 1224 38485 7590 02/17/2022 ARENT FOX LLP - New York 1717 K Street, NW Washington, DC 20006-5344 EXAMINER SIDDIQUI, ADIL ABDUL WAJID ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 02/17/2022 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@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIHIRO KAWAGUCHI Appeal 2021-001512 Application 15/447,360 Technology Center 1700 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 5, 7-13, and 16-20. We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MURATA MANUFACTURING CO., LTD. Appeal Br. 2. Appeal 2021-001512 Application 15/447,360 2 CLAIMED SUBJECT MATTER The subject matter on appeal is directed to a metal composition comprising two metal powders and a flux component containing rosin and an activator. Appeal Br. 8 (Claims App.). The first metal powder contains Sn and the second metal powder is a CuNi alloy powder. Id. Sole independent claim 1 is illustrates the claimed subject matter and is reproduced below with the key disputed limitation italicized for emphasis: 1. A metal composition comprising: a metal component comprising a first metal powder and a second metal powder that has a higher melting point than the first metal powder; and a flux component, wherein a weight reduction ratio of the second metal powder is 0.75 wt % or less, wherein the first metal powder is one of a Sn powder and an alloy powder comprising Sn, and the second metal powder is a CuNi alloy powder, and wherein the flux comprises a rosin and an activator, and a ratio of a weight of the activator to a weight of rosin is 1.5 or more. Appeal Br. 8 (Claims App.). REJECTIONS The following claims are rejected under 35 U.S.C. § 103: I. Claims 1, 4, 5, 7-12, and 20 over Nakano,2 Liu,3 Sugimoto,4 and Baba.5 2 US 2013/0270001 A1, published October 17, 2013. 3 CN 101890595, dated July 4, 2012 (English machine translation). 4 JPH05212579A, published August 24, 1993. 5 JPS59212188A, published December 1, 1984. Appeal 2021-001512 Application 15/447,360 3 II. Claims 8, 13, and 16-19 over Nakano, Liu, Sugimoto, Baba, and Baolin.6 STATEMENT OF THE CASE The Examiner undisputedly finds that Nakano teaches a solder paste meeting the requirements of independent claim 1, except that Nakano does not expressly disclose 1) the activator to rosin weight ratio of 1.5 or greater, and 2) the weight reduction ratio of the second metal powder being 0.75 wt% or less. Final Act. 3. To address these differences between Nakano and claim 1, the Examiner turns to Liu, Sugimoto, and Baba. Id. at 3-4. Regarding the first difference, the Examiner undisputedly finds that Liu teaches an activator:rosin ratio of 1.67-10 overlapping the claimed weight ratio, and that using such ratio would improve wettability, reduce smoke and residue, and would result in an attractive solder joint. Id. at 3-4. Regarding the second difference, the Examiner undisputedly finds that “Sugimoto discloses a copper powder in which the hydrogen reduction level[7] is 0.26% [0029], which meets the claimed ‘0.75% of less’.” Final Act. 4. The Examiner acknowledges that Sugimoto’s powder is a copper powder, i.e., is not the claimed “CuNi alloy powder.” Id. According to the Examiner--and undisputed by Appellant--the weight reduction ratio is a method of measuring the degree of oxidation in metal powders, and that 6 Baolin Chemical Industry Co., Ltd., “Water-White Rosin” http://www.baolin-resin.com/water-white-resin-bw1000-p00018p1.html; (last visited Feb. 9, 2022). 7 The specification recognizes that the terms “hydrogen reduction” and “weight reduction ratio” can be used interchangeably. Spec. ¶ 88. Also, Appellant does not contest that Sugimoto’s “hydrogen reduction loss of 0.26%” is equivalent to a “weight reduction ratio” of 0.26% as found by the Examiner. Appeal Br., generally; Final Act. 4; Sugimoto ¶ 29. Appeal 2021-001512 Application 15/447,360 4 “[m]inimizing the degree of oxidation as much as possible for metal powders for soldering is important.” Id. (citing Baba). Thus, the Examiner finds that the skilled artisan would have found it obvious “to apply the hydrogen reduction level of 0.26% to the CuNi powder taught by Nakano.” Id. In so doing, the Examiner determines that a person of ordinary skill in the art would have recognized that minimizing oxidation in the metal powder “would be equally applicable to both Cu (as taught by Sugimoto) and Cu alloys (as taught by Nakano) which both share a major component (Cu) and therefore have substantially similar properties.” Id. at 12. Appellant argues that one of skill in the art would not have combined Sugimoto with Nakano because Nakano discourages the use of Cu powders in a solder paste, and therefore teaches away. Appeal Br. 5. Specifically, Appellant contends that “using metallic Cu powder causes cracks in the resulting connecting part when stress is applied,” and “the proposed combination set forth by the Examiner would render Nakano et al. unsatisfactory for its intended purpose.” Id.; see also Reply Br. 3 (repeating this argument). Appellant thus argues that Nakano “explicitly teaches away from the use of metallic Cu powder,” and that there would have been no reason to combine Nakano with the teachings of Sugimoto. Appeal Br. 5. Appellant also alleges that Sugimoto does not contain a second metallic powder, and thus “would not form an intermetallic compound.” Id. OPINION We review the appealed rejections for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Appeal 2021-001512 Application 15/447,360 5 Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Upon consideration of Appellant’s arguments in light of the evidence in the appeal record, we determine that Appellant has identified no such error. We therefore affirm the obviousness rejections for the reasons expressed by the Examiner. Final Act. 3-12; Ans. 3-7. We add the following for emphasis. We first observe that the Examiner does not propose combining the teachings of Nakano with Sugimoto for the purpose of making a mixture of Cu and Sn as Appellant’s arguments suggest. See, e.g., Appeal Br. 5 (asserting that “using metallic Cu powder causes cracks” and “the proposed combination . . . would render Nakano . . . unsatisfactory for its intended purpose.”). Rather, the Examiner merely relies on Sugimoto for its teaching regarding the “weight reduction ratio” / “hydrogen reduction level” of a copper metal powder useful for “improved solderability.” Final Act. 4; Sugimoto, Abstract, ¶¶ 22, 24, 29. Thus, to the extent Appellant is arguing that the skilled artisan would not have combined Nakano and Sugimoto for the purpose of preparing a mixture of Cu and Sn, that argument fails as it is non-responsive to the rejection actually made. Final Act. 3-5. Moreover, Appellant’s “teaching away” arguments are unavailing because they do not address the full scope of Nakano. Nakano describes solder pastes which include mixtures of a) a high melting point metal such as Cu, Al, Au or Ag, or alloys containing these metals, with b) a low melting point metal ball made of Sn or In, as “[e]xamples of a Pb-free solder material which is of interest in the present invention.” Nakano ¶ 4 (emphasis added). Thus, Nakano expresses an interest in solder pastes containing, for example, Appeal 2021-001512 Application 15/447,360 6 Cu and Sn. Id. Nakano goes on to state that when Cu is used as the high melting point metal and Sn is used as the low melting point metal, and “the connecting part is loaded with stress due to distortion resulting from a difference in the coefficient of linear expansion generated by thermal shock or the like, this may result” in crack formation in the connecting part. Id. ¶¶ 5, 6, 12 (emphasis added). Here, we observe that Nakano conducted a “thermal shock test in which a cycle of holding a sample for 30 minutes under the temperature conditions of -40° C. and +85° C., respectively was repeated a thousand times.” Id. ¶ 87. Based on that test, Nakano drew conclusions regarding “joint strength.” Id. ¶ 91. On this appeal record, Appellant fails to address Nakano’s discussion of thermal shock as it relates to joint fracture, and thus mischaracterizes Nakano’s teachings as critical of combining Cu and Sn generally. Appeal Br. 4-5. In any event, we determine that Nakano’s concern regarding connections that are potentially exposed to thermal shock and which “may result” in crack formation if so exposed does not rise to the level of a teaching away on the facts before us. Nakano ¶ 6. Rather, we agree with the Examiner that the skilled artisan, armed with the teachings of Nakano, would have been motivated to consult Sugimoto’s disclosure regarding its metallic copper powder’s “hydrogen reduction loss” / “weight reduction ratio” value of 0.26%. Final Act. 4, 12; Sugimoto ¶ 29. Indeed, Nakano expresses a desire to “eliminate” surface oxidation (¶ 39), and Appellant does not dispute the Examiner’s finding that “[m]inimizing the degree of oxidation as much as possible for metal powders for soldering is important in achieving improved solderability.” Final Act. 4, 12. Finally, Appellant’s argument regarding Sugimoto individually, i.e., that Sugimoto “would not form an intermetallic compound,” has no merit Appeal 2021-001512 Application 15/447,360 7 because it amounts to no more than attorney argument and does not account for the Examiner’s reliance on Nakano. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In sum, because Appellant fails to identify reversible error in the rejections, we sustain them. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 1, 4, 5, 7- 12, 20 103 Nakano, Liu, Sugimoto, Baba 1, 4, 5, 7- 12, 20 8, 13, 16-19 103 Nakano, Liu, Sugimoto, Baba, Baolin 8, 13, 16- 19 Overall Outcome 1, 4, 5, 7- 13, 16-20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED