Woojin Lee et al.Download PDFPatent Trials and Appeals BoardDec 12, 201914766616 - (D) (P.T.A.B. Dec. 12, 2019) 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. 14/766,616 08/07/2015 Woojin LEE 7002-9 6721 35161 7590 12/12/2019 DICKINSON WRIGHT PLLC 1825 EYE ST., NW SUITE 900 WASHINGTON, DC 20006 EXAMINER DIGGS, TANISHA ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 12/12/2019 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): dwpatents@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOOJIN LEE, SHUN WAKASAKI, and TAKAYUKI KANAMORI Appeal 2019-002545 Application 14/766,616 Technology Center 1700 Before JAMES C. HOUSEL, GEORGE C. BEST, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9, 19, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Tokusen Kogyo Co., Ltd as the real party interest. Appeal Br. 1. Appeal 2019-002545 Application 14/766,616 2 BACKGROUND The subject matter on appeal relates to electrically conductive paste, such as may be used in manufacture of a printed circuit board. Spec. ¶¶ 1, 2. Claim 9—the sole independent claim on appeal—reads: 9. An electrically conductive paste comprising: (1) fine particles that are flake-like, whose main component is silver, and whose surface has an arithmetical mean roughness Ra of not larger than 8 nm, a median size (D50) of the particles is 2-8 μm, and an average thickness Tave of the particles of 20-50 nm, and where a metal structure of the main component is monocrystalline; and (2) a solvent. Appeal Br. (Claims Appendix). REJECTIONS I. Claims 9, 19, and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over Iseda2 and Fukuoka.3 II. Claims 9, 19, and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over Shiozawa4 and Fukuoka. 2 US 2015/0252224 A1, published September 10, 2015. 3 JP 2005240013 A, published September 8, 2005. 4 US 2015/0104625 A1, published April 16, 2015. Appeal 2019-002545 Application 14/766,616 3 III. Claims 9, 19, and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over Shiozawa, Nemai,5 Cotterell,6 and a document titled Roughness measurements of stainless steel surfaces.7 OPINION Rejections I and II: Obviousness over Iseda or Shiozawa, in view of Fukuoka. The Examiner finds that Iseda discloses or suggests a conductive composition that meets all of the characteristics recited in claim 9, except that Iseda is silent regarding the arithmetical mean roughness of the flake- like particles contained in the composition. Final Act. 2–3. Likewise, the Examiner finds that Shiozawa discloses a composition that meets claim 9, but for Shiozawa’s silence on the roughness of the flake-like particles. Id. at 4. To address the roughness recitation, the Examiner finds that Fukuoka discloses a coating composition including metal flakes preferably having a roughness value of 15nm or less, and that Fukuoka characterizes the disclosed coating as smooth with high luminance, brightness, and good flop. Id. at 3, 4 (citing Fukuoka ¶¶ 1, 8, 13). In light of those findings, the Examiner determines that Fukuoka would have provided a reason to limit the flake-like particles in Iseda or Shiozawa to a roughness of 8 nm or less— 5 Nemai et al., Chipless and Conventional Radio Frequency Identification: Systems for Ubiquitous Tagging, 187–89 (Monash University, IGI Global, (2012)). See Notice of References Cited, November 27, 2017. 6 Cotterell, Fracture and Life, World Scientific, 390 (Imperial College Press, (2010)). See Notice of References Cited, November 27, 2017. 7 Neither the Examiner’s citation of the document nor the document itself identifies its source or date of publication. Nonetheless, Appellant does not object to the Examiner’s reliance upon the document. Appeal 2019-002545 Application 14/766,616 4 namely, “to provide a coating composition with excellent light luminance, flop property, high brightness and smooth appearance.” Id. at 3. Appellant argues, inter alia, that Fukuoka is directed to non- analogous art, and that Fukuoka’s teaching of optical properties in paint would not have provided a reason to modify particle roughness in Iseda’s or Shiozawa’s electrically conductive paste. See Appeal Br. 11 (“Fukuoka et al. is not in the same endeavor as the present invention or Shiozawa.”); id. at 7 (“One skilled in the art would not consider the [optical] properties of paint composition as beneficial or useful in the conductive composition of Iseda et al.”). See also id. at 12 (“The automotive metallic paint of Fukuoka et al. containing aluminum particles for providing the desired optical properties and smooth texture does not suggest modifying the composition of Shiozawa.”). To be properly relied upon in an obviousness analysis, a prior art reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (i) the reference must be from the same field of endeavor as the claimed invention; or (ii) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “A reference is reasonably pertinent if it, as a result of its subject matter, ‘logically would have commended itself to an inventor’s attention in considering his problem.’” K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citing Innovention Toys, 637 F.3d at 1321). The claimed invention is a conductive paste. The Specification identifies such a conductive paste as “used for manufacturing a printed circuit board of an electronic device,” particularly, printing a conductive Appeal 2019-002545 Application 14/766,616 5 pattern to electrically connect elements. Spec. ¶ 2. The properties attributed to the roughness of flake-like particles in the paste are described in relation to such use—namely, printing, sintering, and electrical conductivity. Id. ¶¶ 12–14. Fukuoka is directed to automobile paint. Fukuoka ¶ 1. Thus, Fukuoka plainly is not from the same field of endeavor as the claimed invention. Nor does the Examiner present reasoning to support a determination that Fukuoka would have been reasonably pertinent to the particular problem with which the inventor is involved. The instant invention seeks to “improve printing characteristics, thermal conductivity, and electrical conductivity.” Spec. ¶ 6. Fukuoka, in contrast, is concerned with the look and feel of paint. Fukuoka Abstract (“To provide a metallic coating composition for automobiles which realizes beautiful coating film appearance having higher luster color and reduced in particulate feeling.”). Because Fukuoka is neither from the inventor’s field of endeavor nor reasonably pertinent to the inventor’s problem, we are persuaded that Fukuoka is non-analogous art. Moreover, the Examiner does not explain why the properties of Fukuoka’s paint—e.g., brightness and smooth feel—would have been considered useful or desirable in an electrically conductive paste. Iseda discusses use of conductive paste for forming electrodes or circuits of electronic components. Iseda ¶ 2. Shiozawa discusses a similar use. Shiozawa ¶ 1 (“[T]he present invention relates to an electroconductive composition that is useful for forming, for example, a conductor pattern circuit of a printed wiring board.”). We are given no reason why these conductive pastes would have benefitted from brightness, smooth feel, or any other characteristic of Fukuoka’s automobile paint. Accordingly, even Appeal 2019-002545 Application 14/766,616 6 if Fukuoka were available as analogous art, the record is devoid of any rational underpinning to support the Examiner’s articulated reason why one of ordinary skill would have modified either Iseda or Shiozawa based upon the disclosure or Fukuoka. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR Int’l Co., 550 U.S. at 418. For the foregoing reasons, Rejections I and II are not sustained. Rejection III: Obviousness over Shiozawa, Nemai, Cotterell, and document titled Roughness measurements of stainless steel surfaces. As noted, the Examiner finds that Shiozawa discloses a composition that meets claim 9, but for Shiozawa’s silence on the roughness of the flake- like particles. Final Act. 4. Relevant to Appellant’s arguments on appeal, the Examiner finds that Nemai teaches that “[i]ncreased surface roughness will decrease conductivity,” and that Nemai, therefore, would have provided a reason to minimize surface roughness in Shiozawa’s flake-like particles to increase conductivity. Id. at 6–7 (citing Nemai, paragraph bridging pp. 187 and 189). Appellant argues that Nemai is silent on surface roughness of particles or flakes and, instead, discusses only roughness on the surface of deposited ink. Appeal Br. 13; Reply Br. 6. We agree. Nemai states, “[t]he particle shape, size and loading will to some extent determine the surface roughness of the ink after transfer.” Nemai 187 (emphasis added). Nemai further explains that substrate roughness contributes to surface roughness of an ink coating. Id. These passages, which the Examiner relies upon, support Appeal 2019-002545 Application 14/766,616 7 Appellant’s argument that Nemai discusses surface roughness of printed or otherwise deposited ink, not surface roughness of individual particles or flakes contained within the ink. The Examiner does not rely upon any of the other cited references to cure that deficiency. As such, we are persuaded that the Examiner’s finding that Nemai would have provided a reason to minimize surface roughness of particles contained within Shiozawa’s conductive ink is not supported by a preponderance of the evidence of record. For the foregoing reason, Rejection III also is not sustained. CONCLUSION The Examiner’s decision rejecting claims 9, 19, and 21 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9, 19, 21 103 Iseda, Fukuoka 9, 19, 21 9, 19, 21 103 Shiozawa, Fukuoka 9, 19, 21 9, 19, 21 103 Shiozawa, Nemai, Cotterell, Roughness measurements of stainless steel surfaces 9, 19, 21 Overall Outcome 9, 19, 21 REVERSED Copy with citationCopy as parenthetical citation