Woojin Lee et al.

Patent Trials and Appeals Board

Dec 12, 2019

14766616 - (D) (P.T.A.B. Dec. 12, 2019)

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

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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.
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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.
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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
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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
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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
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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