Yang, Rui et al.

Patent Trials and Appeals BoardAug 21, 2019

14391459 - (D) (P.T.A.B. Aug. 21, 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. 14/391,459 10/09/2014 Rui Yang 68097US005 4603 32692 7590 08/21/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER WEYDEMEYER, ETHAN ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 08/21/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RUI YANG, HUI LUO, and CARL E. FISHER ____________ Appeal 2019-000857 Application 14/391,459 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, BRIAN D. RANGE, and SHELDON M. McGEE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3–14, and 16–20. (Appeal Br. 1.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 This Decision includes citations to the following documents: Specification filed October 9, 2014 (“Spec.”); Final Office Action mailed December 21, 2017 (“Final Act.”); Appeal Brief filed May 18, 2018 (“Appeal Br.”); Examiner’s Answer mailed September 14, 2018 (“Ans.”); and Reply Brief filed November 9, 2018 (“Reply Br.”). 2 Appellant/Applicant is 3M INNOVATIVE PROPERTIES COMPANY, which, along with 3M Company, is identified in the Appeal Brief as the real party in interest. (Appeal Br. 2.) Appeal 2019-000857 Application 14/391,459 2 THE INVENTION Appellant states the invention relates to thermally conductive substrate articles. (Spec. 1, ll. 3–4.) Claim 1 is representative and reproduced below from the Claims Appendix to the Appeal Brief: 1. An article comprising: a flexible thermally conductive polymeric layer comprising an epoxy resin and a long-strand polymeric nonwoven material embedded in the epoxy resin, wherein the polymeric nonwoven material is heat stable at about 280°C, and wherein the polymeric nonwoven material is a chemically etched polymeric nonwoven material having a density less than about 7g/m2. (Appeal Br. (Claims Appendix) 8.) REJECTION The Examiner rejected claims 1, 3–14, and 16–20 under 35 U.S.C. § 103 as obvious over Kanakarajan et al. (US 2009/0142567 A1; published June 4, 2009, hereinafter “Kanakarajan”), Fujimori (JP 2006-200066 A, published August 3, 2006, citations to English translation of record), Burch (US 5,024,858, issued June 18, 1991), with evidentiary support from Xin- Gui Li et al. (Thermal Degradation of Kevlar Fiber by High-Resolution Thermogravimetry, 71 J. APPL. POLY. SCI. 565–71 (1999)). (Final Act. 2–6; Ans. 3–7.) We limit our discussion to independent claim 1, which is sufficient for disposition of this appeal. Appeal 2019-000857 Application 14/391,459 3 ISSUE The Examiner found, inter alia, that Kanakarajan discloses a circuit board including a non-woven fabric embedded in an epoxy resin and Fujimori discloses a nonwoven fabric with a basis weight overlapping the claims, but Kanakarajan and Fujimori are silent with regard to chemical etching. (Final Act. 2–4.) The Examiner found that Burch discloses chemical etching nonwoven fabrics for circuit boards in order to form conducting or semiconducting metallic sites. (Id. at 4, citing Burch, col. 1, ll. 10–20 and 58–69; col. 2, ll. 1–10; col. 3, ll. 20–25.) The Examiner determined it would have been obvious to have etched the non-woven fabric of Kanakarajan and Fujimori “in order to provide regions of electrical conductivity (or semi-conductivity) having improved adhesion (Burch: col. 1, lines 10–20 and 58–69; col. 2, lines 1–10; col. 6, lines 43–45).” (Id.) The Examiner determined “[t]aking the three references as a whole, one of ordinary skill would recognize that the process of Burch may be leveraged to create the conductive and semiconductive portions innate to a circuit board with greater adhesion of the circuit pattern to the board (Burch: col. 6, lines 43–45).” (Id.) Appellant argues, inter alia, that one of ordinary skill in the art would have no reason to etch the fabric in Kanakarajan, which is embedded in the dielectric layer of the composite sheet disclosed therein, because there would be no contact between the circuit pattern and the fabric, and thus, no greater adhesion of the circuit pattern to the board. (Appeal Br. 3–5.) Appellant contends Burch is directed to providing metalized polymers useful as electrical conductors or semiconductors and there is no disclosure that a metalized polymer could be useful in a circuit board. As such, Appellant Appeal 2019-000857 Application 14/391,459 4 contends the Examiner does not have valid rational underpinning and has relied on impermissible hindsight. (Id. at 3–5.) Accordingly, the dispositive issue with respect to this rejection: Has Appellant identified a reversible error in the Examiner’s determination that it would have been obvious to have etched the fabric layer of Kanakarajan in view of Burch? DISCUSSION We are persuaded by Appellant’s arguments that the Examiner’s reasoning lacks sufficient rational underpinnings to support the rejection of claim 1. In particular, as Appellant points out, Kanakarajan discloses the metal is laminated on a major surface of the dielectric layer and not necessarily in direct contact with the non-woven embedded in the dielectric layer. (Appeal Br. 5, citing Kanakarajan ¶¶ 2, 8, and 158.) Indeed, in describing the method of making the composite sheets, Kanakarajan discloses that the base non-woven fabric is impregnated with a polymer matrix by coating the polymer matrix onto a non-woven fabric or the polymer matrix can be cast to form a film that is laminated to a non-woven sheet. (Kanakarajan ¶¶ 6, 25.) Thus, Kanakarajan discloses the non-woven fabric is embedded in the polymer matrix, rather than at the surface of the polymer matrix. In the Answer, the Examiner stated because the improved adhesion in Burch “is directly tied to having etched fibers, one of ordinary skill would need to have attached the metal portions to the etched fibers in order to obtain the improved adhesion.” (Ans. 9.) However, given the disclosure in Kanakarajan that the non-woven fabric is embedded in the polymer matrix in Appeal 2019-000857 Application 14/391,459 5 order to produce printed circuit boards, we agree with Appellant, the Examiner’s rationale that Burch’s disclosure with respect to producing metallized polymers for semiconductors “may be leveraged” is not sufficiently explained to support the rejection of claim 1. That is, Kanakarajan discloses a composite sheet with both a polymer matrix and non-woven fabric, whereas Burch discloses only metallized polymers. In this regard, we observe that Burch discloses that “due to the bonding of [the] metal to polymer, the metal penetrates uniformly into the polymer matrix,” where “[t]he penetration generates superior adhesion of metal to polymer.” (Burch, col. 6, ll. 27–45.) We also observe Kanakarajan discloses the composite sheets can firmly adhere to metal without using an adhesive. (Kanakarajan ¶ 158.) As a result of these differing disclosures, the Examiner has not provided a sufficient reason to support the position that one of ordinary skill in the art would have incorporated the etching of the non-woven fabric in Burch into the non-woven fabric of the composite sheet of Kanakarajan. Thus, the Examiner’s reasoning is not based on sufficient rational underpinnings. “‘[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.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appeal 2019-000857 Application 14/391,459 6 DECISION We reverse the Examiner’s decision rejecting claims 1, 3–14, and 16– 20. REVERSED