Ex Parte Obata et al

Patent Trial and Appeal Board

Jun 5, 2018

13988236 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/988,236 07/23/2013
7055 7590 06/07/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Shinichi Obata
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P43915 2437
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI OBAT A, SHINY A HIRAOKA,
FUMIAKI HOSOKOSHI, A YUMU TATEOKA,
HIDEAKI MATSUSHIMA, KOICHI MIYAKE,
SAKIKO TOMONAGA, and TOMOYUKI MAEDA
Appeal2017-008733
Application 13/988,236 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-10 and 12.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as MITSUI MINING &
SMELTING CO., LTD. (Appeal Br. 3).
Appeal2017-008733
Application 13/988,236
Independent claim 1 below is illustrative of the subject matter on
appeal (emphases added):
1. A surface-treated copper foil provided with a rust-
proofing treatment layer on both surfaces of a copper foil,
wherein the rust-proofing treatment layer comprises a
zinc layer consisting essentially of zinc, having a zinc amount of
20 mglm2 to 1,000 mg/m2;
wherein the copper foil contains carbon, sulfur, chlorine
and nitrogen as small amount elements;
a sum amount of the small amount elements is 100 ppm
or more; and
an amount of the carbon is 20 ppm or more, an amount
of the sulfur is 5 ppm or more, an amount of the chlorine is 15
ppm or more, and an amount of the nitrogen is 5 ppm or more,
wherein the amount of the carbon is less than or equal to
470 ppm, the amount of the sulfur is less than or equal to 600
ppm, the amount of the chlorine is less than or equal to 600
ppm, and the amount of the nitrogen is less than or equal to 180
ppm, and
wherein a tensile strength of the surface-treated copper
foil after heat treatment at 350°C for 60 min in an inert gas
atmosphere is 40 kgflmm2 or more.
The Examiner maintains the following rejections2 :
(a) claims 1, 2, 5-7, 10, and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki et al. (US 2011/0171491 Al, published July 14,
2011) ("Suzuki"); and
(b) claims 3, 4, 8, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Fatcheric et al. (US 5,679,230 A, issued
Oct. 21, 1997) ("Fatcheric").
2 We refer to the Specification, filed May 17, 2013 ("Spec."); Appeal Brief,
filed Feb. 9, 2017 ("Appeal Br."); the Examiner's Answer, notice emailed
Apr. 14, 2017 ("Ans."), and the Reply Brief filed May 26, 2017 ("Reply
Br.").
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Application 13/988,236
§ 103(a) Rejection over Suzuki
ANALYSIS
Claims 1, 2, 5-7, 10, and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Suzuki. Appellants present arguments for claims 1,
5, and 6 (Appeal Br. 9-27). Appellants do not argue claims 2, 7, 10, and 12 3
separately from claim 1 (id.). Therefore, we address claims 1, 2, 7, 10, and
12 as a first group, claim 5 as a second group, and claim 6 as a third group.
Claims 1, 2, 7, 10, and 12
Appellants' principal argument on appeal is that the Examiner
impermissibly relies upon inherency and therefore the Examiner has not set
forth a prima facie case of obviousness (Appeal Br. 9-14; Reply Br. 2-3, 7-
8). Specifically, Appellants contend the tensile strength recited in claim 1
would not necessarily be the result of the foil suggested by Suzuki because
Appellants' examples and comparative examples demonstrate the copper foil
suggested by Suzuki would not possess the claimed tensile strength (Appeal
Br. 14--18). Further, Appellants argue the Examiner has improperly
redefined the disclosed ranges of Suzuki by indicating the tensile strength
recited in claim 1 would not necessarily be the result for the entire range of
the copper composition and zinc layer combination suggested by Suzuki
(Reply Br. 3-5).
Appellants' arguments are unpersuasive. The Examiner finds Suzuki
discloses a copper foil containing chlorine, nitrogen, sulfur, and carbon in
amounts that overlap the ranges recited in claim 1 (Ans. 2). Suzuki discloses
3 Appellants present separate arguments for claim 12 but the arguments
merely cite the arguments asserted for claim 1 (Appeal Br. 26-27).
Therefore, we do not treat claim 12 as being separately argued from claim 1
and group claim 12 with claim 1.
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Application 13/988,236
an electrodeposited copper foil including the following amounts of elements
when measured as intensity ratios against copper via Secondary Ion Mass
Spectrometry (SIMS): chlorine less than 0.5%, nitrogen less than 0.005%,
sulfur less than 0.005%, and carbon less than 0.1 % (Suzuki i-fi-f l, 55).
Therefore, Suzuki's disclosure supports the Examiner's findings. To the
extent Suzuki discloses embodiments having a composition outside of the
ranges recited in claim 1 (e.g., compositions in Table 2 of Suzuki having too
little or too much carbon, sulfur, chlorine, and/or nitrogen), Suzuki discloses
compositional ranges in paragraph 55 that overlap those recited in claim 1.
A prima facie case of obviousness arises when the ranges of a claimed
composition overlap the ranges disclosed in the prior art (In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003)).
The Examiner finds Suzuki discloses that the foil can have a surface
treated layer that can include zinc in an amount of 2 mg/ dm2 or less, which
corresponds to 200 mg/m2 or less and overlaps the range of zinc amount
recited in claim 1 (Ans. 3). Suzuki discloses that at least one surface of the
copper foil includes a surface treated layer, which can include zinc in an
amount of 2 mg/dm2 or less (Suzuki i161). Thus, Suzuki's disclosure
supports these findings as well.
The Examiner further finds Appellants' Specification describes the
recited copper composition (i.e., the inclusion of carbon, sulfur, chlorine,
and nitrogen in the recited amounts) and zinc layer in the claimed amount as
providing the tensile strength recited in claim 1 (Ans. 3, 6-10). We agree
that Appellants' Specification describes the copper composition and zinc
layer in such a manner. Paragraph 28 of the Specification states "when the
copper foil contains carbon, sulfur, chlorine or nitrogen described above and
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Application 13/988,236
has at least a sum amount thereof is 100 ppm or more, the copper foil
exhibits excellent physical strength." Paragraph 29 of the Specification
states "[p ]roper amounts of small amount elements contained in the grain
structure of a copper foil make a grain size of the electro-deposited copper
foil 1.0 µm or less and provide excellent tensile strength as received of 50
kgf/mm2 or more to the copper foil." Paragraph 3 8 of the Specification
discloses a zinc layer is formed on both surfaces of a copper foil in a
preferred amount of 20 mg/m2 to 1000 mg/m2 and that "[b ]y providing the
zinc layers in such a manner, softening resistance performance against
heating of an electro-deposited copper foil is improved, and decrease in
tensile strength after heat treatment is hindered."
Moreover, paragraph 95 of the Specification states "a sufficient
softening resistance performance is ensured when a rust-proofing treatment
layer of a surface-treated copper foil using a 'copper foil containing carbon,
sulfur, chlorine or nitrogen, and having at least a sum amount of 100 ppm or
more' is constituted of zinc, and further the zinc amount of either surface is
20 mg/m2 to 1,000 mg/m2." In reviewing the examples and comparative
examples set forth in the Specification, paragraph 132 of the Specification
discloses "when the copper foil which satisfies ground specification of a
'copper foil containing carbon, sulfur, chlorine or nitrogen and having at
least a sum amount thereof of 100 ppm or more' is used" and has a zinc or
zinc-based composite layer having a zinc amount of 20-1000 mg/m2, "when
the above-mentioned specifications are satisfied, a good softening resistance
performances, 'tensile strength of 40 kgf/mm2 or more after heat treatment at
350°C for 60 min' and 'tensile strength of 35 kgf/mm2 or more after heat
treatment at 400°C for 60 min' can be provided in the surface-treated copper
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Application 13/988,236
foil." The above statements in the Specification disclose the claimed copper
composition and layer of zinc in the recited amount achieve the tensile
strength recited in claim 1.
As a result, the Examiner's findings demonstrate that the claimed
copper foil is identical or substantially identical to a copper foil having a
zinc surface treated layer that is suggested by Suzuki. See In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products are
identical or substantially identical, the USPTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product); see also PAR Pharm., Inc. v. TWI
Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (a limitation is
inherently disclosed "when the limitation at issue is the 'natural result' of the
combination of prior art elements").
Appellants assert the Examiner improperly relies upon Appellants'
disclosure to support the obviousness rejection (Reply Br. 5-7). This is
unpersuasive because Appellants' disclosure is merely cited to show that the
copper foil suggested by Suzuki is identical or substantially identical (i.e.,
has a surface treated layer and a copper composition identical or
substantially identical) to that claimed and thus would possess the tensile
strength recited in claim 1. As described by Appellants' Specification (e.g.,
Spec. i-f 132), using the copper composition recited in claim 1 with a zinc
layer having the amount of zinc recited in claim 1 would achieve a tensile
strength of 40 kgf/mm2 or more after heat treatment at 350°C for 60 minutes.
Based on the foregoing, the Examiner has set forth a prima facie case
of obviousness and the burden properly shifted to Appellants to show that
the copper foil suggested by Suzuki would not possess the tensile strength
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Application 13/988,236
recited in claim 1 (Best, 562 F.2d at 1254--55 (discussing In re Swinehart,
439 F.2d 210 (CCPA 1971) and Jn re Ludtke, 441F.2d660 (CCPA 1971))).
Appellants, however, have not presented persuasive evidence or sufficient
technical reasoning that the copper foil suggested by Suzuki would not
possess the tensile strength recited in claim 1. For instance, the amount of
zinc for the zinc layer of comparative specimen 1 in Table 1 of Appellants'
Specification (Spec. i-fi-190, 92) is less than 20 mg/m2, which is outside the
range disclosed by Suzuki. Comparative specimen 2-1 and the reference
specimen in Table 2 lack a zinc layer and all of comparative specimens 2-1,
2-2, and 2-3 lack sulfur and nitrogen (id. i-fi-f 103, 105) while Suzuki discloses
its copper composition can include up 0.005% sulfur and up to 0.005%
nitrogen (Suzuki i155). Nor do Appellants submit evidence of unexpected
results for the claimed copper foil.
For instance, Appellants further argue the heat treatment used by
Suzuki is 320°C for 60 minutes, not 350°C for 60 minutes, and the results
for specimens heat treated at 400°C in their Specification demonstrate an
increase in heat treatment temperature would decrease the resulting tensile
strength (Appeal Br. 18-20). This argument, however, focuses solely on the
effect of an increase in temperature without accounting for the effect of
using Suzuki's zinc surface treated layer with the copper composition.
Indeed, Appellants note the increase in strength between a specimen lacking
a zinc layer and a specimen having a zinc layer in Table 2 of their
Specification and state "Table 2 of the instant application demonstrates the
effect of the presently claimed zinc layer on the tensile strength of the
presently claimed copper foil after heat treatment" (Appeal Br. 18). More
specifically, Table 2 of Appellants' Specification includes results for
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example specimens 2-1 and 2-2, which include zinc layers having respective
zinc amounts of 195 mg/m2 and 539 mg/m2, and a reference specimen
having the same copper composition but no zinc layer (Spec. i-f 105). Table
2 states the reference specimen achieved a tensile strength of 14.9 kgf/mm2
after heat treatment at 3 50°C for 60 minutes while exemplary specimens 2-1
and 2-2 achieved tensile strengths of 64.6 and 67 .5 kgf/mm2, respectively for
the same heat treatment (id.). Thus, Appellants' examples demonstrate a
zinc layer provides a significant increase in the tensile strength of a copper
foil relative to a foil lacking the zinc layer, even after a heat treatment as
recited in claim 1. Appellants have not demonstrated or persuasively argued
that any asserted decrease in tensile strength due to an increase in heat
treatment temperature (i.e., from 320°C to 350°C) would diminish, offset, or
otherwise eliminate the increase in strength provided by the use of Suzuki's
zinc surface treated layer with its copper composition.
In addition, Appellants contend the copper composition disclosed by
Suzuki is based upon SIMS analysis, which does not determine the
concentrations of each element in Suzuki's copper foil and is qualitative in
nature due to its detection limits (Appeal Br. 20-23). As stated by the
Examiner at pages 17-18 of the Examiner's Answer, Suzuki nevertheless
discloses ranges for carbon, sulfur, chlorine, and nitrogen that overlap those
recited in claim 1 (see Suzuki i-f 55). A reference is presumed to be enabling
(In re Sasse, 629 F.2d 675, 681(CCPA1980) (it is applicant's burden to
demonstrate non-enablement of a reference)). Appellants have not cited to
evidence or persuasive technical reasoning that Suzuki's disclosure,
including its process for making a copper foil, would not have enabled one
of ordinary skill in the art to make or use the copper foil it discloses
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Application 13/988,236
(including the amounts of carbon, sulfur, chlorine, and nitrogen Suzuki
discloses) without undue experimentation.
In view of the above, Appellants' arguments do not identify a
reversible error in the Examiner's rejection of claim 1. A preponderance of
the evidence in the record supports the Examiner's rejection.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's rejection of claims 1, 2, 7, 10, and 12.
Claim 5
Claim 5 depends from claim 1 and further recites "wherein the copper
foil is an electro-deposited copper foil having a grain size as received of 1.0
µm or less."
Appellants argue the copper foil of Suzuki would not possess the
grain size recited in claim 5 because Suzuki discloses that 80-95% of its
grains have a size of 5 µm or more (Appeal Br. 23-24).
The Examiner finds Suzuki discloses a copper composition
overlapping that recited in claim 1 and Appellants' Specification states that
grain size is determined by the composition of the copper foil (Ans. 18-20).
As noted above with regard to the rejection of claim 1, paragraph 29
of the Specification states "[p ]roper amounts of small amount elements
contained in the grain structure of a copper foil make a grain size of the
electro-deposited copper foil 1.0 µm or less and provide excellent tensile
strength as received of 50 kgf/mm2 or more to the copper foil." Thus, the
Examiner has provided a reasonable basis that the composition of Suzuki is
identical or substantially identical to that claimed and the claimed grain size
would result from the claimed composition.
Moreover, Suzuki states a grain size of 5 µm or more for 70% or more
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Application 13/988,236
of its grains is preferred (id. i-f 13). As stated by the court in Merck, "the fact
that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered" (Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989), quoting Jn re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
To the extent Suzuki discloses embodiments having compositions outside
the ranges recited in claim 1 and grain sizes outside the range recited in
claim 5, Suzuki discloses compositional ranges that overlap with those
recited in claim 1 (Suzuki i-f 55), as discussed above with regard to the
rejection of claim 1, and thus would possess the grain size recited in claim 5,
as stated in paragraph 29 of Appellants' Specification.
Therefore, the Examiner has set forth a prima facie case of
obviousness and Appellants' arguments do not identify a reversible error in
the Examiner's rejection of claim 5.
Claim 6
Claim 6 depends from claim 1 and further recites "wherein the copper
foil is an electro-deposited copper foil having tensile strength as received of
50 kgf/mm2 or more."
Appellants assert the copper foil of Suzuki would not possess the
received strength recited in claim 6 (Appeal Br. 25-26). Appellants'
arguments are unpersuasive. As discussed above with regard to the rejection
of claim 5, Suzuki discloses a composition overlapping the ranges recited in
claim 1 and paragraph 29 of Appellants' Specification states the composition
achieves an as received tensile strength of 50 kgf/mm2 or more. Therefore,
Appellants' arguments do not identify a reversible error in the Examiner's
rejection of claim 6.
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For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1, 2, 5-7,
10, and 12 over Suzuki.
§ 103(a) Rejection over Suzuki and Fatcheric
Claims 3, 4, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Fatcheric. Appellants contend
Fatcheric fails to remedy the deficiencies of Suzuki discussed with regard to
the§ 103(a) rejection over Suzuki (Appeal Br. 27-28). For the reasons set
forth above, there are no deficiencies in the rejection of claim 1 that require
curing by Fatcheric. Therefore, we sustain the Examiner's§ 103(a) rejection
over Suzuki and Fatcheric.
DECISION
The Examiner's rejection of claims 1-10 and 12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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