Appeal No. 2002-2031
Application 09/115,553
applied to claims 1 through 6, 9, 11 through 13 and 16, further in view of published European
Patent Application EP 0 512 489 to Ogura et al.;1 and claim 15 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Conn in view of Kawashima, as applied to claims 1 through
5, 9, 11 through 13 and 16, further in view to applicants’ admissions (specification, pages 2-4).2,3
We have considered with respect to each ground of rejection only the references which
appear in the statement of that ground of rejection, as set forth above, and none of the additional
references on which the examiner relies in addressing appellants’ arguments (answer, pages 7
and 8). See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970);
compare Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993).
There is no dispute that the claimed soldering paste for hard-soldering and coating parts
made of aluminum and/or aluminum alloy encompassed by appealed claim 1 differs from the
hard-soldering paste for the same materials of Conn by the addition of one or more fatty acids of
10 to 20 carbon atoms, or ammonium salts thereof, and that the examiner contends that, prima
facie, one of ordinary skill in this art would have been motivated to add such fatty acids and/or
ammonium salts to the paste of Conn by Kawashima in disclosing the same viscosity control
agents in a tin-lead alloy solder paste. Appellants argue that prima facie obviousness has not
been established in each of the grounds of rejection because one of ordinary skill in this art
would not have combined Conn and Kawashima because of the differences in the components
and application conditions, including substrate and temperature, of the respective pastes (brief
and reply brief in entirety). In response, the examiner contends that the references are directed to
soldering compositions and thus are analogous prior art, and that there is no evidence in the
record that the selection of a viscosity control agent is dependent on the application temperature
of the soldering paste (answer, e.g., page 7).
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching or suggestion in the applied prior art taken as a whole and/or knowledge
1 Ogura ‘489 is in the same family of patents as United States Patent No. 5,173,126, issued
December 22, 1992, to Ogura et al.
2 Claim 14 is also of record and has been withdrawn from consideration by the examiner under
37 CFR § 1.142(b). Claims 1 through 16 are all of the claims in the application. A copy of the
claims on appeal appears in the appendix to the brief.
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