Appeal No. 2006-1352
Application 10/250,683
semiconductor element and the substrate can be filled by determining a workable or optimum
maximum particle size and average particle size for the organic filler based on the height of the
space, which is generally in the range of 50 µm to 150 µm, and on the viscosity of the
composition to reasonably fill the space, disclosing a maximum particle size of 30 µm or less
and an average particle size range of 0.5 µm to 50 µm for this purpose (e.g., col. 17, l. 49, to col.
18, l. 10, and col. 28, ll. 44-66; see also col. 24, ll. 30-36, col. 28, l. 66, to col. 29, l. 3, col. 30, l.
55, to col. 31, l. 10).
We find substantial evidence in the combined teachings of Mine and Hayase supporting
the examiner’s determination. Indeed, one of ordinary skill in this art would have recognized
from the description and illustration of the heat conductive filler particles, including the bimodal
distribution of particle sizes, in Mine that different mean or average particle sizes can be used in
the same silicone resin containing compositions taught by the reference. This person would have
further been taught by Hayase that the average particle size of such fillers can be varied based on
the height of the space between electronic components to be filled by a composition and the
desired viscosity of such a composition used for similar purpose disclosed by this reference.
Thus, prima facie, the combined teachings of the reference would have taught this person that
the optimum or workable range of particle sizes, whether characterized as mean or average, for
the silicone resin containing compositions of Mine can be determined by routine experimentation
as evinced by Mine and Hayase. Accordingly, one of ordinary skill in this art would have
reasonably arrived at the claimed invention encompassed by appealed claim 1 without recourse
to appellants’ specification. See In re Aller, 220 F.2d 454, 456-58, 105 USPQ 233, 235-37
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine experimentation.”).
With respect to claim 10, the examiner submits that, prima facie, Sato would have taught
one of ordinary skill in the art to employ a ratio of RSiO3/2 units (T units) and R2SiO2/2 units
(D units) that falls within the claimed range (answer, pages 6-7). Mine would have specifically
disclosed “organopolysiloxanes having R2SiO2/2 units and RSiO3/2 units, [and]
organopolysiloxanes having R2SiO2/2 units and RSiO3/2 units and SiO4/2 units,” which must
prosecution of the appealed claims before the examiner subsequent to the disposition of this
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007