Ex Parte Hamilton et al

Patent Trial and Appeal BoardDec 16, 2014

12693548 (P.T.A.B. Dec. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ROBERT HAMILTON, ERNEST LONG, and ANDREW M. KROL ________________ Appeal 2013-002957 Application 12/693,548 Technology Center 1700 ________________ Before TERRY J. OWENS, PETER F. KRATZ, and ROMULO H. DELMENDO, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for treating a laser-activatable nonconductive substrate. Claim 1 is illustrative: 1. A method of treating a laser-activatable non-conductive substrate, the method comprising the steps of: a) treating the non-conductive substrate with an aqueous composition comprising: i) a thiol functional organic compound; and ii) preferably, a surfactant; Appeal 2013-002957 Application 12/693,548 2 b) selectively laser activating portions of a surface of the non- conductive substrate; e) contacting the substrate with an electroless plating bath such that areas of the substrate which were contacted by the laser plate, but areas that were not contacted by the laser do not plate. The References Rolker US 3,900,320 Aug. 19, 1975 Thorn US 5,476,580 Dec. 19, 1995 Frey US 7,160,583 B2 Jan. 9, 2007 Schoedner US 2007/0092638 A1 Apr. 26, 2007 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 4, and 9–12 over Rolker in view of Schoedner, claims 2, 3, and 15 over Rolker in view of Schoedner and Frey and claims 5–8, 13, and 14 over Rolker in view of Schoedner and Thorn. OPINION We reverse the rejections. We need address only the independent claims, i.e., claims 1 and 15.1 Those claims require treating a laser activatable nonconductive substrate with an aqueous composition comprising a thiol-functional organic compound. To meet that claim requirement the Examiner relies upon Rolker (Final Rejection mailed June 4, 2012, pp. 6–7). Rolker discloses a method for forming a metal image on a nonconductive (plastic or ceramic) substrate, comprising applying to the 1 The Examiner does not rely upon Frey or Thorn for any disclosure that remedies the deficiency in the references applied to the independent claims (Final Rejection mailed June 4, 2012, pp. 9–12). Appeal 2013-002957 Application 12/693,548 3 substrate a photosensitive pre-plate solution including a photoreactable nitrogen atom-containing compound dispersed with a photoinitiator in a hydrophilic film-forming binder material comprising fine particles of metal and a photographically inert solid-film-forming component, which can be thiolated gelatin, to achieve a hydrophilic continuous phase which retains the dispersed phase in discrete particle form (abstract; col. 11, ll. 23–60). Thus, Rolker’s thiolated gelatin is applied to the substrate during the process of forming thereon a photosensitive pre-plate solution that renders the substrate light activatable, rather than being applied to a substrate that already is light activatable. The Examiner argues that “[t]he limitation ‘the non-conductive substrate’ is not the same as ‘a laser activatable non-conductive substrate’” (Ans. 3). Claims 1 and 15 require “treating the non-conductive substrate”, not “treating a non-conductive substrate”. The only substrate to which “the” can refer is the previously-recited laser-activatable nonconductive substrate. Hence, those claims require that the nonconductive substrate which is treated with the thiol functional organic compound is laser activatable before that treatment.2 Because Rolker’s nonconductive substrate is not light activatable until after it has been treated with the thiolated gelatin-containing composition, it does not meet that claim requirement. Thus, the Examiner has not carried the burden of establishing a prima facie case of obviousness. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 2 That claim interpretation is consistent with the Appellants’ Specification (Spec. 4:9–25) and argument (Br. 7). Appeal 2013-002957 Application 12/693,548 4 1988); In re Piasecki, 745 F.2d 1468, 1472 (CCPA 1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). Accordingly, we reverse the rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1, 4, and 9–12 over Rolker in view of Schoedner, claims 2, 3, and 15 over Rolker in view of Schoedner and Frey and claims 5–8, 13, and 14 over Rolker in view of Schoedner and Thorn are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED cdc