Ex Parte Karagöl

Patent Trial and Appeal Board

Aug 12, 2016

13123934 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/123,934 04/13/2011
23908 7590 08/16/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Serdar Turan Karagol
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.
ATODP0107US 2548
EXAMINER
RIPA, BRYAND
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERDAR TURAN KARAGOL
Appeal2014-009795
Application 13/123,934
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
AVEL YN M. ROSS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1-13 and 17. Claims 14--16 and 18 are also
pending but have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claimed subject matter is directed to a process for depositing functional
layers of zinc or zinc alloys from alkaline zinc or zinc alloy plating baths
comprising the steps of: (i) providing a zinc or zinc alloy bath; (ii) electrolytically
depositing a zinc or zinc alloy layer on a substrate; (iii) removing at least part of
Appeal2014-009795
Application 13/123,934
the zinc or zinc alloy bath, conveying it through an ion exchange resin, and
separating cyanide from the conveyed part; and (iv) returning the conveyed part to
the zinc or zinc alloy bath.
Claim 1, the sole independent claim on appeal, is reproduced below from the
Claims Appendix of the Appeal Brief dated April 2, 2014 ("App. Br.").
1. Process used to deposit functional layers of zinc or zinc alloys
from alkaline zinc or zinc alloy plating baths which contain
nitrogenous organic additives, a soluble zinc salt and optionally other
metal salts, comprising the following steps:
(i) providing a zinc or zinc alloy bath containing the above
mentioned components;
(ii) electrolytically depositing a zinc or zinc alloy layer on a
substrate that is to be coated according to known processes;
(iii) removing at least a part of the zinc or zinc alloy bath and
conveying the part that has been removed and which contains cyanide
ions and nitriles that have been formed during the deposition
according to step (ii) through a device that includes an ion exchange
resin which is designed specifically for separating cyanide ions and
separating cyanide from the conveyed part;
(iv) returning the conveyed part to the zinc or zinc alloy bath.
App. Br. 14.
The claims on appeal stand rejected as follows:
(1) claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over Opaskar et
al. 1 in view of Eckles et al.,2 Sloan, 3 and Crits;4
1 US 2006/0201820 Al, published September 14, 2006 ("Opaskar").
2 US 2007/0023280 Al, published February 1, 2007 ("Eckles").
3 US 3,661,734, issued May 9, 1972 ("Sloan").
4 US 4,267,159, issued May 12, 1981 ("Crits").
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Application 13/123,934
(2) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Opaskar in
view of Eckles, Sloan, and Crits, as evidenced by Sarlis; 5
(3) claims 10-12 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Opaskar in view of Eckles, Sloan, and Crits, and further in view of George, Jr. 6 and
Coltrinari;7 and
(4) claim 13 under 35 U.S.C. § 103(a) as unpatentable over Opaskar in
view of Eckles, Sloan, and Crits, and further in view of Leutwyler. 8
B. DISCUSSION
The Appellant does not direct us to any error in the Examiner's findings of
fact in the rejections on appeal. Rather, the Appellant argues that "[t]he Examiner
has cobbled together the various pieces of the claimed invention in an attempt to
support the asserted obviousness thereof, but it is quite clear that the location,
selection and combination of elements can only have been guided by Appellant's
own disclosure and therefore is based on improper use of hindsight."9 App. Br. 6-
,...,
I.
The Appellant's argument is not persuasive of reversible error for the
reasons set forth by the Examiner in the Examiner's Answer dated July 29, 2014
("Ans."). We add the following for emphasis.
Opaskar discloses a process for electroplating a zinc-nickel alloy on a
substrate including the step of providing an aqueous zinc-nickel electroplating bath
comprising water, nickel ion, zinc ion, and at least one complexing agent which,
5 US 2007/0213415 Al, published September 13, 2007 ("Sarlis").
6 US 6,245,128 Bl, issued June 12, 2001 ("George").
7 US 4,708,804, issued November 24, 1987 ("Coltrinari").
8 US 5,376,256, issued December 27, 1994 ("Leutwyler").
9 See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (impermissible
hindsight is "knowledge gleaned only from applicant's disclosure").
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Appeal2014-009795
Application 13/123,934
according to one embodiment of the invention, may be an amine. Opaskar i-fi-1 4,
17.
The Examiner finds "ECKLES teaches that it is known in the art that
nitrites and cyanide ions are generated during a zinc or zinc alloy electroplating
process when a plating bath having amine-based additives is exposed to the surface
of the anode." Ans. 3--4 (citing Eckles i-fi-16, 39--41). The Examiner also finds
Eckles teaches that the presence of cyanide ions in a plating bath has deleterious
effects on the operation of the zinc plating process, such as reducing the brilliance
of the deposit and increasing the toxicity of the plating solution. Ans. 4 (citing
Eckles ,-r 39).
Based on the teachings of Eckles, the Examiner finds one of ordinary skill in
the art would have expected the electroplating process of Opaskar, which includes
an amine complexing agent, to generate cyanide ions. See Ans. 18 (finding that
"for the plating system of OP ASKAR in which the anode and cathode are not
separated, i.e. no divider, there would be cyanide ions formed by the interaction of
the amine-based additives with the anode"). Thus, the Examiner finds one of
ordinary skill in the art "would have been motivated to modify the process [of
Opaskar] so as to mitigate the problem created by the generation of these
byproducts [i.e., cyanide ions] which are known to interfere with the quality of the
plating process." Ans. 13. Significantly, the Appellant has failed to establish
otherwise.
In contrast to the claimed process which removes cyanide ions using an ion
exchange resin, the electroplating apparatus disclosed in Eckles "inhibit[s] the
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Application 13/123,934
electrolytic breakdown of electroplating bath additives in the electroplating bath." 10
Eckles i-f 18 (emphasis added). Nonetheless, the Examiner turns to Sloan to show
that, at the time of the Appellant's invention, it was known to remove undesired
ions (i.e., carbonate ions) from an electroplating solution using an ion exchange
resin. 11 Ans. 4, 13. It is of no moment in the obviousness rejection on appeal that
Sloan does not remove cyanide ions. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (test for obviousness "is what the combined teachings of the references
would have suggested to those of ordinary skill in the art"). The Examiner finds
Crits teaches that, at the time of the Appellant's invention, ion exchange resins
were also known to remove cyanide ions from an aqueous solution. Ans. 5, 13.
In one embodiment, Crits discloses that the cyanide freed from the resin
passes back to an ore treatment for reuse as a leaching agent. Crits, col. 2, 11. 17-
21. However, Crits also discloses that "[p ]ersons skilled in the electroplating art
or other industry using cyanide solutions will readily visualize applications or
extensions of this invention thereto with like benefit." Crits, col. 4, 11. 33-36
10 The electroplating apparatus disclosed in Eckles comprises, inter alia, an anode
assembly comprising an enclosure which defines an anolyte compartment. The
compartment is closed on all sides and the bottom by the enclosure, and at least
one wall of the enclosure can be an ion exchange membrane. Eckles i-f 19. The
anolyte compartment contains an anolyte, and an anode can be immersed in the
anolyte. Eckles discloses that the enclosure shields the anode from the
electroplating bath so that no bath contacts the anode. Eckles i-f 20.
11 The Examiner also relies on Sloan to show that a process for removing
undesirable ions from an electroplating bath was known to include the steps of ( 1)
removing a portion of the electrolyte solution from the plating vessel; (2) passing it
through an ion exchange resin to selectively remove the unwanted ion, and (3)
returning the treated portion of the electrolyte back to the electroplating vessel as a
way of purifying the electrolyte, as recited in steps (iii) and (iv) of claim 1. Ans.
4--5.
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Application 13/123,934
(emphasis added). Based on the teachings in Eckles, we find one of ordinary skill
in the electroplating art would have understood that cyanide ions generated during
Opaskar' s electroplating process would have deleterious effects on the zinc plating
process. Therefore, one of ordinary skill in the art would have disposed of the
cyanide freed from Crits' ion exchange resin in the modified Opaskar process. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton").
C. DECISION
The decision of the Examiner 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)(l)(iv).
AFFIRMED
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