Ex Parte Morii et al

Patent Trial and Appeal Board

Nov 2, 2012

12156839 (P.T.A.B. Nov. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/156,839 06/05/2008 Yutaka Morii 52626 5325
7590 11/02/2012
John J. Piskorski
Rohm and Haas Electronic Materials LLC
455 Forest Street
Marlborough, MA 01752
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
11/02/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUTAKA MORII and MASANORI ORIHASHI
____________

Appeal 2011-009846
Application 12/156,839
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, DEBORAH KATZ, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge

DECISION ON APPEAL
The Examiner finally rejected claims 1-11 of Application 12/156,839
under 35 U.S.C. § 103(a) as obvious. Appellants seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
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BACKGROUND
The ’839 application describes acidic solutions that are allegedly
useful for plating materials with gold and methods for the use of such acidic
solutions (Spec. 1).
Claim 1 of the ’839 application is representative and is reproduced
below:
1. An acidic gold alloy plating solution containing gold
cyanide or salt thereof, cobalt ions, chelating agent, between
0.05g/L and 10g/L of hexamethylene tetramine, and a glossing
agent, wherein the glossing agent of said plating solution is a
nitrogen atom containing compound with a carboxyl group or a
hydroxyl group, or a sulfur atom containing compound with a
carboxyl group.
(App. Br. 15).
REJECTIONS
1. The Examiner finally rejected claims 1-4 and 8-10 under 35
U.S.C. § 103(a) over U.S. Patent No. 4,591,415 (“Whitlaw,” issued May 27,
1986) in view of SU 1,788,096 A1 (“Elkind,” June 13, 1993).
2. The Examiner finally rejected claims 5 and 6 under 35 U.S.C.
§ 103(a) over Whitlaw in view of Elkind.
3. The Examiner finally rejected claims 7 and 11 under 35 U.S.C.
§ 103(a) as obvious over Whitlaw in view of Applicants’ Admitted Prior Art
and Elkind.
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DISCUSSION
As set forth above, the Examiner entered a series of three rejections of
the claims of the ’839 application under 35 U.S.C. § 103(a) as obvious over
the combination of Whitlaw and Elkind. Appellants’ appeal of all of these
rejections can be resolved by consideration of a single issue: Has the
Examiner provided an adequate reason for a person of ordinary skill in the
art to modify the acid plating bath described in Whitlaw by adding the
hexamethylene tetramine (or the combination of hexamethylene tetramine
and polyacrylic acid) described in Elkind? For the reasons set forth below,
we answer this question in the negative, and, therefore, we reverse the
Examiner’s rejections.
The Examiner found that Whitlaw describes each of the components
of the claimed electroplating bath (or the plating bath used in the claimed
methods) except for the hexamethylene tetramine (Ans. 5, 7, 9). The
Examiner relied upon Elkind as describing the use of a combination of
hexamethylene tetramine and polyacrylic acid in a gold electroplating bath
(id. at 5, 7, 9-10). Thus, the Examiner found that the combination of
Whitlaw and Elkind described every element of the ’839 application’s
claims (id. at 5-6, 7, 10).
The obviousness inquiry does not end there. As the Supreme Court
has explained, an obviousness determination requires a determination of
whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue. To
facilitate review, this analysis should be made explicit. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
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obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion
of obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Corp., 550 U.S. 398, 418 (2007).
The Examiner determined that a person of ordinary skill in the art
would have combined the descriptions of Whitlaw and Elkind “to decrease
the porosity of the coating and increase the cathode current yield as taught
by [Elkind]” (Ans. 6; see also Ans. 6 (same), 10 (same)). Appellants argue
that this reason is not sufficient because a person of ordinary skill in the art
would not have been motivated to modify Whitlaw (App. Br. 8, 10, 12).
According to Appellants (e.g., App. Br. 9), Whitlaw states that the coatings
produced through the use of its plating bath do not have a porosity problem
and that the plating bath only has a slight effect on the cathode current
efficiency (see Whitlaw col. 2, ll. 3-18). Appellants argue that, in view of
this disclosure, a person of ordinary skill in the art would have had no reason
to modify Whitlaw’s gold plating baths (e.g., App. Br. 9).
In response, the Examiner does not attempt to rebut Appellants’
arguments. Rather, the Examiner changes the reason proffered to support the
combination of references (see, e.g., Ans. 10-11). The Examiner’s new
reason to combine the references is the alleged prima facie obviousness of
combining two prior art compositions that are known to be useful for the
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same purpose to form a third composition to be used for the very same
purpose (id. (citing MPEP § 2144.06)). Our review of the cases underlying
this principle reveals that the Examiner is not applying the law correctly.
In re Kerkhoven, 626 F.2d 846 (CCPA 1980), is one of the cases that
established the principle upon which the Examiner relies. In that case, the
combination of a reference describing a spray-dried anionic detergent with a
reference describing a spray-dried nonionic detergent was held to create a
prima facie case of obviousness with respect to claims directed to a
detergent that was a mixture of a spray-dried anionic detergent and a spray-
dried nonionic detergent. Kerkhoven, 626 F.2d at 1450. In contrast, in this
case, the Examiner is selecting a single component from Elkind’s ingredients
for combination with Whitlaw’s plating bath. The Examiner is not
combining the plating bath described in Whitlaw with the complete plating
bath (i.e., all of the ingredients) described in Elkind. Thus, the Examiner’s
second proffered reason to combine Whitlaw and Elkind is based upon an
incorrect interpretation of the law.
CONCLUSION
As explained above, the Examiner has not identified any reason why a
person of ordinary skill in the art would have chosen to add hexamethylene
tetramine to the acidic plating bath described in Whitlaw. We, therefore,
reverse the rejection of claims 1-11 of the ’839 application.

REVERSED

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