Ex Parte Park et al

Patent Trial and Appeal Board

Dec 31, 2012

11789483 (P.T.A.B. Dec. 31, 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.
11/789,483 04/25/2007 Soo-Jin Park 930086-2054 1008
20999 7590 12/31/2012
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
MEKHLIN, ELI S
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
12/31/2012 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 SOO-JIN PARK and
BYNG-JOO KIM
____________

Appeal 2011-005585
Application 11/789,483
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s rejection of claims 1through 6 and 19,
all of the claims pending in the above-identified application. We have
jurisdiction under 35 U.S.C. § 6(b) 2. We affirm-in-part.

1 The Appellants identify the real party in interest as “Inha-Industry
Partnership Institute.” Appeal Brief filed October 8, 2010 (“App. Br.”) at 2.
2 Although the action appealed from was a non-final rejection, we have
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of preparing a
multi-metals/activated carbon composite useful as an absorbent for
removing pollutants. (See Spec. 1-2.) This method is said to involve
depositing multi-metals on activated carbon via “performing electrochemical
electroplating using an anode made of an alloy plate comprising at least two
metals and a cathode made of activated carbon fixed on a conductive
support.” (See Spec. 3-4.) Details of the appealed subject matter are recited
in representative claims 1, 5, and 19 reproduced below:
1. A method for preparing a multi-metals/activated
carbon composite by forming a composite, which comprises at
least two metals, on the surface of activated carbon by
performing electroplating using an anode made of an alloy plate
comprising at least two metals and a cathode made of activated
carbon fixed on a conductive support.

5. The method of claim 1, wherein said metals introduced
to the surface of the activated carbon are at least two transition
metals selected from Cu, Ni, Ag, A1, Fe, Co, Cr, Pt, Ru and Sn.

19. The method of claim 5, wherein said metals
introduced to the surface of the activated carbon are Pt and Ru.

App. Br. 13 (Claims App’x).

jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 since the claims have been
twice presented and rejected. See Ex parte Lemoine, 46 USPQ2d 1420,
1423 (BPAI 1994).
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Appellants seek review of the following grounds of rejection set forth
by the Examiner in the Examiner’s Answer mailed November 8, 2010
(“Ans.”) as follows:
I. Claims 1-5 and 19 under 35 U.S.C. § 103(a) as unpatentable
over Park3 in view of Horii;4 and
II. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Park in
view of Horii, and Mallouk.5
(See App. Br. 2-3.)

DISCUSSION
I. CLAIMS 1 THROUGH 6
Appellants argue claims 1 through 6 together and claim 19 separately.
App. Br. 3-12. Although we normally treat claims subjected to different
grounds of rejection differently, we need not do so in this case since
Appellants rely on the same arguments directed to claims 1 through 5 under
Rejection I for the patentability of claim 6 under Rejection II. Therefore, we

3 KR 10-0512476 registered to Park et al (“Park”) on August 29, 2005
(published on October 28, 2004). Our reference to Park is to the English
translation of record.

4 US 2001/0055851 A1 issued to Horii on December 27, 2001.

5 US 6,284,402 B1 issued to Mallouk et al. (“Mallouk”) on September 4,
2001.
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limit our discussion to claims 1 and 19, which we select as representative.
37 C.F.R. § 41.37(c)(1)(vii).
Park, like Appellants, discloses a multi-metal (Cu, Ag, and
Cr)/activated carbon composite useful as an absorbent for removing a
pollutant, such as a toxic HCl gas. (Compare Park 2-4 with Spec. 1-2.)
Park, like Appellants, also discloses depositing copper (Cu), silver (Ag), and
chromium (Cr) on the activated carbon via performing electrochemical
electroplating of an anode made of “Cu, and Ag and Cr board”6 and a
cathode made of activated carbon fixed on a conductive support. (Compare
Park 3 with Spec. 3-4 and claim1 on appeal; compare also Ans. 3-4 with
App. Br. 3-12.) The Examiner acknowledges that “Park is silent as to
whether [its] electroplating can be accomplished using an anode made of an
alloy plate comprising at least two metals.” (Ans. 4.) To remedy this
deficiency, the Examiner relies on the disclosure of Horii to show that such
electroplating technique is known. (See id.)
Appellants do not dispute the Examiner’s finding that Horii teaches
the electroplating technique recited in claims 1 through 6. (Compare Ans. 4
with App. Br. 3-12.) Instead, Appellants first contend that one of ordinary
skill in the art would not have been led to use the electroplating technique

6 When this ambiguous language is read in light of the entire disclosure of
Park, it appears that the individual metal board or plate is used to
successively introduce Cu, Ag, and Cr on the activated carbon. (See, e.g.,
Park 4.)
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taught by Horii in the electroplating process for producing the Cu, Ag, and
Cr deposited activated carbon composite taught by Park. (See App. Br. 4-6.)
Thus, the first critical question concerning claims 1 through 6 is: Has
the Examiner demonstrated that one of ordinary skill in the art would have
been led to use the electroplating technique taught by Horii in the
electroplating process for producing the Cu, Ag, and Cr deposited activated
carbon composite taught by Park? On this record, we answer this question
in the affirmative.
As is apparent from pages 2 through 4 of Park, it teaches employing
an electrochemical electroplating method for depositing its metals on
activated carbon to overcome the disadvantage associated with a
conventional impregnation method for impregnating the same. Although
Horii is directed to forming a semiconductor substrate, the fact remains that
Horii teaches that its various conductive metals, inclusive of those taught by
Park, can be deposited on a seed layer of a semiconductor substrate via
performing electrochemical electroplating using an alloy of at least two
conductive metals as an anode and the seed layer (the material to be
deposited) as a cathode. (See Horii 1-2, para. 0014 and 4, para. 0040.)
Thus, we concur with the Examiner that one of ordinary skill in the art
interested in employing an electroplating method to form the multi-metal
(Cu, Ag, and Cr)/activated carbon composite taught by Park would have
been led to employ known electroplating techniques, including that taught
by Horii, with a reasonable expectation of successfully depositing Cu, Ag
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and Cr on the surface of activated carbon. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”); see also In re Fout, 675 F.2d 297, 301
(CCPA 1982) (“Express suggestion to substitute one equivalent for another
need not be present to render such substitution obvious.”); In re Mayne, 104
F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants merely
substituted one element known in the art for a known equivalent, this court
affirms [the rejection for obviousness].”).
In reaching this determination, we have carefully considered
Appellants’ argument that Horii is not from analogous art. (See App. Br. 5.)
However, this argument is not well taken. As our reviewing court stated in
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citations omitted)
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant’s endeavor or is
reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for
rejection. References are selected as being reasonably pertinent
to the problem based on the judgment of a person having
ordinary skill in the art.

Here, the inventors, like Park, are interested in using electroplating
techniques to overcome the problem associated with other known coating or
impregnation methods. (See Spec. 2-4.) Thus, the known electroplating
technique taught by Horii is reasonably pertinent to the problem with which
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the inventors were concerned at the time of the invention. In other words,
we find that Horii is from analogous art.
Appellants further contend that any inference of obviousness
established by the Examiner is rebutted by evidence of unexpected results.
(See App. Br. 6-12.) In support of this contention, Appellants rely on the
examples in the Specification and the Rule 132 Declaration executed by
Byung-Joo Kim, one of the inventors named in the above-identified
application, on June 10, 2010 to show that the claimed method results in the
deposition of greater amounts of metals with more specific surface areas.
(Id.)
Thus, the second critical question concerning claims 1 through 6 is:
Have Appellants shown that the showing in the Specification and the
Declaration demonstrates that the claimed subject matter imparts unexpected
results relative to the closest prior art, Park, thereby rebutting any inference
of obviousness established by the Examiner? On this record, we answer this
question in the negative.
It is well settled that Appellants have the burden of showing
unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires
Appellants to proffer factual evidence that actually shows unexpected results
relative to the closest prior art, namely Park, see In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably
commensurate in scope with the protection sought by claim 1 on appeal, In
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re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972).
Here, Appellants’ reliance on the showing in the Specification and the
Declaration as demonstrating unexpected results over the closest prior art
reference, Park, is misplaced. Appellants have failed to direct us to any
meaningful experimental evidence demonstrating that the actual differences
between the claimed subject matter and the closest prior art reference give
rise to unexpected results. In re Baxter Travenol Labs., 952 F.2d at 392; In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). In this regard, we note
that none of the examples in the Specification and the Declaration provides
any comparison between successively electroplating Cu, Ag, and Cr using
the individual anode metal plates having the corresponding individual metals
taught by Park and electroplating Cu, Ag, and Cr simultaneously using an
anode alloy plate containing the same included in claim 1. Moreover, as
correctly found by the Examiner at pages 11 and 12 of the Answer, it cannot
be ascertained from the examples in the Specification and the Declaration
whether alleged unexpected results are due to the difference between the
claimed features and the closest prior art features or due to unclaimed
features, namely specific plating times, specific current densities, specific
metal compositions and/or the unidentified specific amounts of types of
metals employed in alloy plates. See In re Dunn, 349 F.2d 433, 439 (CCPA
1965) (“While we do not intend to slight the alleged improvements, we do
not feel it an unreasonable burden on appellants to require comparative
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examples relied on for non-obviousness to be truly comparative. The cause
and effect sought to be proven is lost here in the welter of unfixed
variables.”) On this record, Appellants have not shown that the alleged
unexpected results can be obtained regardless of the types and amounts of
metals used in anode alloy plates and/or the types of electroplating
conditions employed. Thus, even if we determine that the Pt/Ru/activated
carbon composite formed from specific electroplating conditions discussed
in the Declaration indirectly shows unexpected advantages relative to the
closest prior art, Appellants still fail to demonstrate that the showing in the
Specification and the Declaration is reasonably commensurate in scope with
claim 1. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(“Even assuming that the results were unexpected, Harris needed to show
results covering the scope of the claimed range. Alternatively Harris needed
to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)). 7

7 Appellants’ reliance on In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987) is
misplaced since the facts and issues in Chupp are significantly different from
those of the present case.
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Thus, having fully considered the respective positions and evidence
relied upon by the Examiner and Appellants, we find ourselves in agreement
with the Examiner that a preponderance of the evidence weighs in favor of
obviousness. Accordingly, we uphold Rejection I of claims 1 through 5 and
Rejection II of claim 6.

II. CLAIM 19
With respect to claim 19, the Examiner relies on the disclosure of
Horii to show obviousness of employing Pt and Ru in an electroplating
process for forming the pollution-removing absorbent taught by Park. (See
Ans. 14.) Yet, on this record, the Examiner has not shown that Pt and Ru
are useful for pollutants-removing absorbents or are interchangeable with
Cu, Ag, and/or Cr for the purpose of removing pollutants. (Id.) Thus, we
concur with Appellants that the Examiner has failed to establish a prima
facie case of obviousness regarding the subject matter recited in claim 19.
Therefore, we reverse Rejection I of claim 19.

ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1
through 5 under 35 U.S.C. § 103(a) as unpatentable over Park in view of
Horii is AFFIRMED;
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FURTHER ORDERED that the decision of the Examiner to reject
claim 19 under 35 U.S.C. § 103(a) as unpatentable over Park in view of
Horii is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claim 6 under 35 U.S.C. § 103(a) as unpatentable over Park in view of Horii
and Mallouk is AFFIRM ED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART

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