Ex Parte Pearson et al

Patent Trial and Appeal Board

Aug 14, 2017

13356004 (P.T.A.B. Aug. 14, 2017)

United States Patent and Trademark Office
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.
13/356,004 01/23/2012 Trevor Pearson 2156-685A 5620
34238 7590 08/16/2017
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
PHASGE, ARUN S
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
patents @ carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TREVOR PEARSON and CRAIG ROBINSON
Appeal 2016-001723
Application 13/356,004
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA,
JANE E. INGLESE, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting, for at least the second time, claims 1—22.3 We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
1 In this decision, we refer to the Specification filed January 23, 2012, the
Non-Final Office Action mailed January 28, 2015 (“Non-Final Act.”), the
Appeal Brief filed March 5, 2015 (“Appeal Br.”), the Examiner’s Answer
mailed October 7, 2015 (“Ans.”), and the Reply Brief filed November 24,
2015 (“Reply Br.”).
2 Appellants identify the real party in interest as MacDermid Acumen, Inc.
Appeal Br. 2.
3 We heard oral arguments from the Appellants’ representative on August 3,
2017.
Appeal 2016-001723
Application 13/356,004
The subject matter on appeal relates to an etchant for plastic
substrates, and methods of preparing a solution capable of etching a plastic
substrate. Spec. 6,1. 18—7,1. 7. Claims 1 and 17, reproduced below from the
Appendix of the Appeal Brief, are illustrative of the claims on appeal.
1. A method of preparing a solution capable of etching a
platable plastic, the method comprising the steps of:
providing an electrolyte comprising manganese(II) ions in
a solution of about 9 to 15 molar sulfuric acid or phosphoric acid
to an electrolytic cell;
applying a current to the electrolytic cell, wherein the
electrolytic cell comprises an anode and a cathode; and
oxidizing the electrolyte to form manganese(III) ions,
wherein the manganese(III) ions form a metastable sulfate or
phosphate complex.
17. An electrolyte capable of etching a platable plastic, the
electrolyte comprising manganese(III) ions in a solution of 9 to
15 molar sulfuric acid or phosphoric acid.
Appeal Br. 14, 15.
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1—6 and 11—16 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Schildmann, WO 2009/023628 A2,
published February 19, 2009) (“Schildmann”);
Rejection 2: Claims 9 and 10 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Schildmann in view of Bourne (US 3,941,677,
issued March 2, 1976) (“Bourne”);
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Application 13/356,004
Rejection 3: Claims 7 and 8 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Schildmann in view Komatsu et al.
(US 4,530,745, issued July 23, 1985) (“Komatsu”); and
Rejection 4: Claims 17—22 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Schildmann.
DISCUSSION
Rejections 1—3
Appellants argue for patentability of claims 1, 2-4, 6, 12, 14, and 16,
subject to the first ground of rejection, as a group. Appeal Br. 5—11.
Appellants do not present separate substantive arguments for the
patentability of separately rejected claims 7—10, which depend from claim 1.
Id. at 11. We choose independent claim 1 as representative of this group,
and claims 2—4, 6—10, 12, 14, and 16, stand or fall with claim 1. See
37 C.F.R. § 41.37 (c)(l)(iv). Appellants present additional arguments for
patentability of dependent claims 5, 11, 13, and 15. Id. at 5—11. We address
these arguments below under separate subheadings.
Claims 1—4, 6—10, 12, 14, and 16
The Examiner finds that Schildmann discloses or suggests providing
an electrolyte comprising manganese (II) ions in a sulfuric acid solution
having a concentration within the range recited in claim 1 to an electrolytic
cell, applying a current to the cell, oxidizing the electrolyte to inherently
form manganese (III) ions, and forming a metastable sulfate complex. Non-
Final Act. 3 (citing Schildmann || 19-23, 25, 26, 29, 37).
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Appellants argue that “Schildmann simply discloses huge ranges of
potential current densities, such as 0.1 to 100 A/dm2,” and “[o]ne needs to
assume the use of certain current densities where (i) the creation of Mn(III)
metastable complexes was not the objective of Schilmann, and
(ii) Schildmann gives no guidance as to what current densities to use to form
such a complex.” Appeal Br. 5, 6. Appellants also argue that “a person of
ordinary skill in the art at the time of the invention would not have
recognized that a metastable Mn(III) complex would be formed using
Schildmann’s methods.” Id. at 6.
Appellants’ arguments are not persuasive of reversible error. The
rejection of claim 1 is for obviousness, not anticipation. The test for
obviousness is what the prior art would have suggested to one of ordinary
skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Here, the
disclosure of Schildmann would have indicated to one of ordinary skill in
the art that any current density within the ranges disclosed in the reference,
including a current density of 0.1 to 0.4 A/dm2, is suitable for use in
Schildmann’s oxidation cell. Schildmann 123. Appellants have not
presented sufficient arguments or evidence that, if, for example, manganese
sulfate MnS04 was used as the manganese salt in a solution of 9 to 15 molar
sulfuric acid in Schildmann’s oxidation cell (Schildmann 119), and a current
density of 0.1 to 0.4 A/dm2 was applied to the cell, the manganese (II) ions
would not be converted to manganese (III) ions (Spec. 10,11. 23—24).
In addition, it is not necessary that the prior art recognize that a
metastable sulfate complex is formed using Schildmann’s methods.
Cf. Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed.Cir.2003)
(rejecting the contention that inherent anticipation requires recognition in the
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prior art).4 Rather, the Examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPA1 1990). On
this record, the Examiner establishes a reasonable basis for inherency and
thereby evinces that Appellants’ and Schildmann’s method appear to be the
same. Final Act. 3. Thus, the burden is properly shifted to Appellants to
show that they are not. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants have failed to show by a preponderance of the evidence that
Schildmann’s method does not necessarily form Mn (111) ions, for example,
by oxidizing Mn (11) in a solution of 9 to 15 molar sulfuric acid (Schildmann
Tflf16, 19, 20), where the manganese (III) ions necessarily form a metastable
sulfate complex in the strong sulfuric acid solution, as recited in claim 1.
Appellants argue that Schildmann teaches away from the formation of
manganese (III) ions because Schildmann teaches that Mn (III) compounds
are insoluble and, if formed, must be destroyed. Appeal Br. 8 (citing
Schildmann 132—34).
Appellants’ argument is not persuasive of reversible error. Appellants
have not directed us to any disclosure in Schildmann that teaches away from
forming manganese (III) ions. Schildmann’s teaching that manganese (II) in
phosphoric acid forms non-soluble Mn (III) phosphate compounds (see
Schildmann || 32—34) does not teach away from forming manganese ions
4 Appellants’ discussion of “accidental anticipation” (Appeal Br. 6 (citing
Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 66
(1923), In re Marshall, 578 F.2d 301, 304 (CCPA 1978), and In re Felton,
484 F.2d 495, 499—500 (CCPA 1973)) is not pertinent because Schildmann
was applied against claim 1 in an obviousness, not an anticipation, rejection.
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generally. Further, Schildmann does not teach that those non-soluble
compounds should be avoided. Rather, Schildmann teaches that if formed,
the non-soluble compounds can be removed by the addition of a reducing
agent or by boiling. Schildmann 134. Schlidmann also teaches that the
formation of those unsoluble manganese (III) compounds are avoided when
sulfuric acid is used. Schildmann 129. Appellants, however, have not
directed us to any disclosure in Schildmann that discourages forming
manganese (III) ions in sulfuric or phosphoric acid.
Appellants argue that claim 1 is not obvious because the formation of
a metastable manganese (III) complex is an unexpected result, which
Appellants contend is supported by Appellants’ application and the
Declaration under 37 C.F.R. § 1.132 executed by Steven Castaldi (“the
Castaldi Declaration”). Appeal Br. 8.
Appellants’ argument is not persuasive of reversible error in the
rejection because the Castaldi Declaration simply argues against the
Schildmann reference and what it discloses without providing sufficient
evidence that the metastable sulfate or phosphate complex is unexpectedly
formed.
In sum, Appellants have not identified a reversible error in the
Examiner’s obviousness rejection of claim 1 over Schildmann. Thus, we
sustain the Examiner’s obviousness rejection of independent claim 1, and
claims 2-4, 6—10, 12, 14, and 16, which depend directly or indirectly
therefrom.
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Claim 5
Claim 5 depends from claim 1 and requires that the solution capable
of etching platable plastic “additionally comprises colloidal manganese
dioxide.”
Appellants’ argue that in the Non-Final Office Action mailed
January 28, 2015 (the action appealed from), the Examiner fails to perform
any analysis on claim 5 or purports to show where in Schildmann colloidal
manganese dioxide is disclosed or suggested. Appeal Br 9.
The Examiner responds in the Answer that Appellants’ Specification
teaches that colloidal manganese dioxide “[forms] to some extent as a
natural result of disproportionation of manganese (III) in solution.” Ans. 10
(citing Spec. 10,11. 16—17).
The Examiner’s obviousness rejection of claim 5 over Schildmann
appears to rely on inherency. “To establish inherency, the extrinsic evidence
‘must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (quoting Cont’l Can Co. v. Monsanto Co., 948 F.2d 1264,
1268 (Fed.Cir.1991). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939). Appellants’ Specification teaches that colloidal manganese
dioxide “may form” to some extent as a natural result of disproportionation
of manganese (III) in solution.” Spec. 10,11. 16—17. Based on the
disclosure in Appellants’ Specification, we cannot say that Schildmann
necessarily or inherently teaches that its pickling solution includes colloidal
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manganese dioxide. Accordingly, we cannot sustain the Examiner’s
obviousness rejection of claim 5 over Schildmann.
Claim 11
Claim 11 depends from claim 1 and requires that the current density
of the anode in the electrolytic cell “is between about 0.1 to about
0.4 A/dm2.”
Appellants’ admit that Schildmann discloses a very broad range of
anode current density of 0.1 to 100 A/dm2. Schildmann 123. Appellants,
however, argue the disclosed range includes a broad range of possibilities,
and thus, it would not have been obvious to one of ordinary skill in the art to
utilize a low and narrow range of 0.1 to 0.4 A/dm2, as recited in claim 11.
Appeal Br. 10; Reply Br. 5 (citing Atofina v. Great Lakes Chemical Corp.,
441 F.3d991 (Fed. Cir. 2006).5
Although the range of current densities disclosed in Schildmann is
broad, it encompasses the current density range recited in claim 11. It is
well-established that a prima facie case of obviousness exists when the
claimed and prior art ranges overlap. In re Peterson, 315 F.3d 1325, 1329
(Fed.Cir. 2003). Therefore, Appellants’ argument is not persuasive of
reversible error in the Examiner’s rejection. Accordingly, we sustain the
Examiner’s obviousness rejection of claim 11 over Schildmann.
5 Claim 11 is only rejected as obvious over Schildmann. Non-Final Act. 3.
Thus, Appellants reliance on Atofina is misplaced because it involves an
anticipation rather than an obviousness rejection.
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Claim 13
Claim 13 depends from claim 1 and requires that “the electrolyte does
not contain any permanganate.”
Appellants argue that the entire purpose of Schildmann is to form
permanganate for use in etching (citing Schildmann || 14, 32), and the
Examiner has not provided sufficient evidence on the record that
Schildmann teaches or suggests a pickling solution without permanganate.
Appeal Br. 10.
The Examiner responds in the Answer that “the electrolyte” recited in
claim 13 refers only to the starting material, which is free from the claimed
permanganate (i.e. before electrolysis), and contends that Schildmann
teaches that the starting materials do not contain permanganate. Ans. 11.
Appellants respond in their Reply Brief that the Examiner’s
interpretation of claim 13 is erroneous, and the proper interpretation of
claim 13 excludes permanganate in the electrolyte throughout the method,
not just in the starting materials of the electrolyte. Reply Br. 7.
Appellants’ argument is persuasive of reversible error. Claim 13
requires that “the electrolyte does not contain any permanganate.” Claim 13
does not distinguish between the electrolyte before and after electrolysis.
Thus, we agree with Appellants that the broadest reasonable interpretation of
claim 13 requires the electrolyte both before and after electrolysis to be free
of permanganate (Reply Br. 7; Spec. 11,11. 13—14).6 The Examiner has not
pointed to sufficient disclosure in Schildmann that the electrolyte both
6 Appellants’ Specification simply discloses that it is generally preferable
that “the electrolyte” not contain any permanganate ions. Spec. 11,11. 13—
14.
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Application 13/356,004
before and after electrolysis is free of permanganate. In fact, because
Schildmann’s objective is to prepare a pickling solution that contains
permanganate (Schildmann 114), Schildmann teaches away from an
electrolyte after electrolysis that is free of permanganate. Accordingly, we
cannot sustain the Examiner’s obviousness rejection of claim 13 over
Schildmann.
Claim 15
Claim 15 depends from claim 1 and requires that “the platable plastic
is immersed in the metastable sulfate complex for about 20 to about
30 minutes.”
Appellants argue that Schildmann’s only disclosure of the amount of
time for immersion is 10 minutes (Schildmann || 36—38), and Schildmann
does not disclose any times within the claimed range. Appeal Br. 11.
The Examiner responds in the Answer that a disclosure of time for
immersion of “10 minutes can be read to be about 20 minutes.” Ans. 11.
We cannot agree with the Examiner that Schildmann’s disclosure of
immersing plastic in a pickling solution for 10 minutes can be read as
encompassing immersing plastic in a pickling solution for about 20 minutes.
Thus, on this record, we cannot sustain the Examiner’s obviousness rejection
of claim 15 over Schildmann.
Rejection 4
The Examiner rejected each of claims 17—22 as anticipated by or, in
the alternative, obvious over Schildmann. Non-Final Act. 2.
Appellants’ arguments focus on representative claim 17, and
dependent claims 20 and 21. Appeal Br. 11—13. Appellants do not present
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separate substantive arguments for the patentability of claims 18, 19, and 22,
which depend from claim 17. Id. Thus, claims 18, 19, and 22 will stand or
fall with claim 17. See 37 C.F.R. § 41.37 (c)(l)(iv).
Claims 17—19, and 22
The Examiner finds that Schildmann discloses or suggests an
electrolyte capable of etching a platable plastic as recited in claim 17
comprising manganese (III) ions in a solution of 9 to 15 molar sulfuric acid
or phosphoric acid. Non-Final Act. 2 (citing Schildmann || 19, 29); see also
In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (In determining whether a
reference anticipates the subject matter recited in a claim, “it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
Appellants do not dispute the Examiner’s factual findings with respect
to Schildmann describing an electrolyte capable of etching a platable plastic
with the exception that Appellants contend that the Examiner’s anticipation
and obvious rejections of claim 17 should be reversed because Schildmann
does not inherently disclose or render obvious Mn (III) ions in an electrolyte
solution. Appeal Br. 11—13.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s anticipation or obviousness rejection of claim 17. As discussed
above with respect to claim 1, the Examiner must provide a basis in fact
and/or technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d at 1464. On this record, the
Examiner establishes a reasonable basis for inherency and thereby evinces
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that Appellants’ and Schildmann’s electrolyte appear to be the same. Non-
Final Act. 2. Thus, the burden is properly shifted to Appellants to show that
they are not. In re Best, 562 F.2d at 1255. Appellants have failed to show
by a preponderance of the evidence that Schildmann’s pickling solution does
not necessarily form Mn (III) ions, for example, by oxidizing Mn (II) in a
solution of 9 to 15 molar sulfuric acid (Schildmann || 16, 19, 20), as recited
in claim 17. Accordingly, we sustain the Examiner’s anticipation and
obviousness rejections of claims 17, 18, and 22.
Claim 20
Claim 20 depends from claim 17 and requires that “the electrolyte
additionally comprises colloidal manganese dioxide.”
Appellants’ argue Schildmann nowhere discloses colloidal manganese
dioxide, and in the Non-Final Office Action mailed January 28, 2015 (the
action appealed from), the Examiner, by failing to perform any analysis, has
failed to make out a prima facie case. See Appeal Br. 12.
The Examiner responds in the Answer that Appellants’ Specification
teaches that colloidal manganese dioxide “[forms] to some extent as a
natural result of disproportionation of manganese (III) in solution.” Ans. 10
(citing Spec. 10,11. 16—17).
As with claim 5 discussed above with regard to Rejection 1, the
Examiner relies on inherency in rejecting claim 20 over Schildmann.
Appellants’ Specification teaches that colloidal manganese dioxide “may
form to some extent as a natural result of disproportionation of manganese
(III) in solution.” Spec. 10,11. 16—17. As discussed above, based on the
disclosure in Appellants’ Specification, we cannot say that Schildmann
necessarily or inherently teaches that its pickling solution includes colloidal
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manganese dioxide. In re Oelrich, 666 F.2d at 581 (inherency may not be
established by probabilities or possibilities). Accordingly, we cannot sustain
the Examiner’s anticipation or obviousness rejection of claim 20 over
Schildmann.
Claim 21
Claim 21 depends from claim 17 and requires that “the electrolyte
does not contain any permanganate.”
Appellants argue that the entire purpose of Schildmann is to form
permanganate for use in etching, and the Examiner has not provided
sufficient evidence on the record that Schildmann teaches or suggests a
pickling solution without permanganate. Appeal Br. 12.
The Examiner responds in the Answer that the electrolyte refers only
to the starting material, which is free from the claimed permanganate (i.e.
before electrolysis), and contends that Schildmann teaches that the starting
materials do not contain permanganate. See Ans. 11.
Appellants respond in their Reply Brief that the Examiner’s
interpretation of claim 21 is erroneous, and it is clear from the plain
language of claim 21, which depends from claim 17, that the solution of
claim 21 refers to a solution after electrolysis, i.e., after the starting Mn (II)
ions are oxidized to Mn (III) ions by electricity. Reply Br. 8.
Appellants’ argument is persuasive of reversible error. Claim 21
depends from claim 17, which is directed to an electrolyte capable of etching
a platable plastic where the electrolyte comprises manganese (III) ions in a
solution of sulfuric acid or phosphoric acid. We agree with Appellants that
because the electrolyte of claim 17 comprises manganese (III) ions in
solution, the broadest reasonable interpretation of claim 21 requires the
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electrolyte after electrolysis, i.e., after the starting manganese (II) ions are
oxidized to manganese (III) ions by electricity, to be free of any
permanganate (Reply Br. 8). The Examiner has not pointed to sufficient
disclosure in Schildmann that the electrolyte after electrolysis is free of
permanganate. In fact, because Schildmann’s objective is to prepare a
pickling solution that contains permanganate (Schildmann 114),
Schildmann teaches away from an electrolyte after electrolysis that is free of
permanganate. Accordingly, we cannot sustain the Examiner’s anticipation
or obviousness rejection of claim 21 over Schildmann.
DECISION
For the above reasons, the rejection of claims 1—6 and 11—16 under
pre-AIA 35 U.S.C. § 103(a) over Schildmann is affirmed as to claims 1—4, 6,
11, 12, 14, and 16, and reversed as to claims 5, 13, and 15.
The rejection of claims 9 and 10 under pre-AIA 35 U.S.C. § 103(a)
over Schildmann in view of Bourne, and the rejection of claims 7 and 8
under pre-AIA 35 U.S.C. § 103(a) over Schildmann in view of Komatsu are
affirmed.
The rejection of claims 17—22 under pre-AIA 35 U.S.C. § 102(b) is
affirmed as to claims 17, 18, and 22, and reversed as to claims 20 and 21.
The rejection of claims 17—22 under pre-AIA 35 U.S.C. § 103(a) over
Schildmann is affirmed as to claims 17—19, and 22 and reversed as to
claims 20 and 21.
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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