Ex Parte Egli et alDownload PDFPatent Trial and Appeal BoardJan 29, 201512316156 (P.T.A.B. Jan. 29, 2015) Copy Citation 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. 12/316,156 12/10/2008 Andre Egli 52640 9713 7590 01/29/2015 John J. Poskorski Rohm and Haas Electronic Materials LLC Patent Department 455 Forest Street Marlborough, MA 01752 EXAMINER CATHEY JR, DAVID A ART UNIT PAPER NUMBER 1713 MAIL DATE DELIVERY MODE 01/29/2015 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 ANDRE EGLI, LEO WAN, and TED WONG ____________ Appeal 2013-004935 Application 12/316,1561 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–5, and 8–10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The sole independent claim 1 is illustrative of the claimed subject matter (emphasis added): 1. A method comprising: 1 The Real Party in Interest is The Dow Chemical Company (Br. 2). Appeal 2013-004935 Application 12/316,156 2 providing a composition comprising one or more inorganic acids, one or more heterocyclic nitrogen compounds; and applying the composition to a nickel or nickel alloy layer to etch the layer, the nickel alloy is selected from the group consisting of nickel/gold, nickel/palladium and nickel/palladium/gold. The Examiner maintains the following rejections under 35 U.S.C. § 103(a): (a) claims 1, 3, 4, 5, 8 and 9 as unpatentable over Kato (JP 61096088, published, as partially translated in Derwent abstract 1986-164650; full translation provided by USPTO upon appeal) in view of Ozimek (U.S. 5,382,310, issued Jan. 17, 1995) and Peter Lee (U.S. 4,178,253, issued Dec. 11, 1979), with Griswold (evidentiary reference U.S. 2,107,294, issued Feb. 8, 1938); (b) claim 2 as unpatentable over Kato, Ozimek, Peter Lee, Griswold, and Freshcorn (U.S.4,055,472, issued Oct. 25, 1977); and (c) claim 10 unpatentable over Kato, Ozimek, Peter Lee, Griswold, and Soo-bong Lee (US 2006/0049493 A1, published Mar. 9, 2006). Appellants’ arguments focus on independent claim 1 and dependent claim 2 (Br. generally). Appellants rely upon the arguments for claim 1 for all the dependent claims in rejection (a) as well as for rejection (c) (Br. 11). Accordingly, all the claims except for dependent claim 2 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the Appeal 2013-004935 Application 12/316,156 3 claimed subject matter of representative claims 1 and 2 is unpatentable under § 103 in view of the applied prior art. Accordingly, we sustain the Examiner’s prior art rejections for the reasons explained in the Answer, and we add the following primarily for emphasis. In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he 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.” Id. at 418. We are not persuaded by Appellants’ argument that it would not have been obvious to use the known etching bath for nickel-iron lead frames on a nickel lead frame as exemplified in Ozimek as an alternative for the nickel- iron lead frame of Kato (e.g., Br. 9). Likewise, Appellants’ argument that, contrary to the Examiner’s position, it would not have been obvious to use a known alternative corrosion inhibitor thiazole based compound2 as exemplified in Peter Lee for the amine corrosion inhibitor of Kato (Br. 9, 10), is also not persuasive. First, a preponderance of the evidence supports the Examiner’s position that Ozimek establishes that either nickel or nickel-iron lead frames were known (Ans. 11). Indeed, Appellants admit in their Specification that conventional lead frames were nickel plated (Spec. 1, second and fourth 2 Appellants do not dispute that the thiazole based compound of Peter Lee is a heterocylic nitrogen compound. Appeal 2013-004935 Application 12/316,156 4 paragraphs; Spec. 7, last (third full) paragraph). Appellants’ arguments directed to the alternative specified “nickel alloy[s]” recited in claim 1 (Br. 8, 9) are not relevant to the Examiner’s rejection, which relies upon the “nickel . . . layer” alternative recited in claim 1. Second, a preponderance of the evidence supports the Examiner’s position that Peter Lee reasonably exemplifies its triazole corrosion based inhibitor “was a particular and readily available art recognized corrosion inhibitor and would have provided the predictable result of providing a corrosion inhibitor” for Kato’s amine-based corrosion inhibitor (Ans. 12). See also, e.g., In re Preda, 401 F.2d 825, 826 (CCPA 1968) (it is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom).3 In summary, with respect to rejection (a), Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably etched a known nickel lead frame, such as exemplified in Ozimek, for the lead frame exemplified in Kato, and then use the known corrosion inhibitor as taught in Peter Lee for the corrosion inhibitor of Kato (Ans. 9; Br. generally). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). With respect to rejection (b), Appellants have not sufficiently explained why the Examiner’s position that a known anodic etching as 3 The Examiner also points out as “evidentiary” that McChesney and Korzenski exemplify corrosion inhibitors function in either oil or water based environments (Ans. 13). Appeal 2013-004935 Application 12/316,156 5 exemplified in Freshcorn would have been useful for the etching of Kato (Ans. 9). Indeed, Appellants’ Specification de facto admits that anodic etching was known and “[t]ypically” done at specified cathode current densities (Spec. 6 fifth paragraph). Appellants have not provided any persuasive technical rationale or any credible evidence to refute the Examiner’s determination that the use of an anodic etching in the acidic etching of Kato combination would have been within the level of one of ordinary skill in the art (Ans. 8; Br. generally) Appellants rely upon the arguments made for rejection (a) for rejection (c). Therefore, we affirm the Examiner’s § 103 rejections of all the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED kmm Copy with citationCopy as parenthetical citation