Ex Parte Long et al

Board of Patent Appeals and Interferences

Feb 24, 2012

11983982 (B.P.A.I. Feb. 24, 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.
11/983,982 11/13/2007 Ernest Long 2156-649A 5315
34238 7590 02/24/2012
ARTHUR G. SCHAIER
CARMODY & TORRANCE LLP
50 LEAVENWORTH STREET
P.O. BOX 1110
WATERBURY, CT 06721
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
02/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ERNEST LONG, ANDREW KROL,
LENORA M. TOSCANO, and STEVEN A. CASTALDI
________________

Appeal 2011-004213
Application 11/983,982
Technology Center 1700
________________

Before HUBERT C. LORIN, JEFFREY T. SMITH, and
DEBORAH KATZ, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004213
Application 11/983,982

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 13-18 and 20.1 We have jurisdiction under 35 U.S.C. § 6.
According to the Specification, “[t]he present invention in a broad
aspect, relates to inhibiting the corrosion of metals. The invention more
particularly concerns compositions and methods of controlling/inhibiting
galvanic corrosion on surfaces of printed circuit boards.” (Spec. 4). Claim
13 is illustrative of the subject matter on appeal and is reproduced below:
13. A method of treating surfaces of a printed circuit
board to reduce corrosion thereon, the method comprising the
step of:
contacting surfaces of the printed circuit board with an
aqueous corrosion resistant coating composition comprising:
a) a mercaptan;
b) at least one metal ionic species selected from the
group consisting of molybdates, tungstates, vanadataes,
zirconium, cobalt and titanium; and
c) optionally, an ethoxylated alcohol;
wherein application of the aqueous corrosion resistant
coating inhibits corrosion of the surfaces.
Appellants, (App. Br. 3-4), request review of the following rejections
from the Examiner’s final office action:
I. Claims 13 and 15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ferrier (European Patent No.1,158,843 A1
published Nov. 28, 2001).

1 An oral argument was held for this appeal on February 14, 2012.
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Application 11/983,982

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II. Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ferrier in view of Kochilla (U.S. Patent Publication No.
2005/0121332 A1 published June 9, 2005).
III. Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ferrier in view of Kochilla and further in view of Jennings, et al.
(G. Kane Jennings & Paul E. Laibinis, Self-assembled Monolayers
of Alkanethiols on Copper Provide Corrosion Resistance in
Aqueous Environments, 116 COLLOIDS AND SURFACES 105 (1996)).
IV. Claim 17 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ferrier in view of Howell (U.S. Patent No. 6,852,427 B1 issued
Feb. 8, 2005).
V. Claim 18 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ferrier in view of Kochilla and Jennings and further in view of
Howell.
VI. Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ferrier in view of Jennings.

After review of the arguments and evidence presented by both
Appellants and the Examiner we affirm the stated rejections. We affirm for
the reasons set forth by the Examiner and add the following for emphasis.
Claims 13 and 15
Appellants argue the claimed aqueous corrosion resistant coating
composition is very different from the coating composition of Ferrier.
Appellants argue “[a]lthough the composition of Ferrier contains a corrosion
inhibitor, it also contains a strong oxidant such as hydrogen peroxide or
persulfates and a strong acid such as sulfuric acid. As a result, the Ferrier
composition and process corrodes the surface which is contacted.” (App.Br.
4-5).
We initially note that the claimed invention utilizes the term
“comprising” when describing the components of the coating composition
utilized in the claimed process. This claim language allows for other
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Application 11/983,982

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components to be present in the coating composition. See In re Baxter, 656
F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers in the
reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
Appellants’ arguments are not persuasive. Appellants have not argued
that Ferrier’s composition does not comprise a mercaptan and at least one
metal ionic species as required by the claimed invention. The Examiner
correctly argues that Ferrier’s composition would have been expected to
impart corrosion inhibition properties on the surface of the printed circuit
board to which it has been applied. (Ans. 9; Ferrier, [0018]).
Appellants argue that the composition described in Ferrier corrodes
the surface it contacts because of the presence of “strong oxidizer and strong
acid.” Appellants specifically state that “there can be no doubt that the
composition described in Ferrier aggressively attacks the surface being
contacted.” (App. Br. 5). In support of this position, the Appellants also
rely upon the Declaration of Steve Castaldi. (Id. at 6).
Appellants’ arguments and the cited statements in the Declaration do
not established that the composition utilized in Ferrier’s method is different
from that required by the claimed invention. The statements of the
Declarant and the arguments by Appellants do not identify specific portions
of Ferrier or other evidence that supports the argued conclusion. Appellants
have not adequately explained how the present claim language excludes
utilizing the adhesion promoting composition described in Ferrier.
For the foregoing reasons and those presented by the Examiner, the
rejection of claims 13 and 15 is affirmed.
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Application 11/983,982

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Claim 14
Appellants argue that the Examiner’s rejection of the subject matter of
claim 14 is in error because Kochilla is not properly combinable with
Ferrier. Specifically Appellants state, “Kochilla describes that the additive
are confined to the cathodic chamber to remain free of oxidation and Ferrier
describes a composition that contains a strong oxidizer and a strong acid.”
(App. Br. 7).
Appellants’ argument is not persuasive of error in the Examiner’s
rejection. The Examiner recognized that Ferrier did not disclose the
composition as comprising of xanthan gum. The Examiner found that
xanthan gum was a well know viscosity control agent in the coating
composition art as exhibited by Kochilla. The Examiner properly concluded
that the inclusion of xanthan gum as viscosity modifier in the coating
composition of Ferrier would have been obvious to a person of ordinary skill
in the art. (Ans. 4). “[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants have not adequately
explained why a person of ordinary skill in the art would not have
reasonably expected that the well-known viscosity control agent xanthan
gum would have been incompatible with the coating composition of Ferrier.
Claims 16-18 and 20
Appellants’ arguments for patentability of claims 16-18 and 20 have
been fully considered. The Examiner additionally relied upon Jennings
and/or Howell to address the claimed specie of mercaptan or metal ion
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identified by claims 16-18 and 20. We agree with the Examiner that these
additionally cited references identify the claimed specie of mercaptan and
metal ion and that a person of ordinary skill in the art would have had a
reasonable expectation of their suitability for use in the invention of Ferrier.
Appellants’ arguments are not persuasive of patentability for the reasons
presented by the Examiner in the Answer.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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