Ex Parte Palumbo et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10516300 (B.P.A.I. Jul. 26, 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.
10/516,300 12/09/2004 Gino Palumbo BROO3001/TJM 5590
23364 7590 07/27/2012
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
LEADER, WILLIAM T
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
07/27/2012 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 GINO PALUMBO, IAIN BROOKS,
JONATHAN MCCREA, GLENN D. HIBBARD,
FRANCISCO GONZALEZ, KLAUS TOMANTSCHGER,
and UWE ERB

____________

Appeal 2010-010859
Application 10/516,300
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and JEFFREY T. SMITH,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 8 and 10 through 34, all of the claims pending
in the above-identified application.1 We have jurisdiction under 35 U.S.C. §
6.

1 See Appeal Brief (“App. Br.”) filed April 8, 2010, 2; Examiner’s Answer (“Ans.”) filed
July 7, 2010, 2.

Appeal 2010-010859
Application 10/516,300

STATEMENT OF THE CASE
The subject matter on appeal is directed to an electrodeposition
process for forming “[n]ano-crystalline coatings or free-standing deposits of
metallic material…by varying process parameters such as current density,
duty cycle, work piece temperature, plating solution temperature, solution
circulation rates over a wide range of conditions.” (See Spec. 5, ll. 9-12.)
The suitable, but not critical, operating parameter ranges are said to include,
among other things, “electrolyte solution circulation/agitation rates: ≤ 10
liter per cm2 anode or cathode area (0.0001 to 10 l/min.cm2)” which is very
close to no agitation to an agitation rate of 10 liters/min. per cm2 anode or
cathode area. (See Spec. 5, ll. 20-21.) This agitation can be carried out “by
means of pumps, stirrers or ultrasonic agitation” and can be broadly defined
in terms of 0 to 750 ml solution per minute per applied Ampere average
current. (See Spec. 6, ll. 6-9.) Details of the appealed subject matter are
recited in representative claims 1, 31, and 332 reproduced from the Claims
Appendix to the Appeal Brief as shown below:
1. Process for cathodically electrodepositing a selected metallic
material on a permanent or temporary substrate in nanocrystalline form with
an average grain size of less than 100 nm using electrodeposition at a
deposition rate of at least 0.05 ram/h, comprising:
(a) providing an aqueous electrolyte containing ions of said metallic
material, and
(b) agitating the electrolyte at a per anode or cathode area agitation
rate of 0.0001 to 10 liter per min per cm2 anode or cathode area.

2 For purposes of this appeal, we decide the propriety of the Examiner’s
§103(a) rejections set forth in the Answer based on argued claims 1, 31, and
33 in accordance with 37 C.F.R. § 41.37(c)(1)(vii) .

Appeal 2010-010859
Application 10/516,300

31. Process for cathodically electrodepositing a selected metallic
material on a permanent or temporary substrate in nanocrystalline form with
an average grain size of less than 100 nm at a deposition rate of at ]east 0.05
mm/h, comprising:
providing an aqueous electrolyte containing ions of said metallic
material, agitating the electrolyte at a per anode or cathode area agitation
rate in the range of 0.0001 to 10 liters per min per cm2 anode or cathode
area, and passing single or multiple cathode-current pulses between said
anode and said cathode.

33. Process for cathodically electrodepositing a selected metallic
material on a permanent or temporary substrate in nanocrystalline form with
an average grain size of less than 100 nm at a deposition rate of at least 0.05
mm/h, comprising:
providing an aqueous electrolyte containing ions of said metallic
material, agitating the electrolyte at a per anode or cathode area agitation
rate in the range of 0.0001 to 10 liter per min per cm2 anode or cathode area.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer:
Biberbach US 3,929,595 Dec. 30, 1975
Hutkin US 4,088,544 May 9, 1978
Erb ‘797 US 5,433,797 Jul. 18, 1995
Gonzalez US 6,743,346 B2 Jun. 1, 2004
Uzoh US 7,378,004 B2 May 27, 2008

Electroplating, Frederick A. Lowenheim, McGraw-Hill Book
Company, pp. 139-140 (1978) (hereinafter referred to as “Lowenheim”).

Applicants’ admission at pages 2 and 3 of the Specification
(hereinafter referred to as the “admitted prior art”).

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:
Appeal 2010-010859
Application 10/516,300

1) Claims 1 through 8, 10 through 12, 15, 17, 27 through 31, and 33
under 35 U.S.C. § 103(a) over the combined disclosures of Erb ‘797,
Lowenheim, Biberbach, and Gonzalez;
2) Claims 16, 18 through 25, and 32 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Erb ‘797, Lowenheim,
Biberbach, Gonzalez, and the admitted prior art;
3) Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Erb ‘797, Lowenheim, Biberbach, Gonzalez, and
Uzoh; and
4) Claim 26 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Erb ‘797, Lowenheim, Biberbach, Gonzalez, and Hutkin.
(See App. Br.4-5.)

DISCUSSION
In traversing the § 103(a) rejections set forth in the Answer,
Appellants only contend that one of ordinary skill in the art, armed with the
collective teachings of Erb ‘797, Lowenheim, Biberbach, and Gonzalez,
would not have been led to employ “an agitation rate of 0.0001 to 10 liter
per min per cm2 anode or cathode area” as recited in claims 1, 31, and 33.
(See App. Br. 5-9 and Reply Br. 6-12.)
Thus, the dispositive question presented is: Has the Examiner
reversibly erred in determining that one of ordinary skill in the art, armed
with the collective teachings of Erb ‘797, Lowenheim, Biberbach, and
Gonzalez, would have been led to employ “an agitation rate of 0.0001 to 10
liter per min per cm2 anode or cathode area” as recited in claims 1, 31, and
Appeal 2010-010859
Application 10/516,300

33. On this record, we answer this question in the negative. Our reasons
follow.
There is no dispute that Erb ‘797 teaches a process for cathodically
electrodepositing a selected metallic material in nanocrystalline form with an
average grain size of less than 100nm on a substrate, wherein an aqueous
electrolyte containing ions of the selected metallic material is provided in an
electrolytic cell having an anode and cathode and continuously stirred or
agitated at 0 to 500 rpm while passing DC current, having a peak current
density in the range between about 0.1 and about 3.0 A/cm2, at pulsed
intervals between the anode and the cathode. (Compare Ans. 4, 7, 8 with
App. Br. 5-9 and Reply Br. 6-12; See also col. 2, l. 51 to col. 3, l. 2 and col.
6, ll. 30-33.)]
Although Erb ‘797 does not identify its agitation rate in term of
“0.0001 to 10 liter per min per cm2 anode or cathode area,” the Examiner
has correctly found, and Appellants have not disputed, that Biberbach and
Gonzalez teach the importance of employing the optimum current density
and agitation rate to obtain the desired deposition rates, including those
deposition rates encompassed by claims 1, 31, and 33, in an
electrodeposition or electroplating process. (Compare Ans. 5-6 and 11-14
with App. Br. 5-9 and Reply Br. 6-12.) More importantly, as correctly found
by the Examiner at page 5 of the Answer, Lowenheim teaches (p. 139) that:
As metal is deposited upon a cathode, the solution in its
immediate neighborhood is depleted in metal ions. If plating is
to continue, these ions must be replenished.

To replenish the metal ions in the immediate neighborhood of a cathode (an
area that corresponds to the surface area of the cathode and near the surface
Appeal 2010-010859
Application 10/516,300

of the cathode), Lowenheim teaches employing convection and agitation
involving the movement of substantial quantities of the solution (liter per
minute) relative to the electrodes to replenish metal ions in the immediate
neighborhood of the electrode, i.e., cathode or anode. Id. In other words,
Lowenheim teaches that convention and/or agitation must be sufficient to
deliver appropriate quantities of the solution containing metal ions in
appropriate time periods to fill the area or space (the immediate
neighborhood of the electrode) that corresponds to the surface area of the
electrode to replenish the metal ions depleted in that area or space. Id.
Thus, we concur with the Examiner that the determination of the
optimum agitation rate in terms of liters per minute per the area of the
electrode (anode or cathode), such as the broad agitation rate range
involving very negligible or slight agitation to vigorous agitation recited in
claims 1, 31, and 33, is well within the ambit of one of ordinary skill in the
art since the collective teachings of Lowenheim, Biberbach, and Gonzalez
would have suggested that such agitation rates are result effective variables
in terms of replenishing an area corresponding to the surface area of the
electrode and providing desired deposition rates in the electrodeposition
process of the type taught by Erb ‘797. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1368 (Fed. Cir. 2007)( “[D]iscovery of an optimum value of a variable
in a known process is usually obvious.”); In re Boesch, 617 F.2d 272, 276
(CCPA 1980)(“[D]iscovery of an optimum value of a result effective
variable…is ordinarily within the skill of the art.”)
Appellants rely upon a Rule 132 declaration executed by Uwe Erb on
June 24, 2009 (the “Erb Declaration”) to show that Erb’797 employs
continuous stirring for the purpose different from that contemplated by
Appeal 2010-010859
Application 10/516,300

Appellants. (See App. Br. 8 and Reply Br. 10-11.) Paragraph 7 of the Erb
Declaration states that:
Example 7 of my patent [(Erb ‘797)] says continuous
stirring (0-500 rpm) may be present. The purpose of this
stirring in Example 7 was to remove concentration gradients
and temperature gradients in the electroplating bath. The
purpose of the stirring in Example 7 was not to control
microstructure grain size of an electrodeposit so it is
nanocrystalline.

However, the Erb Declaration does not dispute the Examiner’s finding that
Erb ‘797 teaches employing such continuous stirring or agitation (0-
500rpm), inclusive of the agitation of the type suggested by Lowenheim,
Biberbach, and Gonzalez, during the electrodeposition or electroplating of
the selected metallic material in the nanocrystalline form with an average
grain size of less than 100nm on the substrate as discussed supra. Nor does
the Erb Declaration question Erb ‘797’s indication that “the large body of
knowledge that already exists in the areas of electroplating, electrowinning
and electroforming[, inclusive of those taught by Lowenheim, Biberbach and
Gonzalez,]” is useful for its electrodeposition process for depositing the
selected metallic material in the nanocrystalline form. (See Erb ‘797, col. 1,
ll. 57-65.) Finally, the Erb Declaration does not question the teachings of
Lowenheim, Biberbach, and Gonzalez relied upon by the Examiner.
Appellants also rely on the claims allowed by the EPO, German
Patent Office and Canadian Intellectual Property Office to show that the
claims on appeal are patentable over the collective teachings of the applied
prior art references relied upon by the Examiner. However, it is well settled
that each case is determined based on its own merits. In re Giolito, 530 F.2d
397, 400 (CCPA 1976) (“We reject appellants’ argument that the instant
Appeal 2010-010859
Application 10/516,300

claims are allowable because similar claims have been allowed in a patent.
It is immaterial whether similar claims have been allowed….”). This is
especially true in this case since Appellants have not shown that the EPO,
German Patent Office and/or Canadian Intellectual Property Office have
considered the specific rejections of specific claims set forth by the
Examiner in the Answer and that U.S. Patent and Trademark Office is bound
by the decisions of the EPO, German Patent Office and/or Canadian
Intellectual Property Office.
Accordingly, based on the fact findings and reasons set forth in the
Answer and above, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness of the claimed subject matter within
the meaning of 35 U.S.C. §103(a).

ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting the claims on
appeal is AFFIRMED; 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)(1)(iv).
AFFIRMED

sld