KACZMAREK, Michal et al.

Patent Trials and Appeals Board

Dec 26, 2019

15503735 - (D) (P.T.A.B. Dec. 26, 2019)

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.
15/503,735 02/14/2017 Michal KACZMAREK ATODP0196WOUS 2702
23908 7590 12/26/2019
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAL KACZMAREK, ANTJE RICHTER,
LUKAS BEDRNIK, and ERIC SIBÃCERGE
____________

Appeal 2019-003683
Application 15/503,735
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–11.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Atotech Deutschland GmbH as the real
party in interest. Appeal Brief filed January 15, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered August 29, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims an acidic zinc-nickel alloy plating bath composition.
Appeal Br. 3. Claim 1, the sole pending independent claim, illustrates the
subject matter on appeal, and is reproduced below with contested language
italicized:
1. An acidic zinc-nickel alloy plating bath composition
comprising
a source for zinc ions,
a source for nickel ions,
a source for chloride ions and
having a pH value in the range of 2 to 6.5,
characterized in that the composition further comprises
at least one dithiocarbamyl alkyl sulfonic acid or salt thereof
represented by formula (I)

wherein
R1 and R2 are independently selected from the group
consisting of hydrogen, methyl, ethyl, 1-propyl, 2-propyl, 1-
butyl, 2-butyl, and tert-butyl,
R3 is selected from the group consisting of methylene,
ethylene, propylene, butylene, pentylene and hexylene and
R4 is selected from the group consisting of hydrogen and
a cation, and
the composition is free of polyalkyleneglycols and other
alloying metals than zinc and nickel ions,
wherein the concentration of the at least one
dithiocarbamyl alkyl sulfonic acid or salt thereof ranges from
0.5 to 100 mg/l; and
wherein the concentration of zinc ions ranges from 5 to
100 g/1.

Appeal Br. 14 (Claims Appendix) (emphasis and spacing added).
Appellant’s Specification indicates that the “technical effect of the at
least one dithiocarbamyl alkyl sulfonic acid or salt thereof in the acidic
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plating bath composition according to the present invention is an improved
throwing power of said acidic plating bath composition when depositing a
zinc or zinc-nickel alloy layer onto a substrate” having “a complex shape,”
which results in a more uniform thickness distribution of the deposited layer.
Spec. 7, ll. 5–11; 11, ll. 8–17.
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered February 26, 2019 (“Ans.”):
I. Claims 1–8 under 35 U.S.C. § 103 as unpatentable over Kim3 in
view of Capper;4
II. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Kim in view of Capper and Del;5 and
II. Claim 11 under 35 U.S.C. § 103 as unpatentable over Kim in
view of Capper.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,6 we affirm the Examiner’s rejections
of claims 1–11 under 35 U.S.C. § 103 for the reasons set forth in the Final
Action, the Answer, and below.

3 KR 10-2002-051276, published June 28, 2002.
4 US 2005/0189231 A1, published September 1, 2005.
5 FR 2723595 A3, published February 16, 1996.
6 We do not consider any new argument Appellant presents in the Reply
Brief that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant does not present arguments directed to any particular
rejection or claim. Appeal Br. 4–13. We accordingly select claim 1 as
representative, and decide the appeal as to claims 1–11 based on claim 1
alone. 37 C.F.R. § 41.37(c)(1)(iv).
Kim discloses an acidic zinc-nickel alloy electroplating solution that
contains zinc chloride, nickel chloride, and chlorine ions, and is free of
polyalkyleneglycols and other alloying metals. Kim Abstr., ¶¶ 2, 10, 11, 21,
29. Kim discloses that electroplating the solution on the surface of a steel
plate yields a plating layer (or coating) having “good luminous intensity”
and a good degree of whiteness, with suppressed surface roughness. Kim
Abstr., ¶¶ 2, 10, 11, 29. As the Examiner finds (Final Act. 6–7), Kim does
not disclose that the electroplating solution includes at least one
dithiocarbamyl alkyl sulfonic acid or salt of the formula recited in claim 1.
Capper, however, discloses a zinc-nickel alloy electroplating bath
including zinc ions, nickel ions, one or more additional metal ions, and an
auxiliary brightening agent, such as DPS (N, N dimethyl-dithiocarbamyl
propyl sulfonic acid sodium salt). Capper ¶¶ 21, 86, 87, 88.
In view of the above disclosures in Kim and Capper, the Examiner
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concludes that it would have been obvious to one of ordinary skill in the art
before the effective filing date of the present application to include DPS
(N,N-dimethyl-dithiocarbamyl propyl sulfonic acid sodium salt) as disclosed
in Capper in Kim’s zinc-nickel alloy electroplating solution, to brighten a
coating produced by electroplating Kim’s solution. Final Act. 7.
Appellant argues that one of ordinary skill in the art seeking to create
a bath for electrodepositing a zinc-nickel binary alloy with improved
throwing power resulting in more even deposit on substrates having complex
shapes would have had no reason to look for an auxiliary brightener of any
sort, and, thus, would have had no reason, interest, or motivation to look to
Capper, because Capper utilizes DPS in a plating bath composition as a
brightening agent, which is “a completely different purpose” than improving
throwing power. Appeal Br. 4, 5, 7–8. Appellant argues that Kim does not
include any disclosure “that would have suggested one look to Capper for
anything,” much less “any suggestion to add a brightener.” Appeal Br. 12.
Appellant argues that Kim also does not disclose anything “relating to
throwing power or deposition onto complex surfaces.” Id. Appellant argues
that the Examiner’s rejection is, therefore, based on impermissible hindsight.
Appeal Br. 4–5.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As discussed above, Kim discloses that electroplating the zinc-nickel
alloy electroplating solution described in the reference on the surface of a
steel plate yields a plating layer (or coating) exhibiting “good luminous
intensity” and a good degree of whiteness, characteristics which reflect the
appearance of the coating. One of ordinary skill in the art seeking to
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develop a zinc-nickel alloy electroplating solution that would yield a coating
having an appearance as disclosed in Kim—with good luminous intensity
and whiteness—and seeking to enhance the coating’s appearance by
increasing its brightness, reasonably would have been led to include a
brightening agent as disclosed in Capper, such as DPS, in the electroplating
solution. Thus, although neither Kim nor Capper discloses that an auxiliary
brightening agent such as DPS improves the throwing power of a zinc-nickel
alloy electrodeposition solution, one of ordinary skill in the art nonetheless
would have had a reason to include Capper’s DPS in Kim’s zinc-nickel alloy
electroplating solution—to increase the brightness of a coating produced
with the solution. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)
(explaining that “[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls”); see also In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996) (“Although the motivation to combine here differs from that of
the applicant, the motivation in the prior art to combine the references does
not have to be identical to that of the applicant to establish obviousness.”);
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not
require that the references be combined for the reasons contemplated by the
inventor.”).
Furthermore, Appellant’s argument that Kim does not include any
disclosure “that would have suggested one look to Capper for anything,”
much less “any suggestion to add a brightener” is improperly based on Kim
alone, and does not take into consideration Capper’s disclosure of the
suitability of using DPS as a brightening agent in a zinc-nickel alloy
electroplating solution. Appellant’s argument, therefore, is not based on
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what the combined disclosures of Kim and Capper reasonably would have
suggested to one of ordinary skill in the art at the time of filing—use of DPS
to brighten a coating produced by Kim’s zinc-nickel alloy electroplating
solution, as discussed above. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
Contrary to Appellant’s arguments, the Examiner’s rejection is,
therefore, not based on impermissible hindsight, but is based on explicit
disclosures in Kim and Capper, and what a combination of those disclosures
reasonably would have suggested to one of ordinary skill in the art before
the effective filing date of the present application. In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) (A rejection does not rely on improper
hindsight reconstruction so long as it “takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention
was made and does not include knowledge gleaned only from applicant's
disclosure.”)
Appellant argues that “Capper, in contrast to the present invention,
deposits only ternary or higher alloys containing zinc, nickel and one or
more additional metal, and explicitly requires the presence of compounds
such as polyalkyleneglycols.” Appeal Br. 4. Appellant argues that
“additional metals and polyalkyleneglycols are explicitly excluded from the
present claims, and in clear contrast, Capper explicitly requires these
ingredients.” Id. Appellant argues that “a person looking to deposit a binary
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alloy would not be interested in prior art that relates to ternary or higher
alloys,” and “[t]he person could have no reasonable expectation of success,
since there would be no reason to employ ingredients required by the
reference but excluded from the claimed composition.” Appeal Br. 5–6.
Appellant argues that “there can be no possible ‘reasonable expectation of
success’ in taking anything from Capper, since Capper discloses a
completely different bath” than the plating bath recited in claim 1. Appeal
Br. 7–8.
Appellant’s arguments again do not identify reversible error in the
Examiner’s rejection. Although Capper’s zinc-nickel alloy electroplating
bath does include one or more additional metal ions (¶ 21), and may include
“one or more non-ionogenic, surface active polyoxyalkylene compound” (¶
63), we find no disclosure in Capper indicating that a polyalkyleneglycol is a
required component of Capper’s electroplating bath, and Appellant does not
identify any such actual disclosure in Capper.
Nonetheless, as discussed above, the Examiner’s rejection is based on
including the DPS auxiliary brightening agent disclosed in Capper in Kim’s
zinc-nickel alloy electroplating solution—which is free of
polyalkyleneglycols and other alloying metals. The zinc-nickel alloy
electroplating solution resulting from the proposed combination would,
therefore, be free of polyalkyleneglycols and alloying metals other than zinc
and nickel, as recited in claim 1.
Although Capper’s zinc-nickel alloy electroplating bath does include
one or more metal ions in addition to zinc and nickel, we find no evidence
on the record before us indicating that the DPS auxiliary brightening agent
disclosed as suitable for use in Capper’s zinc-nickel alloy electroplating bath
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would not function as a brightening agent in Kim’s zinc-nickel alloy
electroplating solution. For example, the record before us is bereft of any
evidence demonstrating that the presence of additional metal ions in a zinc-
nickel alloy electroplating solution other than zinc and nickel are necessary
for DPS to function as a brightening agent. Thus, in view of the similarity of
Kim’s and Capper’s zinc-nickel alloy electroplating baths, one of ordinary
skill in the art would reasonably would have expected that DPS would
successfully function as a brightening agent in Kim’s zinc-nickel alloy
electroplating solution. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)
(“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.”); In re
O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“Obviousness does not
require absolute predictability of success. . . . [A]ll that is required is a
reasonable expectation of success.”).
Appellant’s unsupported arguments asserting that one of ordinary skill
in the art would not have reasonably expected that DPS could be
successfully used in Kim’s electroplating solution do not constitute the
necessary evidence required to demonstrate lack of a reasonable expectation
of success in the proposed combination of Kim and Capper. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to
follow from common experience is just attorney argument and not the kind
of factual evidence that is required to rebut a prima facie case of
obviousness.”); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1043 (Fed. Cir. 2017) (“Attorney argument is not evidence” and cannot
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rebut other admitted evidence.).
Appellant argues that “nothing whatsoever in Capper” would have
suggested use of DPS for any purpose other than a brightening agent.
Appeal Br. 7. Appellant argues that “[b]rightening agents are not known for
increasing throwing power; rather, they are known for brightening metal
deposits. There is no relationship between these properties.” Appeal Br. 8.
Although Capper may not indicate that DPS increases throwing
power, including DPS in Kim’s zinc-nickel alloy electroplating solution
nonetheless would have increased the throwing power of the solution. In re
Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical
composition and its properties are inseparable.). Appellant’s recognition
that dithiocarbamyl alkyl sulfonic acids or salts, such as DPS, increase
throwing power of zinc-nickel alloy plating bath compositions does not
impart patentability to the plating bath recited in claim 1, because this
function of DPS would have naturally flowed from following the suggestion
stemming from the combined disclosures of Kim and Capper to include DPS
in Kim’s zinc-nickel alloy electroplating solution (discussed above). PAR
Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014)
(concept of inherency, when applied to obviousness, is present “when the
limitation at issue is the ‘natural result’ of the combination of prior art
elements”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.”).
Appellant argues that even if one of ordinary skill in the art would
have looked to Capper, “there is absolutely no reason that person of ordinary
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skill would [have] select[ed] the one and only dithiocarbamyl alkyl sulfonic
acid or salt disclosed by Capper as an auxiliary brightener, out of the huge,
long list of hundreds of possible auxiliary brighteners disclosed by Capper.”
Appeal Br. 5.
As discussed above, however, one of ordinary skill in the art seeking
to brighten a coating produced by Kim’s zinc-nickel alloy electroplating
solution reasonably would have been led to add an auxiliary brightening
agent as disclosed in Clapper to the solution. Although Clapper discloses
numerous suitable brightening agents, it is well-established that “[r]reading a
list and selecting a known compound to meet known requirements is no
more ingenious than selecting the last piece to put in the last opening in a
jig-saw puzzle.” Sinclair & Carroll Co. v. lnterchemical Corp., 325 U.S.
327 (1945)). Capper’s disclosure of a multitude of effective auxiliary
brightening agents does not render any particular brightening agent less
obvious, because Capper is available for all that it would have suggested to
one of ordinary skill in the art at the time of Appellant’s invention—that
each of the auxiliary brightening agents disclosed in the reference would be
suitable for brightening a coating produced by a zinc-nickel alloy
electroplating solution. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious.”).
We, accordingly, sustain the Examiner’s rejection of claim 1, and
claims 2–8, which each depend from claim 1, under 35 U.S.C. § 103. We
also sustain the Examiner’s rejections of claims 9–11 under 35 U.S.C. § 103
because the Examiner does not rely on any additional prior art applied in
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these rejections for any disclosure that remedies the deficiencies of Kim and
Capper, discussed above.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103  Kim, Capper 1–8
9, 10 103  Kim, Capper, Del 9, 10
11 103 Kim, Capper 11
Overall
Outcome
1–11

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