Yuasa, Satoshi

Patent Trials and Appeals Board

Dec 19, 2019

11704805 - (D) (P.T.A.B. Dec. 19, 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.
11/704,805 02/09/2007 Satoshi Yuasa 1285-26 PCT/CON/RCEIV 3058
23869 7590 12/19/2019
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
12/19/2019 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 SATOSHI YUASA
____________

Appeal 2019-000521
Application 11/704,805
Technology Center 1700
____________

Before JEFFREY T. SMITH, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5, and 6. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention is generally directed to a method for
electroplating a metal material with a tin-zinc alloy plating bath. (Br. 2.)

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as DIPSOL
CHEMICALS CO., LTD. (Br. 2.)
Appeal 2019-000521
Application 11/704,805

2
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method for electroplating a metal material with a tin-
zinc alloy plating bath to produce a metal plated with a tin-zinc
alloy, said method comprising:
(a) contacting said metal material with a tin-zinc alloy
plating bath which has a pH of 2 to 10 and comprises
a tin ion in a concentration of 1 to 100 g/L,
a zinc ion in a concentration of 0.2 to 80 g/L,
a hydroxycarboxylic acid or a salt thereof in a
concentration of 0.25 to 3 mol/L, and
a water-soluble compound obtained by a reaction
of an aliphatic amine, an organic acid ester and a phthalic
anhydride;
at a plating bath temperature of 40 to 90°C; and
(b) stirring at a plating bath stirring rate of 30 to
60 m/min wherein said stirring is carried out by a plating
apparatus of a jet flow system in which the bath solution is
circulated with a pump or by a plating apparatus for steel
sheets;
at a cathode current density of 40 to 80 A/dm2;
wherein said hydroxycarboxylic acid is selected from the
group consisting of citric acid, tartaric acid, malic acid, glyceric
acid, lactic acid, -hydroxypropionic acid and gluconic acid,
wherein the plating bath does not include an
alkanesulfonic acid,
further wherein the plating bath does not include an
alkanolsulfonic acid,
further wherein the plating bath does not include a
polyalkylene glycol.

Br. 25, Claims Appendix (paragraphing added).
The following rejections are presented for our review:
I. Claims 1, 3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over JP 2000-26991 (JP ’991), Sakurai (US 5,618,402 issued
Appeal 2019-000521
Application 11/704,805

3
April 8, 1997), Velasquez (US 5,985,106 issued Nov. 16, 1999), and Kadija
(US 4,749,626, issued June 7, 1998).
II. Claims 1, 3, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Crosby (US 2002/0187355 A1, published Dec. 12, 2002)
Sakurai (US 5,618,402 issued April 8, 1997), Kawaguchi (US 2003/0111339
Al, published June 19, 2003) and Kadija.
III. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Crosby, Sakurai, Kawaguchi, Kadija, and Jordan (US 2002/0046954 A1,
published April 25, 2002).
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejections under 35 U.S.C. § 103(a).
The Examiner has reproduced the rejections on appeal in the Examiner’s
Answer. (Ans. 3–18.)

Claims 1, 3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over JP ’991, Sakurai, Velasquez, and Kadija.2
We affirm the rejection for the reasons and responses to Appellant’s
arguments presented by the Examiner. We add the following for emphasis.
Appellant argues the Examiner has not provided motivation to modify
JP ’991 to include a water-soluble compound in the plating bath as required
by independent claim 1. (Br. 8–9.)

2 Appellant argues claims 1, 3, 5, and 6 together. See generally Appeal
Brief. Therefore, we select claim 1 as representative, and claims 3, 5, and 6
will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2015).
Appeal 2019-000521
Application 11/704,805

4
Appellant’s argument is not persuasive. Sakurai teaches the
suitability of including a brightener additive in a tin zinc-alloy electroplating
bath. (Sakurai 3, ll. 35–39). As such, a person of ordinary skill in the art
would have recognized the suitability of including a water soluble brightener
in an electroplating bath for a tin-zinc alloy. Appellant has not directed us to
evidence that establishes that the inclusion of a water soluble brightener in
an electroplating bath for a tin-zinc alloy was unknown to persons of
ordinary skill in the art prior to this invention.
Appellant argues the person of ordinary skill in the art would not have
combined the teachings of JP ’991, Sakurai, Velasquez, and Kadija given the
differences in the disclosures of each of the cited references. (Br. 9.)
Appellant’s argument is not persuasive. Appellant’s argument does
not address the specific reasons identified by the Examiner for combining
the teachings of the cited references. Appellant has failed to provide
technical reasoning explaining error in the Examiner’s findings and reasons
for citing the references. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious distinctions
over the prior art.”).
Appellant argues the examples of JP ’991 would not have motivated a
person of ordinary skill in the art to develop the subject matter of
independent claim 1. Appellant argues there is no motivation in JP ’991 that
would cause one of ordinary skill in the art to replace any of the acids in the
examples with one of Appellant’s specifically recited hydroxycarboxylic
acids in a concentration of 0.25 to 3 mol/L as specified by independent claim
1. (Br. 10–11.) Appellant argues JP ’991, including paragraph 19, does not
Appeal 2019-000521
Application 11/704,805

5
provide a suggestion to use any of gluconic acid, tartaric acid, citric acid,
malic acid, and lactic acid in a tin-zinc alloy plating bath as required by the
independent claim 1. (Br. 11.)
Appellant’s arguments lack persuasive merit. A reference is available
for all that it teaches to a person of ordinary skill in the art. In re Inland
Steel Co., 265 F.3d 1354 (Fed. Cir. 2001); Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Appellant has not disputed that JP ’991 teaches gluconic acid, tartaric acid,
citric acid, malic acid, and lactic acid as complexing agents suitable for use
in electroplating baths. (JP ’991 ¶ 19.) JP ’991 further discloses the
complexing agent is present in amounts that encompass the claimed
invention. (JP ’991 ¶ 20.)
Appellant argues JP ’991 does not exhibit current densities higher
than 20 A/dm2 and Sakurai’s preferred density range of 0.1 to 10 A/dm2
teaches away from the cathode current density of 40 to 80 A/dm2 required by
independent claim 1. (Br. 11–12.)
This Argument is unavailing. The Examiner finds JP ’991 teaches the
cathode current density is preferably 0.05 to 50 A/dm2 (page 15, [0095]).
(Ans. 4; JP ’991¶ 15.) This preferred range overlaps the range of the
claimed invention. Such an overlapping range, especially when there is
substantial overlap as here, has been held to be at least prima facie obvious.
See In re Malagari, 499 F.2d 1297, 1303, (CCPA 1974); cf. Atlas Powder
Co. v. IRECO Inc., 190 F.3d 1342, 1346–48 (Fed. Cir. 1999).
Appeal 2019-000521
Application 11/704,805

6

Appellant argues there is no disclosure or suggestion in either
Velasquez or Kadija of stirring a plating bath at a stirring rate of 30 to 60
m/min in a method as recited in claim 1. (Br. 13.)
This Argument is unavailing. The Examiner finds Velasquez teaches
plating a tin-zinc alloy in a continuous rack plater and Kadija teaches a
method for electroplating a tin-containing coating on a substrate material
utilizing flow rates in the range of about 2 cm/sec to about 100 cm/sec.
(1.2 m/min to 60 m/min) amounts that encompass the claimed 30 to
60 m/min. (Ans. 7; Kadija col. 5, ll. 24–35.) Consequently, a person of
ordinary skill in the art would have found the claimed stirring rate obvious
from the cited prior art.
For the reasons expressed by the Examiner and those presented above,
we determine that Appellant has not shown error in the rejection of
independent claim 1. As the Examiner relies upon the same reasoning in
rejecting dependent claims 3, 5, and 6 (Ans. 3–8), we similarly determine
that Appellant has not shown error in the rejection of these claims.

Claims 1, 3, and 6, are rejected under 35 U.S.C. § 103(a) as
unpatentable over Crosby, Sakurai, Kawaguchi, and Kadija. 3
First, Appellant argues that the Examiner has not followed proper
procedure because the finality of this rejection is improper. (Br. 15–16.)

3 Appellant argues claims 1, 3, and 6 together. See generally Appeal Brief.
Therefore, we select claim 1 as representative, and claims 3 and 6 will stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2015).
Appeal 2019-000521
Application 11/704,805

7
If an Examiner has procedurally erred, the remedy lies exclusively in
petitioning the Director for supervisory review. 37 C.F.R. § 1.181;
cf. 35 U.S.C. § 6(b) (giving substantive review powers directly to the
Board). The Director of the United States Patent and Trademark Office, not
the Board, supervises examination and Examiners. 35 U.S.C. §§ 3(a)(2)(A),
132(a).

Appellant argues Crosby is different from the present claimed
invention in that Crosby includes a carboxyalkylated polyalkyleneimine
compound as an essential component. Appellant argues Crosby describes
zinc as one of many other alloying metals, but the Examples describe a tin-
copper alloy (see, e.g., Example 1 of Crosby) and a pure tin plating bath (see
Example 2 of Crosby). (Br. 16–17.)
Appellant’s arguments are not persuasive of reversible error. The
transitional term “comprising” is inclusive or open-ended and does not
exclude additional, unrecited elements or method steps. See, e.g., Mars, Inc.
v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). The claim
language does not exclude the presence of a carboxyalkylated
polyalkyleneimine. Appellant has failed to explain why carboxyalkylated
polyalkyleneimine is excluded from the claimed invention.
As stated above when discussing JP ’991, prior art references are
available for all that they teach a person of ordinary skill in the art and are
not limited to their exemplified embodiments. Crosby discloses zinc can be
used along with other metals in the electroplating bath. (Crosby ¶ 30.)
Appellant argues Crosby and does not disclose or suggest the plating
bath stirring rate of 30 to 60 m/min of the claimed method and Kawaguchi
Appeal 2019-000521
Application 11/704,805

8
does not teach or suggest stirring at a plating bath stirring rate of 30 to 60
m/min wherein said stirring is carried out by a plating apparatus of a jet flow
system in which the bath solution is circulated with a pump, or by a plating
apparatus for steel sheets at cathode current density of 40 to 80 A/dm2, as
required by the method of claim 1. (Br. 17.)
Appellant’s arguments are not persuasive of reversible error.
Appellant has not disputed the Examiner’s determination that Kawaguchi
teaches providing a jet pump for jetting the plating liquid reserved in the
reservoir to the plating tank. (Ans. 15.) Similar to the rejection above, the
Examiner relied on Kadija as teaching a method for electroplating a tin
containing coating on a substrate material utilizing flow rates in the range of
about 2 cm/sec to about 100 cm/sec. (1.2 m/min to 60 m/min), amounts that
encompass the claimed 30 to 60 m/min. (Ans. 7, 15; Kadija col. 5, ll. 24–
35.)
Appellant argues Sakurai and Kadija do not disclose or suggest a
method as recited in claim 1 and do not overcome the deficiencies of Crosby
and Kawaguchi, and the proposed combination of Crosby, Sakurai,
Kawaguchi, and Kadija is improper due to their disparate disclosures. (Br.
18.)
Appellant’s argument is not persuasive. Appellant has failed to
provide technical reasoning explaining error in the Examiner’s findings and
reasons for citing the references. Appellant’s arguments do not address the
specific reasons identified by the Examiner for combining the teachings of
the cited references. (Ans. 9–17.)
For reasons presented by the Examiner and those expressed above,
Appellant’s arguments are unpersuasive of reversible error in the Examiner’s
Appeal 2019-000521
Application 11/704,805

9
rejection of claims 1, 3, and 6 under 35 U.S.C. § 103(a), and we accordingly
sustain this rejection.
Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over
Crosby, Sakurai, Kawaguchi, Kadija, and Jordan.
Appellant relies on the same arguments previously presented when
addressing the Crosby, Sakurai, Kawaguchi, and Kadija references.
Appellant additionally notes, and does not dispute, the Examiner cited
Jordan for describing suitable surfactants for electroplating tin-zinc alloys.
(Ans. 17–18; Br. 22.)
For the reasons expressed by the Examiner and those presented above,
we determine that Appellant has not shown error in the combination of
Crosby, Sakurai, Kawaguchi, and Kadija. As the Examiner relies upon the
same reasoning for combining these references in rejecting dependent claim
5, we similarly determine that Appellant has not shown error in the rejection
of claim 5.
DECISION
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
For the foregoing reasons and those the Examiner presents, we sustain
the appealed rejections.

CONCLUSION
In summary:
Appeal 2019-000521
Application 11/704,805

10
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 6 103(a) JP ’991, Sakurai,
Velasquez, Kadija
1, 3, 5, 6
1, 3, 6, 7 103(a) Crosby, Sakurai,
Kawaguchi, Kadija
1, 3, 6,
5 103(a) Crosby, Sakurai,
Kawaguchi, Kadija
Jordan
5
Overall
Outcome
1, 3, 5, 6

TIME PERIOD
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