Ex Parte Allardyce et al

Board of Patent Appeals and Interferences

May 21, 2012

11588520 (B.P.A.I. May. 21, 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.
11/588,520 10/27/2006 George R. Allardyce 52470 3212
7590 05/22/2012
John J. Piskorski
Rohm and Haas Electronic Materials LLC
455 Forest Street
Marlborough, MA 01752
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
05/22/2012 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 GEORGE R. ALLARDYCE,
KEVIN BASS, and JOACHIM RASCH
____________

Appeal 2010-012018
Application 11/588,520
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 3-6, and 9-13 under 35 U.S.C. §103(a) as unpatentable

1 Final Office Action mailed Jan. 5, 2010.
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over Mette2 or Grenon3, in view of Chevalier4, Rohatgi5, and Hoffacker6.7 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim, is representative of the invention and
is reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of light assisted plating an electrical contact on a light-
sensitive device displaying a photovoltaic effect, comprising providing a
semiconductive wafer having at least two major surfaces, the wafer having a
photovoltaic junction formed therein so that when one of the major surfaces of
the wafer is exposed to light, negative charges will collect at a first of the major
surfaces and positive charges will collect at a second of the major surfaces,
contacting the wafer with a solution comprising a sulfonic acid, then contacting
the wafer with a cyanide-free silver electroplating bath, applying a potential to the
silver electroplating bath and exposing the wafer to the light to deposit a layer of
silver onto current collecting lines of fired silver paste of the first major surface,
wherein the silver electroplating bath is an aqueous solution and comprises silver
ions, at least one water-soluble nitro-containing compound, at least one surfactant,
at least one amido-compound, and at least one component chosen from a water-
soluble amino acid, a water-soluble sulfonic acid, and mixtures thereof and has a
pH of 9-12.

Appellants’ arguments in support of patentability as to all appealed claims
are based on limitations found in independent claim 1. (See generally, App. Br.

2 “Increasing the Efficiency of Screen-Printed Silicon Solar Cells by Light-
Induced Silver Plating,” Conference Record of the 2006 IEEE 4th World
Conference on Photovoltaic Energy Conversion, Vol. 1, 1056-59 (May 2006)
3 US 4,251,327, issued Feb. 17, 1981
4 US 6,251,249 B1, issued Jun. 26, 2001
5 US 2005/0252544 A1, pub. Nov. 17, 2005
6 US 6,620,304 B1, issued Sep. 16, 2003
7 Appeal Brief filed Jun. 3, 2010 (“App. Br.”)
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8-11.) The issue we consider in this appeal8 is: did the Examiner identify proper
motivation to modify the methods of Mette and Grenon to use a cyanide-free silver
electroplating bath as required by the method of appealed claim 1? (See App. Br.
9, 11.)
Appellants do not dispute that both Mette and Grenon disclose methods of
light assisted plating of silver using conventional silver plating baths. (App. Br. 8,
10.) However, Appellants maintain one of ordinary skill in the art would not have
been motivated to use a cyanide-free silver bath in the Mette and Grenon methods,
because conventional wisdom is that cyanide-free silver electroplating baths are
not stable enough for light assisted plating. (Id.) In support of this contention,
Appellants rely on the background discussion in their Specification, which cites
Holdermann (US 5,882, 435, issued Mar. 16, 1999). (Id. (citing Spec. 1-2,
bridging para.).) Holdermann discloses a process for the metal coating of
crystalline silicon solar cells (Title) wherein the preferred bath contains cyanide
(see col. 3, ll. 5-6). Holdermann discloses that “[g]ood silver deposition can [] be
obtained, in a photo-induced manner, from non-cyanide-containing silver
solutions. . . . However, the bath stability under illumination is inadequate” (col. 7,
ll. 18-23).
While Holdermann indicates a preference for a cyanide containing bath in
the disclosed method, we do not agree with Appellants’ contention that

8Any remaining issues raised by Appellants have been fully addressed by the
Examiner in the Answer (mailed Jul. 8, 2010 (“Ans.”)).

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Holdermann, or any other evidence on this record9 supports a finding that one of
ordinary skill in the art would have been discouraged from using a non-cyanide
containing silver bath in another method of light assisted plating of silver, i.e., the
methods of Mette and Grenon. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d
1371, 1379-80 (Fed. Cir. 2005) (“A statement that a particular combination is not a
preferred embodiment does not teach away absent clear discouragement of that
combination.”). As acknowledged by Appellants, “Hoffacker discloses that
cyanide-free baths are safer and are more environmentally friendly than cyanide
containing baths.” (Rep. Br.10 2.) The Examiner had a reasonable basis for finding
that one of ordinary skill in the art would have been motivated to try a cyanide-free
bath in the Mette and Grenon methods to achieve the advantage of a safer and
more environmentally friendly plating bath, despite the potential drawback of
reduced bath stability (see e.g., Ans. 16-18). See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is likely the product
not of innovation but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was obvious under §
103.”).

9We note Appellants’ mere arguments in the Brief or conclusory statements in the
Specification cannot take the place of objective evidence. See In re De Blauwe,
736 F.2d at 705; In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
10 Reply Brief filed Aug. 24, 2010.

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In sum, for the reasons stated in the Answer and above, we are not
persuaded that the Examiner failed to identify proper motivation to modify Mette
and Grenon to use a cyanide-free silver plating bath as required by the method of
appealed claim 1.
The Examiner’s decision to reject claims 1, 3-6, and 9-13 is affirmed.
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).
AFFIRMED

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