Ex parte Boecker et al.Download PDFBoard of Patent Appeals and InterferencesMay 27, 199808042303 (B.P.A.I. May. 27, 1998) Copy Citation Application for patent filed April 2, 1993.1 -1- THIS OPINION WAS NOT WRITTEN FOR PUBLICATION The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. Paper No. 16 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JUERGEN BOECKER, MICHAEL BUTZ, ALFRED FREY, PETRA HOFMEISTER and HANS SCHMIDT ________________ Appeal No. 95-3460 Application No. 08/042,3031 ________________ ON BRIEF ________________ Before RONALD H. SMITH, SOFOCLEOUS and HANLON, Administrative Patent Judges. SOFOCLEOUS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1 to 17. Claim 18 stands withdrawn as being directed to a nonelected invention. The subject matter on appeal is directed to a process for depositing metallic material onto a substrate. The reference relied upon by the examiner is: Appeal No. 95-3460 Application No. 08/042,303 -2- Sirinyan et al. (Sirinyan) 4,764,401 Aug. 16, 1988 Claims 1, 2, 4 to 6, 8, 14, 16 and 17 stand rejected under 35 U.S.C. 102(b) as being anticipated by Sirinyan. Claims 3, 7, 9 to 13, and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sirinyan. In their brief, appellants do not separately argue any of their claims and thus the claims are considered to stand or fall together as grouped. Independent claim 1 and dependent claim 3 are sufficiently representative of their groups and read as follows: 1. A process for depositing metallic material onto a substrate surface, comprising the steps of: a.) providing an activator compound homogeneously distributed in a solvent, the activator compound being an ionogenic compound capable of releasing platinum metal ions, the solvent including an organic or inorganic acid; b.) adding an anionic surfactant to the solution provided in step a.), the anionic surfactant being a sulfonic acid; and c.) applying the solution provided in step b.) to said surface, whereby catalytically active platinum metal is deposited onto said surface. 3. The process according to claim 1, wherein said anionic surfactant is n-alkylarylsulfonic acid. After having reviewed the reference in light of the arguments by the examiner and appellants, we find that we cannot sustain these rejections. Appeal No. 95-3460 Application No. 08/042,303 Sirinyan, column 2, lines 10 to 14 and 30 to 32, teaches2 the use of an organometallic compound of the group 8 of the Period Systems of Elements with the organo portion selected from sulphonic acid groups, sulphonic acid halide groups and sulphonic acid ester groups. -3- Absent from Sirinyan is any teaching of a sulfonic acid anionic surfactant as recited in claim 1. Thus, Sirinyan cannot anticipate claims 1, 2, 4 to 6, 8, 14, 16 and 17, since Sirinyan does not meet every element of the claimed invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379, 231 USPQ 81, 90 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987). Moreover, as argued by appellants, Sirinyan requires a chemical reaction between the activator compound and the sulfonic acid surfactant, whereas appellants' process does not. With respect to claim 3, we do not agree with the examiner that one skilled in the art would have found it obvious to use n-alkylarylsulfonic acid, as recited in claim 3, in lieu of the organometallic compounds disclosed in Sirinyan. The examiner has the burden to show the equivalence of the organometallic compound containing sulfonic acid groups with 2 n-alkylarylsulfonic acid in the electroless metallization process Appeal No. 95-3460 Application No. 08/042,303 -4- of Sirinyan. On this record, we can only conclude that it would not have been obvious to substitute n-alkylarylsulfonic acid for the recited organometallic compounds of Sirinyan. For the foregoing reasons, the examiner’s rejections are reversed. REVERSED RONALD H. SMITH ) Administrative Patent Judge ) ) ) ) MICHAEL SOFOCLEOUS ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) ADRIENE LEPIANE HANLON ) Administrative Patent Judge ) Appeal No. 95-3460 Application No. 08/042,303 -5- Bernard Tiegerman IBM Corp. Intellectual Property Law N50/251-2 1701 North St. Endicott, NY 13760 Copy with citationCopy as parenthetical citation