Ex Parte Foelicher et al

Patent Trial and Appeal Board

Apr 3, 2018

13427558 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/427,558 03/22/2012
23373 7590 04/05/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Thomas FOELICHER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql29692 5500
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
04/05/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS FOELICHER,
CHRISTOPHE HENZIROHS, and GUIDO PLANKERT
Appeal2016-006345
Application 13/427,558
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
This is an appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-13. Oral arguments were heard on March 22, 2018. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
1 In our Decision, we refer to the Specification filed March 22, 2012 (Spec.),
the Final Office Action appealed from dated June 5, 2015 (Final Act.), the
Appeal Brief filed December 2, 2015 (App. Br.), the Examiner's Answer
dated April 6, 2016 (Ans.), and the Reply Brief filed June 6, 2016 (Reply
Br.).
2 A transcript of the oral hearing will be entered in the record in due course.
Appeal 2016-006345
Application 13/427,558
We REVERSE.
The invention is directed to a method for the galvanoplastic deposition
of a yellow gold alloy on an electrode dipped into a bath containing 21.53 %
gold, 78.31 % copper, and 0.16% silver and including organometallic
compounds, a wetting agent, a sequestering agent, and free cyanide. App.
Br. 3--4. Claim 1 is illustrative:
1. A method for the galvanoplastic deposition of a 3N
yellow gold alloy on an electrode, the method comprising:
(a) providing an electrode;
(b) dipping the electrode into a bath, wherein the bath
includes gold metal, copper metal, silver metal,
organometallic compounds, a wetting agent, a sequestering
agent and free cyanide; and
( c) galvanoplastically depositing a 3N yellow gold alloy on
the electrode,
wherein the bath has a proportion of 21.53% gold, 78.31 %
copper and 0.16% silver,
wherein the deposited 3N yellow gold alloy is made of 7 5%
gold, 19% copper and 6% silver.
App. Br. 15 (Claims Appendix).
The Examiner maintains and Appellants3 appeal from the rejections
under 35 U.S.C. § 103(a) as follows: 4
1. Claims 1, 2, 4--8, and 10-13 over Egli5 in view ofNobel; 6
2. Claim 3 over Egli and Nobel in further view of Sonoda; 7 and
3 Appellants identify The Swatch Group Research and Development Ltd. as
the real party in interest. App. Br. 2.
4 The Examiner's rejection of claims 1-13 under 35 U.S.C. § 112, second
paragraph, stands withdrawn. Ans. 10: Final Act. 3.
5 Egli et al., US 2006/0283714 Al, published December 21, 2006 (Egli).
6 Nobel et al., US 3,642,589, issued February 15, 1972 (Nobel).
7 Sonada et al., US 2005/0184369 Al, published August 25, 2005 (Sonada).
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Application 13/427,558
3. Claim 9 over Egli and Nobel in further view of Emmenegger. 8
Final Act. 4--12; Ans. 2-10.
OPINION
Regarding claim 1, the Examiner finds that Egli teaches all of the
limitations of claim 1 except for (a) "wherein the deposited 3N yellow gold
alloy is made of75% gold, 19% copper, and 6% silver" and (b) "wherein the
bath includes ... organometallic compounds" as recited in the claim. Ans.
2---6. The Examiner determines that because Egli teaches similar method
steps of providing, dipping, and galvanoplastically depositing, such a similar
process can reasonably be expected to yield products which inherently have
the same properties. Id. at 5---6. The Examiner also finds that Nobel teaches
gold-silver-copper electroplating baths that contain titanium compounds
such as ethanolamine titanate and triethanolamine titanate as brightener
additives. Id. at 6 (citing Nobel 2:51-3:1, 3:27-35). The Examiner
determines that it would have been obvious at the time of the invention to
modify Egli's bath to include organometallic compounds in order to add
brightener additives as taught by Nobel. Id.
Appellants contend that the Examiner's rejection of claim 1 is in error
because neither the specific composition of the bath nor the obtained product
is taught or suggested by the applied references. App. Br. 5. Appellants
assert that the broad and generic ranges of Egli do not teach or suggest the
proportions of the bath because only one value within Egli' s ranges for each
of the gold, copper, and silver compounds will result in the recited
proportion of gold, copper, and silver in the deposited alloy, respectively.
8 Emmenegger, US 4,980,035, issued December 25, 1990.
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Application 13/427,558
Id. at 6-7. Appellants also assert that Egli provides no guidance for arriving
at the claimed bath and gold alloy compositions and only directs persons of
ordinary skill to an 18 carat alloy made of 75% gold, 12.5% copper and
12.5% silver that corresponds to an 18 carat gold alloy having a 3N color,
which is the prior art the claimed invention is said to improve upon. Id. at 8
(citing Egli i-f 58; Spec. 4). Appellants assert that Egli's final deposition has
significantly less copper and significantly more silver than the claimed
invention, Egli is silent regarding organometallic compounds and a
sequestering agent in the bath, the Examiner has not provided a "plausible
rationale ... for attempting to achieve a bright 3N color using the high
percentage of copper claimed and not using cadmium," and the Examiner
has not provided a "plausible rationale ... that a high percentage of copper
would result in a bright 3N color instead of a pink-ish 4N or 5N color." Id.
at 8-11.
Appellants also assert that Nobel and Sonoda fail to cure the
deficiencies of Egli. Id. at 11-12. Appellants assert that Nobel is silent
regarding a bath containing copper and, therefore, does not disclose a bath
containing gold-silver-copper or a bath that deposits a bright 3N color gold
alloy made of the 75% gold, 16% copper, and 9% silver as required by the
claim. Id. at 12.
The Examiner responds that the specific composition need not be
expressly articulated in the references. Ans. 11. The Examiner determines
that the wherein clause regarding the obtained product from the process
simply expresses the intended result of the process step positively recited
and can reasonably be expected to be yielded from the similar process of
Egli having inherently the same properties. Id. at 11-12, 17. The Examiner
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Application 13/427,558
finds that a prima facie case of obviousness exists because Egli's
composition reads on the bath recited in dependent claims 2--4 as the recited
bath concentrations are encompassed by the concentrations of gold, copper,
and silver disclosed in Egli. Id. at 13.
Regarding the proportions of gold, copper, and silver in the bath
recited in claim 1, the Examiner finds that one value within Egli' s disclosed
ranges for each of the water soluble gold, copper, and silver compounds will
result in a proportion of 21.53%, 78.31 %, and 0.16% of gold, copper, and
silver, respectively, in the bath. Id. at 14, 17. Regarding Appellants'
position (App. Br. 7) that only one value within each of Egli's concentration
ranges for the water soluble gold, copper, and silver compounds will
produce the recited proportion of gold, copper, and silver, the Examiner
questions why arrival at the recited proportions would not also be true for
Egli' s bath, which discloses similarly broad ranges as Appellants' claims 2-
4. Ans. 15.
Regarding the composition disclosed in Egli's paragraph 58 for an
18 carat 3N yellow gold alloy, the Examiner responds that a process yielding
an unobvious product may nonetheless be obvious where Appellant claims a
process in terms of function, property or characteristic and the process of the
prior art is the same or similar as that of the claim but the function is not
explicitly disclosed by the reference. Id. at 16. As for Appellants' assertion
that there is no plausible rationale to modify the prior art to result in a bright
3N color instead of a pinkish 4N or 5N color, the Examiner responds that a
different reason or advantage resulting from doing what the cited prior art
suggests is not demonstrative of non-obviousness. Id. at 19. Regarding Egli
being silent on a bath with organometallic compounds and the disclosures of
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Application 13/427,558
Nobel and Sonoda, the Examiner responds that Appellants are distinguishing
the references individually, that Nobel is relied upon for teaching the
addition of organometallic compounds, and that Sonoda is relied upon for
using copper iodide as a source of copper ions. Id. at 20-22.
In the Reply Brief, Appellants assert that Egli provides no guidance as
to which combinations would result in a 3N yellow gold alloy composition,
other than the specific examples set forth in Egli. Reply Br. 4. According to
Appellants, Egli's examples show that "every possible combination of gold,
copper and silver would not inherently result in a 3N yellow gold alloy
composition." Id. at 5. Appellants also assert that the cited prior art
provides no plausible rationale for a high percentage of copper resulting in a
bright 3N color as required by the claims, rather, a pinkish 4N or 5N color
would have been predicted. Id.
Appellants further argue that the Examiner's citation to case law is not
properly applied to the facts of this appeal and that the Examiner's
conclusion that the product of the prior art would have been expected to
inherently have the same properties is rebutted by Egli' s own examples
which suggest the composition would have a pinkish color (4N or 5N). Id.
at 5---6. Appellants contend that the composition of the obtained 3N yellow
gold alloy is positively expressed in the claim and material to patentability.
Id. at 6-7 (citing Hoffer v. Microsoft Corp., 405 F.3d 1326 (Fed. Cir. 2005)).
Regarding the overlap of the concentrations of gold, silver, and copper
compounds in the bath with those disclosed by Egli, Appellants argue that
the Examiner does not address how this would predict the claimed
composition of the claimed alloy having a 3N yellow color, particularly in
view of Egli's examples. Id. at 7-8.
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We are persuaded by Appellants' arguments that the Examiner has not
made a prima facie case of obviousness over Egli and that Egli's examples
rebut the Examiner's determination that a skilled artisan would have arrived
at the bath having the claimed proportion of 21.53% gold, 78.31 % copper,
and 0.16% silver.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). Furthermore, the Examiner's
obviousness rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSRint'l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
If the Examiner's burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992).
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Application 13/427,558
The Examiner correctly finds that Egli's disclosure of concentrations
of gold, copper, and silver used in a bath to produce gold alloy electrolytes
completely encompasses the concentration ranges recited in dependent
claims 2 through 4. Compare Egli i-fi-120, 24, 26 with App. Br. 15 (Claims 2,
3, 4). However, the Examiner provides no reasoning to support the
conclusion that based on this overlap in gold, copper, and silver bath
concentrations, a skilled artisan would have arrived at the claimed
proportions of gold, copper, and silver in the bath, specifically the recited
"proportion of 21.53% gold, 78.31 % copper, and 0.16% silver" in claim 1.
The Examiner makes no findings in the cited record in this appeal regarding
the proportions of gold, copper, and silver taught by Egli for producing a 3N
yellow gold alloy, i.e. Examples 3 and 4 of Egli which Egli states are
expected to have a bright yellow 3N uniform color. Egli i-fi-169, 72. Nor has
the Examiner made any findings in the cited record in this appeal regarding
differences between the recited bath proportions and those disclosed by the
prior art.
In addition, the Examiner makes no findings regarding the difference
between the 3N yellow gold alloy composition galvanoplastically deposited
on an electrode as recited in claim 1 and that disclosed by Egli. Compare
Egli i158 (stating "3N corresponds to 75% gold, 12.5% silver and 12.5%
copper") with App. Br. 15 (Claim 1 reciting "wherein the deposited 3N
yellow gold alloy is made of 75% gold, 19% copper and 6% silver"). As
explained in paragraph 16 of Egli, "N" represents the Swiss watch industry
standard for representing gold colors with IN indicating greenish gold, 2N
indicating yellow gold, 3N indicating deep yellow gold, 4N indicating
pinkish gold, and 5N indicating yellow red gold. Egli i-f 16. Appellants'
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Application 13/427,558
position is that a skilled artisan would have expected an increase in the
amount of copper in the alloy to produce a pinkish gold alloy based on this
record. As Appellants point out, Egli discloses in paragraph 58 that an alloy
having a 3N property corresponds to 75% gold, 12.5% silver, and 12.5%
copper, whereas an alloy having a 2N property, which is preferred, has less
copper, specifically, Egli teaches 2N corresponds to 75% gold, 16% silver,
and 9% copper. Egli i-fi-13, 58. Therefore, Appellants' position that
increasing the amount of copper in an alloy would be expected to increase
the N value or pinkish nature of the alloy color is supported by the limited
disclosure in Egli of a 2N alloy corresponding to a 9% copper content and a
3N alloy corresponding to a 12.5% copper content. Egli i158. In the
absence of any finding in this record to support an alloy containing 19%
copper being expected to produce a 3N alloy as required by claim 1, we
conclude that the Examiner's rejection of claim 1 over Egli is not supported
by the preponderance of the evidence.
Therefore the Examiner's determination that Egli discloses or
suggests the method of claim 1 using a bath having the recited proportions or
a deposited alloy having the claimed composition and color is not supported
by the preponderance of the evidence. Because the Examiner relies upon
these same findings in the rejections of dependent claims 2-13 and the
secondary references do not cure the deficiencies discussed above, we
likewise find the rejections of claims 2-13 are not supported by the
preponderance of the evidence.
Regarding the Examiner's question on page 15 of the Answer
pertaining to whether only one value for the amount of gold, copper, and
silver solutions would result in the claimed proportions of gold, copper, and
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silver in the bath applies to both Egli' s method and Appellants' method, the
bath proportions should be open to calculation based on the amount of gold,
copper, and silver present in the solution as well as the amount of solution
used. If the Examiner's question was directed to whether a bath having a
certain proportion of gold, copper, and silver would necessarily produce an
alloy have a certain composition, i.e. whether the proportion of 21.53 % gold,
78.31 % copper, and 0.16% silver required by claim 1 necessarily produces a
3N yellow gold alloy made of 75% gold, 19% copper, and 6% silver as
required by the claim or requires some additional process limitation, we note
that an enablement rejection is not before us in this appeal.
In sum, Appellants have persuaded us of reversible error in the
Examiner's determination that Egli's disclosure of a process for the
galvanoplastic deposition of a 3N yellow gold alloy on an electrode
discloses or suggests the method of claim 1 that uses a bath having a
proportion of 21.53% gold, 78.31 % copper, and 0.16% silver and deposits a
3N yellow gold alloy made of 75% gold, 19% copper, and 6% silver as
required by the claim.
CONCLUSION
We reverse the Examiner's rejections.
DECISION
The Examiner's decision is reversed.
REVERSED
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