Ex Parte Horn et al

Patent Trial and Appeal Board

Dec 21, 2016

12733871 (P.T.A.B. Dec. 21, 2016)

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.
12/733,871 03/25/2010 Jochen Horn TYCDE-P0002 5729
27268 7590 12/23/2016
Faegre Baker Daniels LLP
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
inteas @faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN HORN, WALTER MUELLER, HELGE SCHMIDT, and
HANNES WENDLING
Appeal 2015-007399
Application 12/733,871
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and MONTE T. SQUIRE,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 2seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 22—26 of Application 12/733,871.
2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Tyco Electronics AMP
Gmbh (App. Br. 3).
2 In this decision, we refer to the Final Office Action June 13, 2014 (“Final
Act.”), the Advisory Action December 3, 2014 (“Adv. Act.”), the Appeal
Brief dated February 20, 2015 (“App. Br.”), the Examiner’s Answer June 5,
2015 (“Ans.”), and the Reply Brief filed August 4, 2015 (“Reply Br.”).
Appeal 2015-007399
Application 12/733,871
BACKGROUND
The subject matter on appeal relates to an electrical contact element
comprising an electrically conductive base material and a coating. App. Br.
4. The coating comprises a diffusion barrier layer in order to prevent the
base material from diffusing into the outer layer of the coating. Spec. 1,1.
28-2,1. 19.
Representative claim 22 is reproduced from the Claims Appendix of
the Appeal Brief as follows:
22. An electrical contact element having a multilayer structure, the
contact comprising:
an electrically conductive base material; and
a coating, which is formed on at least a portion of the
electrically conductive base material, the coating comprising:
a diffusion barrier layer formed on the base
material; and
an outer layer containing a first metallic element
comprised of tin and at least a second metallic element
comprised of an element other than tin, the outer layer
including an inner surface adjacent the diffusion barrier layer
and an outer surface opposite the inner surface, and the outer
surface of the outer layer defining an outermost surface of the
electrical contact element, and the outer layer of the coating is
mixed by diffusion of tin and at least the second metallic
element, wherein the outer surface of the outer layer is
thoroughly alloyed with both tin and at least the second
metallic element substantially throughout the outer surface.
2
Appeal 2015-007399
Application 12/733,871
THE REJECTIONS3
1. Claims 22—24 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Adler,4 and Fister.5
2. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Adler, Fister, and Carey.6
DISCUSSION
Appellants have not presented separate argument for patentability of
any dependent claim, including claim 25 under Rejection 2. Therefore, we
limit our discussion to sole independent claim 22; all other claims stand or
fall with claim 22. See 37 C.F.R. § 41.37(c)(l)(iv).
Adler discloses a method for manufacturing a metallic composite
strip, coated with a tin-silver alloy, for production of electrical contact
components. Adler 1:7—9. Adler describes that its homogeneous tin-silver
alloy film results from a diffusion process which produces a coating
“uniform in both structure and thickness” that “reliably protects the base
material from oxidation and corrosion.” Id. 1:47-48, 57—61; 2:35—38. The
Examiner acknowledges that Adler does not describe a barrier layer as
recited in claim 22, but determines that it would have been obvious to a
person of ordinary skill in the art to provide a barrier layer as taught by
Fister, in order to reduce formation of intermetallics which degrade electrical
and corrosion properties of the outer contact layer. Ans. 3^4.
3 A rejection of claims 22—26 under 35 U.S.C. § 112, second paragraph was
withdrawn in the Advisory Action (Adv. Act. 2).
4 Adler et al., US 6,207,035 Bl, issued Mar. 27, 2001.
5 Fister et al., US 5,916,695, issued Jun. 29, 1999.
6 Carey, II et al., US 6,080,497, issued Jun. 27, 2000.
3
Appeal 2015-007399
Application 12/733,871
Appellants argue that the Examiner has not established obviousness
for several reasons, among them the following: (1) Adler teaches away from
applying a barrier layer between the tin film and the base material; (2)
modification of Adler to include a diffusion barrier layer would adversely
affect Adler’s electrical properties and would not meet Adler’s mechanical
and physical requirements for its contact element; (3) Adler fails to disclose
that the outermost surface of its electrical contact element is “thoroughly
alloyed” as recited in claim 22; (4) a person of ordinary skill in the art would
not have been motivated to combine Fister with Adler because Fister
discloses that free tin remains on the surface of its contact element. App. Br.
5-8.
Appellants’ arguments are not persuasive of reversible error.
Accordingly, we sustain the rejections for the reasons explained in the Final
Action, Advisory Action, and Answer. We add the following primarily for
emphasis.
Appellants’ argument that Adler requires that tin film be directly
applied to the copper base material in all of its processes, and therefore
teaches away from applying a barrier layer over the base material, is not
persuasive. App. Br. 6; Reply Br. 2—3. Adler is merely silent as to the
presence of a diffusion barrier layer; it does not criticize or otherwise
discourage investigation into a barrier layer, and therefore, does not teach
away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does
not teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed). Further, the fact that Adler
exemplifies only direct application of the tin film to the copper base layer
(without an intervening barrier layer) does not amount to teaching away.
4
Appeal 2015-007399
Application 12/733,871
Appellants’ argument that modification of Adler to include a diffusion
barrier layer would adversely affect the properties of its contact element
(App. Br. 6—7) lacks evidentiary support. Appellants’ reliance solely on
attorney argument does not persuade us that the Examiner reversibly erred in
reaching a determination of obviousness. See In re Lindner, 457 F.2d 506,
508 (CCPA 1972) (attorney argument and conclusory statements, absent
evidence, are entitled to little, if any, weight).
Appellants further argue that Adler fails to disclose that the outermost
surface of its contact element is thoroughly alloyed. App. Br. 7—8.
Specifically, Appellants argue that the conditions of heat treatment, relative
amounts of metallic elements applied to the base element, and other
processing parameters lead to alloying “within the outer layer but not at the
surface of the outer layer.” App. Br. 8. The Examiner responds that
“thoroughly alloyed” as recited in claim 22 means “very much or greatly
alloyed” and does not require the outer surface to be completely alloyed.
Ans. 11. Appellants do not dispute the Examiner’s interpretation of
“thoroughly alloyed.” Moreover, Appellants’ argument is not supported by
Adler’s disclosure. Adler discloses that its diffusion process results in a
homogeneous tin-silver alloy film which is “uniform in both structure and
thickness” (Adler 1:47-48; 2:35—38); nothing in Adler suggests that the tin-
silver alloy forms at the outer layer but not at the surface of that layer.
Appellants’ argument is not supported by a preponderance of the evidence,
and therefore not persuasive.
Appellants’ final argument is that a person of ordinary skill in the art
would not have been motivated to combine Fister with Adler because Fister
“teaches away from an outer layer of a coating being mixed by diffusion of
tin and at least one further metallic element” and thereby “contradicts the
5
Appeal 2015-007399
Application 12/733,871
limitations of claim 22.” App. Br. 8. Fister does not support Appellants’
argument. Although Fister notes that an advantage of its invention “is that a
sufficient thickness of free tin remains on the surface of the component”
(Fister 2:14—16), Fister also repeatedly describes its outer surface layer as a
tin base alloy, where “base” is used in its conventional sense that the alloy
contains at least 50% by weight of the base component. Id., 2:61—65; 3:37—
45. Thus, Fister does not preclude the presence of a tin alloy, rather than
free tin alone, at the outer layer. As discussed above, this does not amount
to a teaching away.
SUMMARY
We affirm the rejections of claims 22—26 as unpatentable under
35 U.S.C. § 103(a), for the reasons set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
6