12526468 (P.T.A.B. Jan. 23, 2018)

Ex Parte Inoue et al

Patent Trial and Appeal BoardJan 23, 2018

12526468 (P.T.A.B. Jan. 23, 2018)

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. 12/526,468 08/07/2009 Manabu Inoue 1285-45 PCT/US 6231 23869 7590 01/23/2018 Hoffmann & Baron LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER KRUER, KEVIN R ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 01/23/2018 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 MANABU INOUE, TADAHIRO OHNUMA, and TSUTOMU MIYADERA ____________________ Appeal 2017-0041051 Application 12/526,468 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 6, and 7. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention “relates to an Electric Al-Zr alloy-plating bath.” Spec. ¶ 1. 1 The Appellants identify Dipsol Chemicals Co., Ltd., and Honda Motor Co., Ltd., as the real parties in interest. Br. 1. Appeal 2017-004105 Application 12/526,468 2 Claim 1 is illustrative: 1. An electric Al-Zr alloy-plating bath which comprises (A) an aluminum halide; (B) one or at least two kinds of compounds selected from the group consisting of N-alkylimidazolium halides, N,N'- alkylimidazolium halides, N-alkylpyrazolium halides and N,N'-alkylpyrazolium halides; (C) a zirconium halide; and (D) an aromatic organic solvent selected from the group consisting of benzene, toluene, xylene and combinations thereof, wherein the bath comprises the aluminum halide (A) and the compound (B) in a molar ratio ranging from 1:1 to 3:1, and wherein the amount of (C) zirconium halide is 5-20 g/L, and the amount of (D) aromatic organic solvent is 5-10% by volume. Claims 1, 6, and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over a machine translation of a portion of Oshima, et al., JP 05- 148680 (hereinafter “Oshima”), Kato et al. (US 4,747,916, iss. May 31, 1988) (hereinafter “Kato”), and Tetsuya Tsuda, Charles L. Hussey, Gery R. Stafford, and Ole Kongstein, “Electrodeposition of Al-Zr Alloys from Lewis Acidic Aluminum Chloride-1-Ethyl-3-methylimidazolium Chloride Melt,” Journal of The Electrochemical Society, Vol. 151, No. 7, 2004 (hereinafter “Tsuda”). We REVERSE. Appeal 2017-004105 Application 12/526,468 3 ANALYSIS We are persuaded by the Appellants’ arguments that Kato does not disclose a motivation to modify the solution of Oshima, as asserted by the Examiner, and that the Examiner has not established that the ordinary artisan would recognize the combination would yield predictable results. Br. 11– 13. With reference to claim 1, reproduced above, the Examiner finds that Oshima discloses limitations A and B, but not C or D, and finds that Kato discloses the aromatic organic solvent D. Answer 4. The Examiner articulates that “solvents are effective solvents for aluminum plating baths,” and articulates a motivation for adding a solvent as disclosed by Kato “in order to control viscosity and current efficiency at the time of plating (col 2, lines 49+).” Id. In discussing prior-art technologies, Oshima discloses that “aluminum electroplating is performed in the organic solvent system plating bath or the fused salt bath.” Oshima ¶ 2. Oshima discloses that prior-art organic- solvent plating baths may rely on toluene as an organic solvent, but does not disclose information about solvent concentrations. Id. (“As a plating bath of an organic solvent system, the toluene solution of what dissolved AlCl3- LiAlH4 or LiH in ether or a tetrahydrofuran, and NaF and 2aluminum(C2H5) 3 is typical”). Oshima also discloses prior-art salt plating bath compounds. Id. (“Ordinary-temperature-molten-salt baths, such as an aluminum halogenide, an alkyl pyridinium halogenide, an alkyl imidazolium halogenide, are also known as a bath without the danger of explosion.”) Oshima then discloses an invention utilizing a “plating bath,” but does not Appeal 2017-004105 Application 12/526,468 4 discuss the composition of the invention’s “plating bath.” See Oshima ¶¶ 5– 19. Kato discloses “mixture of about 40 to 80 mol % of an aluminum halide and about 20 to 60 mol % of butyl pyridinium halide” which may be used for plating. Kato col. 2 lines 16–21. However, this is not the same solution disclosed in Oshima, which does not disclose butyl pyridinium halide, but instead discloses “the present invention immerses metallic aluminum in the electric aluminum plating liquid which carries out mixed melting of (A) aluminum halogenide, and (B) monoalkyl or a dialkyl imidazolium halogenide by the mole ratio of 1:1-3:1.” Oshima ¶ 6. Therefore, even though Kato discloses solving problems seen in its plating baths, “by mixing an organic solvent in the plating bath,” (Kato Col. 2 ll. 56–57), the Examiner has not established, on this record, that adding Kato’s organic solvent to the plating bath of Oshima, rather than to the plating bath of Kato, would lead to predictable results solving Kato’s disclosed problems. In fact, the Examiner has not established that those problems would even exist in Oshima’s plating bath. In this regard, the Examiner has not established whether Oshima’s plating bath is solvent- based or a fused-salt bath, or that Oshima’s plating bath is the same as Kato’s, and, therefore, that the plating bath of Oshima would have the same problems as Kato. The Examiner has, therefore, not established a reason the ordinary artisan would have been motivated to modify Oshima’s plating bath by adding in Kato’s organic solvent, because the plating baths appear to be different, with different problems. Also, the Examiner has not established Appeal 2017-004105 Application 12/526,468 5 the expectation of predictable results from introducing an organic solvent of Kato’s disclosed concentrations to Oshima’s plating bath. Therefore, the Examiner has not supported adequately a conclusion of obviousness of the claimed solution over the combination of Oshima, Kato, and Tsuda. For this reason, we do not sustain the rejection of claim 1, nor of dependent claims 6 and 7 that were rejected along with claim 1. DECISION We reverse the rejection under 35 U.S.C. § 103(a) of claims 1, 6, and 7. REVERSED