Ex Parte Konigshofen et al

Patent Trial and Appeal Board

Sep 27, 2017

11423474 (P.T.A.B. Sep. 27, 2017)

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.
11/423,474 06/12/2006 Andreas Konigshofen 31183-2268A 5954
34238 7590 09/29/2017
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
patents @ carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS KONIGSHOFEN
and ANDREAS MOBIUS
Appeal 2016-008395
Application 11/423,474
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 2, 5—9, 11, 12, 15, 25, and 27—37
of Application 11/423,474 under 35 U.S.C. § 103(a) as obvious. Final Act.
(November 5, 2015). Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Enthone, Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal 2016-008395
Application 11/423,474
BACKGROUND
The ’474 Application describes a method for direct metallization of
non-conducting substrates. Spec. 12. Claim 27 is representative of the ’474
Application’s claims and is reproduced below from the Claims Appendix:
27. A method for the metallization of a non-conducting
substrate comprising the process steps of:
contacting the substrate with a metal -containing
activator solution to thereby deposit a metal colloid on the non­
conducting substrate;
contacting the substrate that has been contacted with the
activator solution and having a metal colloid deposited thereon
with a metal salt solution comprising
(a) copper ions,
(b) a salt of a complexing agent selected from the
group consisting of ethylenediaminetetraacetic acid
(EDTA), tartaric acid, citric acid, oxalic acid, and
combinations thereof, and
(c) at least one metal salt of lithium in the form of
a salt selected from the group consisting of fluorides,
chlorides, iodides, bromides, nitrates, sulphates, and
mixtures thereof,
wherein a conducting film is deposited on the substrate
surface, said conducting film being formed by a reaction
consisting of the reduction of copper ions in the metal salt
solution by a metal in the metal colloid thereby forming a
treated substrate; and
subsequently electroplating copper on the treated
substrate to thereby deposit an electroplated copper coating.
Appeal Br. 12—13.
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Application 11/423,474
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 5—9, 11, 12, 15, 25, and 27—37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Joshi2 and either
Clauss3 or Dahanukar.4 Final Act. 3.
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Joshi, Ishikawa,5 and either Clauss or
Dahanukar. Final Act. 13.
DISCUSSION
Rejection 1. After reviewing the Final Action, Appeal Brief,
Examiner’s Answer, and the Reply Brief, we affirm the rejection of
independent claims 27 and 37 as unpatentable over the combination of Joshi
and either Clauss or Dahanukar for the reasons expressed in the Final Action
and the Examiner’s Answer. We add the following for emphasis.
Appellants argue for reversal of this rejection with respect to
independent claims 27 and 37. Accordingly, we limit our discussion to these
claims. The dependent claims subject to this rejection will stand or fall with
their parent independent claim. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner found the Joshi describes a process for metallizing a
non-conducting substrate. Final Act. 3. The Examiner further found that the
process steps include contacting the non-conducting substrate with a metal-
2 US 5,543,182, issued August 6, 1996.
3 US 3,664,933, issued May 23, 1972.
4 US 2003/0199690 Al, published October 23, 2003.
5 US 5,405,656, issued April 11, 1995.
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Application 11/423,474
containing activator solution to deposit a metal colloid on the substrate. Id.
The substrate that has been contacted with the activator solution and has a
metal colloid deposited thereon is then contacted with a metal salt solution.
Id. The metal salt solution includes copper ions and a complexing agent. Id.
The metal salt solution further includes lithium ions. Final Act. 4; Joshi col.
6,11. 54—56. When the metal colloid coated substrate is contacted with a
metal salt solution, a reaction consisting of the reduction of copper ions in
the metal salt solution by the metal of the metal colloid forms a treated
substrate comprising a conducting film deposited on the substrate surface.
Id. at 4. Copper is subsequently electroplated on the treated substrate to
deposit an electroplated copper coating. Id.
For example, Joshi describes a number of examples of treatment of a
non-conducting substrate that has had a metal colloid deposited upon its
surface. See Joshi col. 16, line 63—col. 18, line 53. In particular, Example 7
describes treatment of a non-conducting epoxy glass laminate with a metal
colloid depositing activator solution. After the metal colloid is deposited on
the non-conducting substrate, the substrate is treated with a metal salt
solution containing cupric chloride, the weak chelators gluconic acid and
lactic acid, lithium hydroxide and lithium chloride. This treatment deposits
a copper surface on the substrate that has a resistivity of 3.6 kQ/inch. See id.
at col. 15, line 63—col. 16 line 30; Table 1.
Example 7, therefore, describes each limitation in claims 27 and 37
except for (1) the final step of electroplating copper onto the treated
substrate and (2) the use of the specific chelating agent identified in these
claims. Joshi, however, suggests both of these limitations. First, Joshi
describes electrolytic coating of treated substrates such as those produced in
Example 7. Id. at col. 15,11. 8—26. Second, Joshi describes the use of
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Appeal 2016-008395
Application 11/423,474
several of the chelating agents identified in claims 27 and 37 as being
suitable for use in its metal salt solution. See, e.g., id. at col. 6,11. 50-56.
In view of the foregoing, we conclude that the Examiner did not err by
finding that the differences between the claimed invention and the
combination of Joshi and either Clauss or Dahanukar would have been
obvious to a person of ordinary skill in the art at the time of the invention.
We, therefore, affirm the Examiner’s Rejection of independent claims 27
and 37.
Rejection 2. Appellants argue that the rejection of claim 2 should be
reversed because claim 2 depends from claim 27, which Appellants argue is
not obvious. Appeal Br. 8. Because we have affirm the rejection of claim
27, we also affirm the rejection of claim 2.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 2, 5—
9, 11, 12, 15, 25, and 27—37 of the ’474 Application.
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
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