Ex Parte Mardilovich et al

Board of Patent Appeals and Interferences

Nov 9, 2010

10618049 (B.P.A.I. Nov. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER MARDILOVICH, GREGORY HEMAN,
DAVID PUNSALAN and SAMSON BERHANE
____________

Appeal 2009-013104
Application 10/618,049
Technology Center 1700
____________

Before CHUNG K. PAK, MARK NAGUMO, and LINDA M. GAUDETTE,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013104
Application 10/618,049

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-12, 14, 15, and 18-20.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 18 are representative of the invention and are
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of forming metal patterns on a substrate,
comprising:
a) ink-jetting an electroless initiator as an electroless active layer
over at least a portion of the substrate;
b) defining a pattern on the electroless active layer;
c) ink-jetting a metal composition on the pattern, said metal
composition including a metal salt; and
d) ink-jetting a reducing agent composition, separate from the
metal composition, on the pattern, said reducing agent composition
including a reducing agent, wherein the reducing agent contacts the metal
composition and reacts with the metal salt to form a reduced metal on the
electroless active layer.

18. The method of claim 1, wherein the electroless initiator is ink-
jetted in a non-continuous pattern.

Appellants request review of the following grounds of rejection (App.
Br. 3-4):
1. Claims 1-4, 6-12, 14-15, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Jacobson4 in view of McCormack5 (Ans.6 4-7);

2 Final Office Action (“Final”) mailed Jul. 15, 2008.
3 Appeal Brief (“App. Br.”) filed Oct. 3, 2008.
4 Joseph M. Jacobson, U.S. Patent 6,120,588 (2000).
5 John F. McCormack et al., U.S. Patent 4,301,196 (1981).
6 Examiner’s Answer mailed Nov. 24, 2008.
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Application 10/618,049

2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over
Jacobson in view of McCormack as applied to claims 1-4, 6-12, 14-15, 18,
and 20, and further in view of JP ‘575 (Ans. 8);
3. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Jacobson in view of McCormack as applied to claims 1-4, 6-12, 14-15, 18
and 20, and further in view of Wells7 (Ans. 9);
4. Claims 1-4, 6-12, 14-15, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Jacobson in view of McCormack, and further in view of
Morgan8 (Ans. 10-13);
5. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over
Jacobson in view of McCormack and Morgan as applied to claims 1-4, 6-12,
14-15, 18, and 20, and further in view of JP ‘575 (Ans. 13-14); and
6. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Jacobson in view of McCormack and Morgan as applied to claims 1-4, 6-12,
14-15, 18, and 20, and further in view of Wells (Ans. 14-15).
In traversing the rejections of dependent claims 2-12, 14, 15, 19, and
20, Appellants rely on the arguments presented in support of patentability of
independent claim 1. (See App. Br. 8-14 and 16-21.) Accordingly, these
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). In addition
to the arguments advanced by Appellants with respect to claim 1, we
consider the separate arguments made in support of patentability of
dependent claim 18. (See App. Br. 11-12 and 19-20.)
With respect to claim 1, Appellants’ arguments raise the following
issues for our consideration:

7 Johnny L. Wells, U.S. Patent 3,918,927 (1975).
8 Albert W. Morgan et al., U.S. Patent 5,403,649 (1995).
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Application 10/618,049

Did the Examiner reversibly err in: (1) finding that one of ordinary
skill in the art would have had a reasonable expectation of success in
applying McCormack’s electroless initiator by ink-jetting and (2) concluding
that the ordinary artisan would have been motivated to use McCormack’s
electroless initiator in Jacobson’s method?
The Examiner made the following enumerated findings, which are not
disputed by Appellants (see generally, App. Br. 4-8 and 14-15; Rep. Br.9 2-
5):
1. Jacobson teaches a method of forming metal patterns on a
substrate as recited in appealed claim 1 with the exception that Jacobson
does not teach an electroless active layer, or a step of applying the layer by
ink-jetting an electroless initiator. (Ans. 5.)
2. McCormack teaches conventional electroless plating
chemistry, including (1) the use of an initiator layer of
electroless active material, (2) conventional reducing agents
such as hydrazines, (3) specific substrate materials, such as
ceramics, (8) specific materials desired to be plated, including
palladium, (4) the conventional heating of the compositions
during application to temperatures in the claimed range, (6) the
conventional materials (palladium and tin) and application of
the initiator layer and (7) the conventional deposition of the
material to form circuit patterns.

(Ans. 6-7.)
3. McCormack further teaches that it is well known in the
art that when various surfaces are to be electrolessly plated,
such as non-metallic or inert metal, the substrate should first be
pretreated with an electroless sensitizer (activator, initiator) to
prepare the surface for electroless plating, i.e. providing an
electroless active layer of initiator material (column 6, line 50
through column 7, line 10).

9 Reply Brief filed Jan. 15, 2009.
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Application 10/618,049

(Ans. 17.)

4. At the time of Appellants’ invention, it was conventional in the
art to use ink-jetting techniques to apply catalytic inks on a surface to form
an initiator or active layer in preparation for electroless plating. (Ans. 12
(citing Morgan col. 1, ll. 15-45 (Background of the Invention)).)
Appellants contend the Examiner erred in finding that one of ordinary
skill in the art would not have had a reasonable expectation of success in
applying McCormack’s electroless initiator by ink-jetting. According to
Appellants, “[i]nk-jetting is a complex process involving many potential
problems and variables.” (Rep. Br. 4.) Appellant argues McCormack only
discloses the application of plating compositions using “relatively simple
and crude process[es],” which are not equivalent, or in any way related, to
ink-jetting. (Rep. Br. 4-5; see also, App. Br. 6-8.)
“[W]hile an analysis of obviousness always depends on evidence that
supports the required Graham factual findings, it also may include recourse
to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion.” Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009).
Although McCormack does not explicitly teach application of the
disclosed electroless initiator by ink-jetting techniques, it is undisputed that
at the time of the invention, it was conventional in the art to use ink-jetting
techniques to apply electroless initiator compositions. (See Finding 4
supra.) Thus, the Examiner had sufficient basis to support a finding that one
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Application 10/618,049
of ordinary skill in the art would have had a reasonable expectation of
success in applying McCormack’s electroless initiator by ink-jetting.
Appellants’ arguments lack evidentiary support and, therefore, fail to
persuade us of error on the part of the Examiner. In this regard, we note that
Appellants have not identified any disclosure in McCormack which
discourages the use of ink-jetting or techniques other than bath plating
technology. (See e.g., App. Br. para. bridging 6-7; Rep. Br. 4; cf. Ans. 17
(“McCormack specifically does not limit the electroless plating of the
solution materials to immersion.”).) Nor have Appellants produced evidence
demonstrating that persons having ordinary skill in the art would have
doubted McCormack’s electroless initiator could have been applied by an
ink-jetting technique.
Appellants also argue the Examiner erred in concluding that the
ordinary artisan would have been motivated to use McCormack’s initiator in
Jacobson’s method. More specifically, Appellants contend the Examiner’s
obviousness determination is based on an overbroad reading of “Jacobson as
disclosing that all formulations used in printing circuit boards could be
applied by ink-jetting.” (Rep. Br. 2; see also, App. Br. 6 (referencing
Jacobson, col. 10, ll. 3-4 (“Many other examples of chemistries suitable for
the present system are known in the art of electroless plating.”)).)
Appellants argue there is no indication in Jacobson that electroless initiators
could be used in the disclosed method of inkjet electroless plating. (App.
Br. 6.)
The test for obviousness is what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art. In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991). When a second reference identifies the
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Application 10/618,049
benefits of adding a feature to the primary reference, an obviousness
rejection is proper. In re Thrift, 298 F.3d 1357, 1365 (Fed. Cir. 2002).
The Examiner’s proposed motivation for modifying Jacobson to
include a step of applying an electroless initiator by ink-jetting is not based
solely on above-quoted disclosure in Jacobson (i.e., col. 10, ll. 3-4). Rather,
it is clear the Examiner relied on the combined teachings of Jacobson and
McCormack. (See Ans. 16-17 (“[T]he combination of [Jacobson and
McCormack] provides the suggestion.”).) The Examiner found that
McCormack teaches certain substrate materials, e.g. non-metallic or inert
metal, should be pretreated with an electroless initiator to provide an
electroless active layer of initiator material. (See Finding 3 supra p. 4.)
Based on this teaching, as well as the Examiner’s findings with respect to
Jacobson’s disclosure (see e.g. Finding 1 supra p. 4 and Ans. 17 (“Jacobson
. . . at the least suggest[s] to look at plating chemistries such as those
described in McCormack, which is specifically an example of electroless
plating chemistry in the art.”)), the Examiner concluded that one of ordinary
skill in the art would have been motivated to include a step of pretreating
Jacobson’s surface with an electroless initiator solution as described by
McCormack to allow plating on a variety of substrates. (Ans. 17.)
Appellants have not fully addressed the aforementioned facts and
reasons relied on by the Examiner. Therefore, Appellants have not
persuaded us of reversible error in the Examiner’s obviousness
determination as to claim 1.
Turning now to claim 18, Appellants argue the Examiner’s rejections
are based on an unsupported, “conclusory statements regarding a non-
continuous pattern.” (App. Br. 11-12 and 19-20.) We have reviewed the
facts and reasons relied on by the Examiner in rejecting claim 18 (Ans. 7,
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Application 10/618,049
13, and 21) and find they are reasonable based on the relied-upon disclosures
in Jacobson and McCormack. Accordingly, Appellants’ general assertion
that the Examiner’s rejection of claim 18 is based on unsupported
conclusions fails to persuade of reversible error.
In sum, we are not convinced of error in the Examiner’s determination
that argued claims 1 and 18 are unpatentable under 35 U.S.C. § 103(a) over
Jacobson in view of McCormack. We find that Morgan merely evidences
the state of the art at the time of Appellants’ invention (see Finding 4 supra
p. 5) and is unnecessary to support the Examiner’s rejections of the appealed
claims under 35 U.S.C. § 103(a). Cf. In re Baxter Travenol Labs., 952 F.2d
388, 390 (Fed. Cir. 1991) (noting that references not included in the
statement of a rejection may be cited to explain an element in the prior art,
as long as they are not used to expand on the teachings of the relied-upon
prior art references). Therefore, we affirm all six grounds of rejection.
The Examiner’s decision to rejection claims 1-12, 14, 15, and 18-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

tc

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