Ex Parte Murakami et al

Patent Trial and Appeal Board

Dec 21, 2018

13520594 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/520,594 07/05/2012 Torn Murakami
38834 7590 12/26/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P23054USOO 5692
EXAMINER
WONG,EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORU MURAKAMI, RYO MAEDA, HAMID
SUHAIMI, AIDILLA NURUL, and MURUSHID MOHD
Appeal2017-000323
Application 13/520,594
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (C. Uyemura & Co., Ltd.) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-13. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a chromium plating method. Claim 1 is illustrative:
1. A chromium plating method comprising the steps of:
immersing an object to be plated into an acidic chromium
electroplating bath comprising:
a trivalent chromium compound and a hexavalent
chromium compound such that the total amount of trivalent
chromium ions and hexavalent chromium ions is 60 to 140 g/L,
the amount of hexavalent chromium ions is 5 to 40 g/L, and the
Appeal2017-000323
Application 13/520,594
amount ofhexavalent chromium ions accounts for 5 to 35 wt%
of the total amount of chromium ions; and
organic carboxylate ions in an amount of 50 to 400 g/L;
and
a concentration of lead ions in said acidic chromium
electroplating bath being no greater than 2 mg/L, and
performing electrolysis by using an anode having an
iridium oxide-containing coating at least on a surface thereof.
Tajima
Sekimoto
Murakami
Eguchi (JP '794)
( as translated)
The References
us 4,142,948
us 5,560,815
US 2010/0122909 Al
JP 59-185794 A
The Rejection
Mar. 6, 1979
Oct. 1, 1996
May 20, 2010
Oct. 22, 1984
Claims 1-13 stand rejected under 35 U.S.C. § I03(a) over JP '794 in
view of Murakami, Tajima, and Sekimoto.
OPINION
We affirm the rejection.
Except for an argument apparently directed toward dependent claim 8,
the Appellant argues the claims as a group (App. Br. 4--11). We therefore
limit our discussion to the sole independent claim, i.e., claim 1, and claim 8.
Claims 2-7 and 9-13 stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2012).
Claim 1
JP '794 discloses a chromium electroplating bath containing a mother
liquor comprising 55-90 % trivalent chromium ions and 45-10 %
hexavalent chromium ions, and having a total chromium content of 70-
140 g/L (p. 6).
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Application 13/520,594
Sekimoto discloses that an "electrode prepared by forming an
electrode catalyst containing iridium oxide on an electrode substrate selected
from titanium, tantalum, zirconium, and niobium is excellent as an anode
which can be used in a plating bath containing trivalent chromium, can
prevent the formation of hexavalent chromium, and can perform chromium
plating over a long period of time in a stable manner without forming
sludge" (col. 2, 11. 53-59).
The Appellant argues that "JP '794 does not disclose, teach, suggest
or provide any reason to achieve 'an anode having an iridium
oxide-containing coating at least on the surface thereof"' (App. Br. 5),
"Sekimoto et al. teaches only a trivalent chromium plating bath"
(App. Br. 6), and "Sekimoto et al. does not disclose, teach, suggest or
provide any reason to achieve a chromium plating bath containing both of
hexavalent chromium ions and organic carboxylate ions" (App. Br. 5).
That argument is deficient in that Appellant is attacking the references
individually when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413,426 (CCPA 1981); In re Young, 403 F.2d 754,
757-58 (CCPA 1968). The Examiner relies upon JP '794 for a disclosure of
an electroplating bath containing both trivalent and hexavalent chromium
ions (Ans. 2-3), and relies upon Tajima for a suggestion to include organic
carboxylate ions in JP '794's electroplating bath (Ans. 6-7). 1
1 The Examiner relies upon Tajima in the Final Action (Final Act. 3--4
(which incorporates the prior Non-final Act. 8, 11-12)). The Appellant,
however, does not challenge the Examiner's reliance upon that reference in
the Appeal Brief but, rather, challenges it for the first time in the Reply
Brief (pp. 3, 6). As stated in 37 C.F.R. § 41.41(b)(2) (2011): "Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
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Application 13/520,594
The Appellant argues that "Sekimoto discloses problems of a
chromium bath containing hexavalent chromium" (App. Br. 6), 2 and that
"positive motivation must be needed for combining the anode of Sekimoto et
al[.] with a bath containing hexavalent chromium ions such [] as the
chromium bath of JP '794" (id.).
The Appellant's Specification states that it was known in the art to use
an anode coated with an iridium oxide-containing film in a plating bath
containing chromic acid (which is a hexavalent chromium compound
(Spec. 16-17)) or a trivalent chromium compound (Spec. 5:27-30), but "no
attempt has been made to use the foregoing anode with an iridium
oxide-containing coating film for the combined [hexavalent chromium
compound and trivalent chromium compound] plating bath" (Spec. 5 :33-
35). JP '794's desire for an electroplating bath containing particular relative
amounts of trivalent chromium ions (55-90%) and hexavalent chromium
ions (45-10%) (p. 6) would have led one of ordinary skill in the art, through
no more than ordinary creativity, to use in JP '794's plating bath an anode
coated with an iridium oxide-containing film to prevent oxidation of
trivalent chromium to hexavalent chromium, as taught by Sekimoto ( col. 2,
11. 53-58), thereby maintaining the desired relative amounts of trivalent and
hexavalent chromium ions in the plating bath. See KSR Int 'l Co. v. Teleflex
responsive to an argument raised in the examiner's answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown." The Appellant
has not shown good cause. Accordingly, we do not consider the Appellant's
arguments regarding Tajima.
2 "Recently, since hexavalent chromium has bad effects on the environment,
etc., investigations about a trivalent chromium plating bath have proceeded"
(col. 1, 11. 15-18).
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Application 13/520,594
Inc., 550 U.S. 398,418 (2007) (in making an obviousness determination one
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ"). 3
The Appellant argues that a comparison of the Appellant's
Examples 1 and 3 using, respectively, an anode coated with iridium oxide
and an anode made of iridium oxide, versus Comparative Example 1 using a
lead anode, shows an unexpected and superior limited oxidative
decomposition of oxalic acid at the anode in a chromium plating bath
containing both hexavalent chromium ions and organic carboxylate ions
(App. Br. 9--10; Reply Br. 6).
We have begun anew, reconsidering the patentability of the rejected
claims in the light of all the evidence, and determined that for the following
reasons the totality of the evidence supports a conclusion of obviousness of
the Appellant's claimed chromium plating method. See In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976).
First, the Appellant has not established that the evidence provides a
comparison of the claimed invention with the closest prior art. See In re
Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Second, it is not enough for the Appellant to show that the results for
the Appellant's method and the comparative examples differ. The difference
must be shown to be an unexpected difference. See In re Freeman, 4 7 4 F .2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
3 The Appellant likewise uses an anode having an iridium oxide-containing
coating to suppress oxidation of trivalent chromium ions to hexavalent
chromium ions (Spec. , 9).
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Application 13/520,594
The Appellant has not provided evidence that the results would have been
unexpected by one of ordinary skill in the art but, rather, has provided mere
attorney argument, and arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d at 705; In re Payne, 606 F.2d 303,
315 (CCP A 1979); In re Greenfield, 571 F .2d 1185, 1189 (CCP A 1978); In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellant's claims encompass total
amounts of trivalent and hexavalent chromium ions of 60 to 140 g/L,
amounts ofhexavalent chromium ions of 5 to 40 g/L, amounts of hexavalent
chromium ions which are 5 to 35 wt% of the total amount of chromium ions,
and amounts of organic carboxylate ions of 50 to 400 g/L. The relied-upon
evidence, however, includes only two amounts of each of those materials.
We find in the evidence of record no reasonable basis for concluding that the
materials in the amounts encompassed by the Appellant's claims would
perform in a manner comparable to the materials in the particular amounts
tested. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440
F.2d 442, 445--46 (CCPA 1971).
For the above reasons we are not persuaded of reversible error in the
rejection of claim 1 and its dependent claims 2-7 and 9-13.
Claim 8
The Appellant asserts that "regarding claim 7, JP '794 teaches [(p. 9)]
only a cathode current density of 15-50 A/dm2" (App. Br. 11 ). The
Appellant appears to be arguing that the applied references would not have
suggested the anode current density of 3 to 20 A/dm2 required by claim 8.
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The Examiner finds that "Sekimoto teaches that the current density
ranges from 1 to 30 A/dm2 (col. 4, lines 1-2)" (Ans. 21), and "the anode
current density is a result effective variable and one having ordinary skill in
the art has the skill to calculate the anode current density that would have
determined the success of the desired reaction to occur" (Ans. 20-21).
The Appellant does not address that finding, let alone indicate
reversible error therein.
DECISION
The rejection of claims 1-13 under 35 U.S.C. § 103(a) over JP '794 in
view of Murakami, Tajima, and Sekimoto is affirmed.
The Examiner's decision 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).
AFFIRMED
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