Ex Parte Stadler et al

Patent Trial and Appeal Board

Apr 17, 2017

13309673 (P.T.A.B. Apr. 17, 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.
13/309,673 12/02/2011 Bethanie J.H. Stadler R0200.0003/P003 7110
24998 7590
Blank Rome LLP
1825 EYE STREET NW
Washington, DC 20006-5403
04/19/2017 EXAMINER
RIPA, BRYAN D
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
04/19/2017 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):
#IPDocketing-DC @BlankRome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BETHANIE J.H. STADLER,
KOTHA SAI MADHUKAR REDDY,
DOUGLAS A. REKENTHALER, and PATRICK MCGARY1
Appeal 2015-007866
Application 13/309,673
Technology Center 1700
Before: CATHERINE Q. TIMM, KAREN M. HASTINGS, and
AVELYN M. ROSS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1, 26, and 27 under 35 U.S.C. § 103(a)
1 Appellants are the real parties in interest.
2 In explaining our Decision, we cite to Final Office Action dated March 14,
2014 (Final), the Appeal Brief dated April 15, 2015 (Appeal Br.), the
Examiner’s Answer dated June 30, 2015 (Ans.), and the Reply Brief dated
August 31, 2015 (Reply Br.).
Appeal 2015-007866
Application 13/309,673
as obvious over McGary3 in view of Aksu4 and Takeda.5 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method of electroplating an alloy of iron
(Fe) and gallium (Ga) (Galfenol alloy) onto a substrate. See, e.g., claim 1.
The dispute is focused on the last clause of claim 1. Compare Final 5—8,
and Ans. 6—13, with Appeal Br. 3—6, and Reply Br. 1—2. Claim 1, which we
reproduce from the Claims Appendix of the Appeal Brief highlighting the
portion of the claim at issue, reads:
1. A method of electro-plating a Galfenol alloy onto a
substrate, comprising:
providing an electroplating bath comprising sodium
citrate and a mixture of Fe and Ga salts;
providing a substrate in the electroplating bath; and
providing a current in the electroplating bath to deposit
Galfenol (Fei-xGax, where x is in a range of from 10% to 40%)
onto the substrate;
wherein the Fe2+:Ga3+ ratio is between about 1:3-1:2,
the amount of sodium citrate is equal to or less than that of
Ga3+, and the pH is between about 3-6, in the electroplating
bath.
Appeal Br. 8 (emphasis added).
3 McGary, “Electrochemically Synthesized Magnetic Nano wire
Heterostructures and Arrays for Acoustic Sensing,” Dissertation UMI
Number 3316145 (2008).
4 Aksu et al., US 7,507,321 B2, issued Mar. 24, 2009.
5 Takeda et al., JP 2008-260981 A, published Oct. 30, 2008 (as translated).
2
Appeal 2015-007866
Application 13/309,673
As Appellants do not argue any claim apart from the others, we select
claim 1 as representative to resolve the issue on appeal.
OPINION
McGary electroplates Galfenol alloy using an electroplating bath
containing Fe2+, Ga3+, and sodium citrate, but as pointed out by Appellants,
McGary does not disclose concentrations within the ratios of claim 1 along
with a pH within the 3—6 range also required by claim 1. Appeal Br. 3. The
issue is: Have Appellants identified a reversible error in the Examiner’s
determination that those of ordinary skill in the art would have had a
reasonable expectation that baths with compositions meeting the
concentrations and pH of claim 1 would have been suitable for electro­
plating a Galfenol alloy given the known effects of varying the
concentrations and pH and the routine experimentation that would have been
conducted to optimize the bath for the desired electroplating?
Appellants have not identified such an error.
McGary is a dissertation describing a project whose ultimate goal is to
develop magnetostrictive nanowires that can be used as acoustic sensors.
McGary § 3.1 at pp. 40-41. In essence, the project gets its inspiration from
the cilia in the ear and seeks to create a biomimetic smart structure that
oscillates with incoming acoustic waves in a way that mimics those cilia.
McGary § 1.1.1 at p. 2; § 1.3 at p. 6.
McGary started the project by developing an electroplating bath for
Galfenol. McGary Chap. 7 at p. 175. Chapter 3 describes the experiments
conducted to develop the bath chemistry. The product of these experiments
was a bath able to electroplate metallic films of Fei-xGax (1214) using high concentration of KOH and
NaOH, but such high alkalinity is corrosive to equipment and has high
viscosity. Id. Aksu’s inventive bath uses citrate as a complexing
agent and adjusts pH using, for instance, NaOH to obtain bath pHs
within the range of 7 or higher, the pH ranges being sometimes
7
Appeal 2015-007866
Application 13/309,673
significantly higher such as between 10 and 13. Aksu col. 4,11. 33—
53; col. 5,11. 8—12 (Example 1).
All of the references evince a knowledge in the art that the pH
was a result effective variable in the process of electroplating gallium
and McGary provides evidence that this holds true for electroplating
ofFei-xGax (12