Ex Parte Tai

Patent Trial and Appeal Board

Dec 31, 2013

11791934 (P.T.A.B. Dec. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOSHIHIRO TAI
____________

Appeal 2012-010142
Application 11/791,934
Technology Center 1700
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Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to a method for manufacturing a plated
resin molded article. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 134. We affirm.

STATEMENT OF CASE
The claims are drawn to a method for manufacturing a plated resin
molded article comprising a direct plating step to form an electrically
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conductive layer. Claims 2, 7-9, 11-17 and 25-32 are pending and stand
rejected by the Examiner under 35 U.S.C. § 103(a) as obvious in view of Tai
‘621,1 JP ‘278,2 and Baumann.3
Claim 25 is the only independent claim on appeal. Claims 2, 7-9, 11-
17 and 26-32 depend from it. Claim 25 reads as follows (bracketed
numerals added to emphasize key limitations in the claim):
25. A method for manufacturing a plated resin molded article,
comprising the steps of: [1] contact-treating a thermoplastic
resin molded article with a non-heavy metal containing acid or
base; [2] treating the contact-treated thermoplastic resin molded
article with a catalyst-imparting liquid; [3] forming an
electrically conductive layer on the surface of the thermoplastic
resin molded article by direct plating from a plating solution
containing a reducing agent selected from the group consisting
of tin (II) chloride, formic acid or a salt thereof, an alcohol and
a reducing saccharide; and [4] electroplating the electrically
conductive layer to form a metallic plating layer thereon,
wherein an etching step is not performed by an acid containing
a heavy metal, a very thin electrically conductive layer of a
metal compound is formed on the surface of the thermoplastic
resin-molded article by the direct plating, the metal compound
is a copper compound and [5] the thermoplastic resin-molded
article is formed from a thermoplastic resin blend of polyamide
6, an ABS resin, an acid modified ABS resin, the content of
polyamide 6 ranging from 30% by mass to 60% by mass of the
thermoplastic resin blend, and a substance which has a
solubility in water at a temperature of 23°C of no more than
300g/100g in an amount of 0.01 to 15 parts by mass to 100
parts by mass of the thermoplastic resin blend.

1 U.S. Patent Application Publication No. 2003/0059621 A1, issued March
27, 2003.
2 JP 2001 -214278 A, published August 7, 2001 (English translation of
record relied upon throughout this decision).
3 U.S. Patent No. 6,099,964, issued August 8, 2000.
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DISCUSSION
The claims are drawn to a four step process as indicated by limitations [1]-
[4] in claim 25 reproduced above. The Examiner found that Tai ‘621
describes steps [1], [2], and [4] of the claimed method, but not step [3] of
“forming an electrically conductive layer on the surface of the thermoplastic
resin molded article by direct plating from a plating solution containing a
reducing agent selected from the group consisting of tin (II) chloride, formic
acid or a salt thereof, an alcohol and a reducing saccharide” (Answer 5-6 and
8) (underlining added for emphasis). Rather, the Examiner found that Tai
‘621 describes forming the conductive layer by an “electroless plating step”
without the use of a reducing agent (id.).
However, the Examiner found that JP ‘278 teaches that direct plating
using a bath solution which contains copper ions and a reducing agent solves
the problems of electroless copper plating methods, giving one of ordinary
skill in the art reason to have replaced Tai ‘621’s electroless plating step
with direct plating (id. at 8-9). With respect to the specific reducing agent
recited in the claims, the Examiner found that Baumann describes alcohols
and reducing saccharides as reducing agents which would be useful in Tai
‘621 as modified by JP ‘278 (id. at 9-10).
Appellant contends that there is no disclosure in Tai ‘621 of the
claimed composition [5] of a “thermoplastic resin-molded article formed
from a thermoplastic resin blend of polyamide 6, an ABS resin, an acid
modified ABS resin, the content of polyamide 6 ranging from 30% by mass
to 60% by mass of the thermoplastic resin blend.” (Claim 25; Appeal Br. 5.)
This argument is not persuasive. The Examiner specifically identified
disclosure in Tai ‘621 which describes the same composition as claimed
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(Final Rejection 6; Answer 14). Based on this equivalence, the Examiner
stated: “If the composition is physically the same, it must have the same
properties. Products of identical chemical composition can not have
mutually exclusive properties.” (Id. at 6.) We have reviewed the disclosure
cited by the Examiner in Tai ‘621 (Answer 14) and find it supports the
Examiner’s position. Appellant does not provide sufficient evidence or
arguments to the contrary.
Appellant contends that JP ‘278 does not teach equivalence between
its direct plating method and electroless plating (Appeal Br. 5). Appellant
also argues that JP ‘278 uses an etching step which is excluded by the claims
and a different resin composition than the one which is claimed (id. at 5-6).
The Examiner relied upon JP’ 278 because it teaches that direct
plating of a copper layer is an improvement over electroless copper plating.
The following findings of fact (“FF”) from JP ‘278 are pertinent and support
the Examiner’s findings:
FF1
To deposit a copper film on a nonconductive plastic substrate,
an electroless copper plating bath in which is used
formaldehyde has been commonly used heretofore for industrial
purposes. . . . However, depositing copper on a resin to which is
attached a palladium or palladium-tin catalyst, using this
electroless copper plating bath, poses the problem of a long
processing time and also has bath stability issues.
[0002]
FF2
Due to the aforesaid problems of electroless copper plating
baths, there have been proposed several techniques that do not
use electroless copper plating. These techniques are commonly
known as direct plating and are roughly classified into three
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systems: . . . The printed circuit boards manufactured by these
systems, however, have problems in the adhesion between
substrates and plated films and problems in heat resistance and
the like and cannot be said to have sufficient reliability.
[0003]
FF3
Accordingly, there has been a demand for a copper plating
method that can solve the problems of electroless copper
plating and that is superior to conventional direct plating
methods.
[0003]
FF4
The present invention was achieved in view of the aforesaid
situation and, it intends to solve the problems of heretofore-
employed electroless copper plating methods and existing direct
plating methods and to provide a direct plating method that
forms a homogeneous and highly-conductive thin copper film,
thereby making it possible to improve the plating properties and
plating rate of the electrolytic copper plating layer to be plated
on said thin copper film . . .
[0004]
FF5
The direct plating-use accelerator bath solution of the present
invention is an aqueous solution containing copper ions and a
reducing agent.
[0005]
FF6
Any resin can be used for the resin substrate, and examples
thereof include, but are not limited to, thermoplastic resins--for
example, . . . polyamide resins . . ..
[00018]
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JP ‘278 teaches that the direct plating method “solve[s] the
problems of electroless copper plating and . . . is superior to
conventional direct plating methods.” (FF3; see also FF4.) Thus, the
Examiner’s position that it would have been obvious to one of
ordinary skill in the art to have used JP ‘278’s direct plating step in
Tai ‘621 for its advantage in solving the shortcomings of electroless
copper plating is supported by a preponderance of the evidence.
As far as the differences between JP ‘278 and the resin recited
in the claims (Appeal Br. 6), JP ‘278 teaches that any kind of resin can
be used in its method, including a thermoplastic polyamide resin as
claimed (FF6). For this reason, even though there are differences in
the thermoplastic resins utilized between the two methods, one of
ordinary skill in the art would have reasonably expected that JP ‘278’s
direct plating step could be used with the specifically claimed resin.
Appellant also argues, without pointing to any specific
disclosure, that “JP ‘278 uses an etching solution containing
hexavalent chromic acid ion.” (Appeal Br. 5.) However, the method
of Tai ‘621 did not include an etching step after the plating step, and
the Examiner did not rely on JP ‘278’s etching step. Appellant did not
explain how this alleged etching step would have dissuaded one of
ordinary skill in the art from having used direct plating in place of the
electroless plating step in Tai ‘621’s method for the advantages
described in JP ‘278.
The Examiner cited Baumann for teaching the claimed reducing
agents “alcohol” and “reducing saccharides.” (Answer 9-10.)
Appellant contends that Baumann’s method is different from the
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claimed method in that Baumann uses small polyorganopolysiloxane
particles and an organic solvent (Appeal Br. 7). Because of these
differences, Appellant argues it “would not be expected by one of
ordinary skill in the art that the metal plating of a thermoplastic resin
molded article would be similar to the treatment of
organopolysiloxane particles having an average diameter of from 5-
200nm.” (Id.)
This argument is not persuasive. The Examiner cited Bauman
for its teaching of reducing agents. JP ‘278 teaches sodium
borohydride and hydrazine are suitable as reducing agents in its
plating solution (JP ‘278, pages 8-9, [0009]; Answer 20). The
Examiner found that “Baumann teaches that the reducing sugars such
as fructose and glucose and alcohols such as ethanol are alternatives
to sodium borohydride and hydrazine (col. 10, line 60 to col. 11, line
5).” (Answer 20.) Because of this teaching that sugars and alcohols
are alternatives to the reducing agents described in JP ‘278,4 one of
ordinary skill in would have reasonably believed that that latter could
be substituted in JP ‘278. Appellant has not provided adequate
evidence or arguments that the reducing agent of Baumann would not
function in the accelerator bath disclosed by JP ‘278 (Answer 20).

4 “Examples of suitable reducing agents are hydrazines such as hydrazine
and hydroxylhydrazine; metal borohydrides such as sodium or potassium
borohydride; aldehydes such as acetaldehyde; reducing sugars such as
fructose and glucose; alcohols such as ethanol . . .” Baumann, col. 10, ll. 63-
67.
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Declaration evidence
A declaration was provided by Toshihiro Tai, sole inventor of
the instant application and inventor of Tai ‘621 (Declaration of
Toshihiro Tai under 37 C.F.R. § 1.132). Mr. Tai stated that he carried
out “Comparative Example 2 to 5 . . . in the same way as Example 1
to 4 of the instant application, except for replacing the direct plating
by electroless plating.” (Tai Decl. 2.)
Appellant argues that the Tai Declaration further establishes the
non-obviousness of the claimed invention (Appeal Br. 9). Appellant
argues in the Appeal Brief that a “comparison of Comparative
Examples 2-5 in Table 1 in the Declaration with Examples 1-4,
respectively in Table 1 in the specification illustrates the improved
adhering strength obtained by utilizing direct plating.” (id.)
Appellant contends in the Appeal Brief that this showing is
unexpected (id.).
The data is summarized in the table below: “Example”
represents the examples 1-4 in the specification conducted using
direct plating. “Comp.” represents the comparative examples 2-5 in
the Tai declaration performed using electroless plating. The values
listed under each column are a measure of adherence strength in kPa
of the plating layer on resin molded article (Specification, pp. 24-25
and 26-27).
Example Direct Ion Comp. Electroless Ion Improvement
1 85 Cu5 2 75 Ni6 10

5 Specification, p. 25, (4) Direct plating step. Copper (Cu) was using in
plating solution.
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2 110 Cu 3 100 Ni 10
3 50 Cu 4 43 Ni 7
4 60 Cu 5 54 Ni 6
The data shows an improvement 10, 10, 7, and 6 in adherence
when direct plating copper is compared to electroless plating nickel.
The data is not persuasive. Mr. Tai testified that the
comparative examples [2-5] were carried out “in the same way as
Example 1 to 4 of the instant application, except for replacing the
direct plating by electroless plating.” (Tai Decl. 2; underlining added
for emphasis.) However, as shown above, the electroless plating in
comparative examples 2-5 was done with nickel, while the direct
plating in examples 1-4 was done with copper. Therefore, Mr. Tai’s
statement does not appear to be entirely accurate.
It was not established by Appellant that the increased adherence
observed with direct copper plating was because of the direct plating
step rather than substitution of copper for nickel.
Furthermore, JP ‘278 noted an adherence problem in the prior
art, and said its method addressed this problem (FF2 and FF3). Thus,
increased adherence, as shown in the data summarized above, would
have been reasonably expected based on the teachings in JP ‘278.
Neither Appellant nor Mr. Tai addressed the teachings in JP’278 that
its direct plating method is described as an improvement to both
electroless and direct plating methods in the prior art.

6 Tai Decl., p. 3, “(6) Electroless plating step of nickel.” Nickel (Ni) was
using in the plating solution.
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SUMMARY
For the foregoing reasons and those of the Examiner’s, we
affirm the rejection of claim 25 as obvious in view of Tai ‘621, JP
‘278, and Baumann. Dependent claims 2, 7-9, 11-17 and 25-32 were
not argued separately and fall together with claim 1 and for the
reasons given by the Examiner. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD
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)(iv).

AFFIRMED

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