Ex Parte Yuasa

Patent Trial and Appeal Board

Aug 24, 2016

11704805 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111704,805 0210912007
23869 7590
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
08/24/2016
FIRST NAMED INVENTOR
Satoshi Yuasa
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.
1285-26 PCT/CON/RCEIV 3058
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAILDATE DELIVERY MODE
08/24/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SATOSHI YUASA
Appeal2015-004095
Application 11/704,805
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 5, and 6. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellant's invention is generally directed to a method for
electroplating a metal material with a tin-zinc alloy plating bath. App. Br. 2.
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method for electroplating a metal material with a tin-
zinc alloy plating bath to produce a metal plated with a tin-zinc
alloy, said method comprising:
(a) contacting said metal material with a tin-zinc alloy
plating bath which has a pH of 2 to 10 and comprises
Appeal2015-004095
Application 11/704,805
a tin ion in a concentration of 1 to 100 g/L,
a zinc ion in a concentration of 0.2 to 80 g/L,
a hydroxycarboxylic acid or a salt thereof in a
concentration of 0.25 to 3 mol/L, and
a water-soluble compound obtained by a reaction
of an aliphatic amine, an organic acid ester and a phthalic
anhydride;
at a plating bath temperature of 40 to 90°C; and
(b) stirring at a plating bath stirring rate of 30 to
60 m/min wherein said stirring is carried out by a plating
apparatus of a jet flow system in which the bath solution is
circulated with a pump or by a plating apparatus for steel
sheets;
at a cathode current density of 40 to 80 A/dm2;
said method resulting in a zinc content of 3 to 45% in the
resulting metal plated with tin-zinc alloy,
wherein said hydroxycarboxylic acid is selected from the
group consisting of citric acid, tartaric acid, malic acid, glycolic
acid, glyceric acid, lactic acid, ~-hydroxypropionic acid and
gluconic acid.
App. Br. 8, Claims Appendix (paragraphing added).
Appellant (see generally App. Br.) requests review of the Examiner's
rejection of claims 1, 3, 5, and 6 in the Non-Final Office Action entered May
29, 2013, under 35 U.S.C. § 103(a) as unpatentable over International Patent
Application Publication WO 2004/065663 A 1, published August 5, 2004, in
view of Masuda et al. (EP 1591563 Al, published November 2, 2011,
hereinafter "Masuda"), which is an English equivalent of WO 2004/065663
Al, 1 the English Abstract of Matsumoto et al. (JP 51-75632, issued June 30,
197 6, hereinafter "Matsumoto"), Brown et al. (EP 113 8805 A2, published
October 4, 2001, hereinafter "Brown"), Kadija et al. (US 4,749,626, issued
1 Appellant does not contest the Examiner's reliance on EP 1591563 Al as
an English equivalent of WO 2004/065663 Al. See generally App. Br.
2
Appeal2015-004095
Application 11/704,805
June 7, 1998, hereinafter "Kadija"), and Velasquez (US 5,985,106, issued
November 16, 1999, hereinafter "Velasquez").
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejection under 35 U.S.C. § 103(a)
of claims 1, 3, 5, and 6. We add the following for emphasis. 2
Appellant does not dispute the Examiner's finding that Masuda
discloses a method for electroplating various articles, including a copper
leadframe (metal material), with a tin alloy plating bath to form a tin alloy
plating film on the leadframe (Masuda i-fi-1 72, 121) that comprises contacting
the copper leadframe (metal material) with a tin-zinc alloy plating bath that
has an acidic, neutral, or alkaline pH (Masuda i1 48) (encompassing the pH
range recited in claim 1) and comprises a soluble stannous salt in a
concentration of 1 to 200 g/l, calculated as Sn2+ content (Masuda i-f 46)
(encompassing the range recited in claim l ); a soluble salt that that generates
Zn2+ ions in the bath to form an alloy with tin (Masuda ,-r 43) in a
concentration of about 0.1 to 100 g/l, calculated as the content of the Zn2+
component (Masuda i1 46) (significantly overlapping the range recited in
claim 1 ); and a hydroxycarboxylic acid (Masuda i-fi-1 48, 49), in a
concentration of 1 to 20 mol/l (Masuda i152) (significantly overlapping the
range recited in claim 1 ), at a plating bath temperature of 1 OQC to 50QC
(overlapping the range recited in claim 1) and a cathode current density of
0. 0001 to 100 Al dm2 (encompassing the range recited in claim 1) (Masuda
2 Appellant argues claims 1, 3, 5, and 6 together. See generally Appeal
Brief. Therefore, we select claim 1 as representative, and claims 3, 5, and 6
will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Appeal2015-004095
Application 11/704,805
i167). Compare Ans. 2-3, with App. Br. 3---6. The Examiner finds that
Masuda discloses that suitable hydroxycarboxylic acids include gluconic
acid, citric acid, glycolic acid, malic acid, and tartaric acid, each of which is
recited in claim 1. Ans. 4; Masuda i-f 49.
The Examiner acknowledges that Masuda does not disclose that the
tin-zinc alloy plating bath comprises a water-soluble compound obtained by
reacting an aliphatic amine, an organic acid ester, and a phthalic anhydride,
and to address this feature missing from Masuda, the Examiner relies on
Matsumoto's disclosure of using the reaction product of an aliphatic amine,
an organic acid ester, and a phthalic anhydride as a brightening agent
additive in a tin-zinc alloy electroplating bath (Masuda abstract), which
Appellant does not dispute. Compare Ans. 4--5, with App. Br. 3---6. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to modify Masuda's tin-zinc alloy
plating bath to include a water-soluble compound obtained by reacting an
aliphatic amine, an organic acid ester, and a phthalic anhydride as a
brightening additive to produce bright, electroplated tin-zinc alloys, as
disclosed in Matsumoto. Ans. 5.
Appellant does not dispute the Examiner's finding that Masuda
discloses that the tin alloy plating bath can be used for high-speed,
continuous plating. Compare Ans. 5, with App. Br. 3---6; Masuda i-f 66. Nor
does Appellant dispute the Examiner's finding that Brown discloses a
method for high-speed electroplating of tin-zinc alloys in which the bath is
agitated by stirring, pumping, sparging, or jetting to increase the plating
speed. Compare Ans. 5, with App. Br. 3---6; Brown i-fi-12, 13, 26, 32. The
Examiner finds that Kadija discloses a method for electroplating a tin
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Appeal2015-004095
Application 11/704,805
coating on a substrate, and discloses that a useful mixing rate for the plating
solution ranges from about 2 cm/sec to about 100 cm/sec (corresponding to
about 1.2 m/min to about 60 m/min, which encompasses the range recited in
claim 1 ), which Appellant does not dispute. Compare Ans. 6, with App. Br.
3---6; Kadija col. 5, 11. 24--32; col. 6, 11. 22-25. Nor does Appellant dispute
the Examiner's finding that Velasquez discloses a plating bath that
comprises multiple pumps for providing even plating conditions, and
multiple spray jets for providing even circulation and plating. Compare
Ans. 6, with App. Br. 3---6; Velasquez col. 2, 11. 13-22. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Masuda's tin-zinc alloy plating bath
by stirring the plating solution to increase the plating speed as disclosed by
Brown, and to stir or mix the solution at a rate of about 2 cm/sec to about
100 cm/sec (corresponding to about 1.2 m/min to about 60 m/min, which
encompasses the range recited in alim 1) as disclosed by Kadija using
multiple pumps and spray jets, as disclosed by Velasquez. Ans. 6-7.
Appellant argues that Masuda does not disclose the
hydroxycarboxylic acids recited in claim 1. App. Br. 5. However, the
Examiner correctly finds, as discussed above, that Masuda discloses a tin
alloy plating bath that includes a hydroxycarboxylic acid such as gluconic
acid, citric acid, glycolic acid, malic acid, or tartaric acid, which are each
recited in claim 1. Ans. 4; Masuda i-fi-1 48, 49.
Appellant argues that Masuda does not disclose the water-soluble
compound recited in claim 1. App. Br. 5. However, as discussed above, the
Examiner acknowledges that Masuda does not disclose a water-soluble
compound as recited in claim 1, and relies on Matsumoto's disclosure of
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Application 11/704,805
using such a compound as a brightening agent additive in a tin-zinc alloy
electroplating bath, which Appellant does not dispute. Compare Ans. 4--5,
with App. Br. 3---6; Matsumoto abstract. Nor does Appellant dispute the
Examiner's rationale for modifying Masuda's tin-zinc alloy plating bath to
include Matsumoto's water-soluble compound obtained by reacting an
aliphatic amine, an organic acid ester, and a phthalic anhydride in order to
provide a brightening additive that will result in production of bright,
electroplated tin-zinc alloys. Compare Ans. 5, with App. Br. 3---6.
Appellant further argues that Masuda does not disclose the stirring
conditions recited in claim 1. App. Br. 5. However, the Examiner implicitly
acknowledges that Masuda does not explicitly disclose the precise stirring
conditions recited in claim 1, and as discussed above, the Examiner relies on
Brown, Kadija, and Velasquez to supply the missing features, which
Appellant does not dispute. Compare Ans. 5-7, with App. Br. 3---6. Nor
does Appellant dispute the Examiner's basis for combining Masuda with
Brown, Kadija, and Velasquez to arrive at the stirring conditions recited in
claim 1. Compare Ans. 5-7, with App. Br. 3---6.
Appellant further argues that Masuda emphasizes including an
aliphatic sulfonic acid in the plating bath disclosed in the reference, but
Appellant's invention does not emphasize using an aliphatic sulfonic acid in
the plating bath. App. Br. 5---6. However, claim 1 does not exclude an
aliphatic sulfonic acid from the recited tin-zinc alloy plating bath due to the
open nature of the "comprising" transitional phrase used in connection with
the contents of the plating bath. Appellant's argument therefore lacks
persuasive merit.
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Application 11/704,805
Appellant also argues that the instant invention and ivfasuda's
invention "point in different directions" because the two inventions are
directed to different solutions to the problem of producing a good tin alloy
plating film in a short time. App. Br. 6. Specifically, Appellant contends
that Masuda discloses that a cathode current density of 40-50 Al dm2 is not
normally used for tin alloy electroplating, and indicates that including an
aliphatic sulfonic acid in the plating bath allows such a high current density
to be used to produce a good tin alloy plating film in a short time. Id.
Appellant further contends that, in contrast, the instant invention achieves
good tin alloy electroplating in a short time period through a combination of
a specific plating bath composition and specific plating conditions. Id.
However, as discussed above, claim 1 does not exclude an aliphatic sulfonic
acid from the tin-zinc alloy plating bath. In addition, as also discussed
above, Masuda discloses that a current density of 0.0001 to 100 A/dm2 can
be used for electroplating a tin-zinc alloy (Masuda i-f 67), and Appellant does
not dispute that this current density range encompasses the range recited in
claim 1. App. Br. 3---6. Masuda's disclosure is not limited to the particular
discussion of current density provided in the context of the experimental
examples cited by Appellant (Masuda i-fi-1 126---127), and the entirety of
Masuda's disclosures must be evaluated for what they would have fairly
suggested to one of ordinary skill in the art. Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered." (second alteration in original) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1
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Application 11/704,805
(CCPA 1982) (explaining that a prior art reference's disclosure is not limited
to its examples); In re Boe, 355 F.2d 961, 965 (CCPA 1966) ("All of the
disclosures in a [prior art] reference must be evaluated for what they fairly
teach one of ordinary skill in the art."). Appellant's arguments thus lack
persuasive merit.
Therefore, Appellant's arguments are unpersuasive of reversible error
in the Examiner's rejection of claims 1, 3, 5, and 6 under 35 U.S.C. § 103(a),
and we accordingly sustain this rejection.
DECISION
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
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)(l).
AFFIRMED
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