14529127 - (D) (P.T.A.B. Aug. 23, 2019)

Hiroki Okada et al.

Patent Trials and Appeals BoardAug 23, 2019

14529127 - (D) (P.T.A.B. Aug. 23, 2019)

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. 14/529,127 10/30/2014 Hiroki OKADA 75207-US-NP 6541 53884 7590 08/23/2019 ROHM AND HAAS ELECTRONIC MATERIALS LLC c/o DUPONT SPECIALTY PRODUCTS USA, LLC P. O. Box 2915 974 Centre Road, Chestnut Run Plaza 721-2342 Wilmington, DE 19805 EXAMINER QIAN, YUN ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 08/23/2019 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): PTO-Legal.PRC@dupont.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HIROKI OKADA, LI SHENGHUA, and SHINJIRO HAYASHI ____________________ Appeal 2018-008996 Application 14/529,127 Technology Center 1700 ____________________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the rejection of claims 1, 3–5, and 8. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Opinion, we refer to the Specification filed October 30, 2014 (“Spec.”); the Final Office Action dated December 22, 2017 (“Final Act.”); the Appeal Brief filed May 17, 2018 (“Appeal Br.”); the Examiner’s Answer dated June 20, 2018 (“Ans.”); and the Reply Brief filed August 20, 2018 (“Reply Br.”). 2 Appellant is The Dow Chemical Company, identified in the Appeal Brief as the real party in interest through its wholly owned subsidiary, Rohm & Haas Electronic Materials, LLC, the applicant. Appeal Br. 2. Appeal 2018-008996 Application 14/529,127 2 We REVERSE. The claims are directed to a stable catalyst solution for electroless plating, which is a method of depositing a metal layer on a substrate surface. Independent claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter with disputed terms emphasized: 1. A catalyst solution having a pH higher than 7 consisting of water, palladium ions, a palladium compound which provides the palladium ions, palladium ion complexing agent selected from the group consisting of bipyridine, picolylamine, ethylenediamine, 2-aminopyridine, nicotinic acid, 4-aminopyridine, 2-aminoethylpyridine and 3- hydroxymethylpyridine, optionally a pH adjuster selected from the group consisting of hydrochloric acid, sulfuric acid, nitric acid, sodium hydroxide, potassium hydroxide and sodium carbonate, and a compound having a buffering action in the alkaline region represented by the following general formula (1): Chemical Formula 1 wherein R1 and R2 each independently represent a hydrogen atom, linear, branched, or cyclic alkyl group having 1–17 carbon atoms, or aryl group; R1 and R2 are optionally substituted by a hydroxyl group, hydroxyalkyl group, or cycloalkyl group; R3 represents an alkylene group having 1–14 carbon atoms and are optionally substituted by a hydroxyl group, alkyl group, or hydroxyalkyl group; A represents SO3X or COOX; X represents a monovalent cation. Appeal 2018-008996 Application 14/529,127 3 REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Takai et al. (“Takai”)3 JP 2007138218A June 7, 2007 Calabrese Barton et al. (“Calabrese Barton”) US 2010/0048380 A1 Feb. 25, 2010 H.A. Azab & Z.M. Anwar, Coordination Tendency of Some Biologically Important Zwitterionic Buffers toward Metal Ion Nucleotide Complexes at Different Temperatures, 57 J. Chem. Eng. Data 2890–95 (2012) (“Azab”). REJECTION The Examiner maintains—and Appellant appeals—the rejection under 35 U.S.C. § 103(a) of claims 1, 3–5, and 8 as unpatentable over Takai, in view of Azab, and further in view of Calabrese Barton. Final Act. 4–5, Ans. 4–10, Appeal Br. 4–8, Reply Br. 2–3. Claims 2 and 6 are withdrawn from consideration. Final Act. 1. OPINION Appellant argues, inter alia, that Takai, in combination with Azab and Calabrese Barton, fails to render independent claim 1 obvious because the applied prior art teaches away from using a claimed palladium ion complexing agent. See, e.g., Appeal Br. 7–8. Appellant does not make separate patentability arguments for the dependent claims, which will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). 3 The Examiner relies on the machine translation of record. Final Act. 4. Appellant does not object. Thus, we will also rely on, and cite to, the machine translation. Appeal 2018-008996 Application 14/529,127 4 The Examiner finds that Takai, in combination with Azab, teaches a catalyst solution for non-electrolytic plating comprising two or more palladium ion complexing agents, including ethylenediamine, and compounds which correspond to the claimed “Chemical Formula I.” Final Act. 4–5 (citing Takai ¶¶ 1–37, claims 1–11; Azab 2890–95). The Examiner, however, finds that neither reference discloses or suggests that the catalyst solution comprises the palladium ion complexing agent bipyridine. Final Act. 5. The Examiner finds that Calabrese Barton “teach[es] palladium complexing the N-containing ligands selected from ethylenediamine and bipyridine.” Id. at 5 (citing Calabrese Barton ¶¶ 1–75, claims 1–41). The Examiner determines that it would have been obvious to one having ordinary skill in the art at the time of the invention “to combine the ligand of bipyridine of Calabrese Barton[] with the catalyst system taught by Takai[] to obtain the invention as specified in the claim 1 as an alternative N- containing ligand compound.” Final Act. 5. Appellant argues that the requisite palladium ion complexing agent is neither disclosed nor suggested because Calabrese Barton merely “discloses ethylenediamine and bipyridine as nitrogen containing precursor molecules for the carbon substrate of . . . [a] carbon-metal-nitrogen oxygen reducing cathode catalyst.” Appeal Br. 7. Appellant further argues that “no specific type of bond or interaction between the three elements is disclosed which would [have] indicate[d] or suggest[ed] a complex formation between the metal and the nitrogen compound.” Id. Appellant, furthermore, contends that “Calabrese [Barton] teaches away from catalysts which include precious metals such as palladium.” Id. at 8 (citing Calabrese Barton ¶¶ 44–48, Appeal 2018-008996 Application 14/529,127 5 Abstract). Appellant concludes that one of ordinary skill in the art would have had no reason or motivation to include Calabrese Barton’s ethylenediamine or bipyridine complexing agents in formulating Takai’s electroless metal plating catalyst. Appeal Br. 8. “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Here, the Examiner’s reason why one of ordinary skill in the art at the time of the invention would have applied bipyridine in Takai’s catalyst comprising palladium is because Calabrese Barton teaches that bipyridine is an alternative N-containing ligand compound to Takai’s ethylenediamine. Final Act. 5.4 Calabrese Barton, however, explicitly teaches that a cathode catalyst composition “is preferably substantially free of all precious metals, such as . . . palladium.” Calabrese Barton ¶ 44; see also id. at ¶¶ 9, 10. Calabrese Barton further teaches that “suitable transition metals” for the cathode catalyst “include iron, cobalt, nickel, chromium, cerium, zinc, zirconium, molybdenum and manganese.” Id. at ¶ 44. We agree with Appellant that Calabrese Barton teaches away from adding ethylenediamine or bipyridine compounds to a palladium precursor 4 The Examiner determines that such an ordinarily skilled artisan would have found it obvious “to substitute the ethylenediamine of Takai[] with the bipyridine of Calabrese Barton[] . . . as an alternative N-containing ligand compound.” Ans. 5–6 (emphasis added). We note, however, that this proposed substitution is inconsistent with the Examiner’s finding that Takai’s catalyst solution for non-electrolytic plating comprises “two or more palladium complexing agents.” Final Act. 4 (emphasis added); see also Ans. 4. Appeal 2018-008996 Application 14/529,127 6 loaded carbon substrate.5 See id. at ¶¶ 10–11, 53. Furthermore, our review of the applied prior art concurs with Appellant’s characterization of Calabrese Barton’s teachings. We are persuaded that Calabrese Barton neither discloses nor suggests that palladium ions may form complexes with the N-containing ligands selected from ethylenediamine and bipyridine. Appellant has identified reversible error in the Examiner’s prima facie case of obviousness with respect to claim 1. We do not sustain the Examiner’s rejection of claim 1. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3–5, and 8 is reversed. REVERSED 5 Although Calabrese Barton teaches that an anode catalyst may comprise at least one palladium metal, the Examiner has not made any findings, nor have we identified any teachings, that this anode catalyst is exposed to either bipyridine or ethylenediamine. See Calabrese Barton ¶ 65, claims 39, 40.