Rohm and Haas Electronic Materials LLC

Patent Trials and Appeals Board

Jun 29, 2020

14186081 - (D) (P.T.A.B. Jun. 29, 2020)

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.
14/186,081 02/21/2014 Adolphe FOYET 75938-US-NP 7989
53884 7590 06/29/2020
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
WONG, EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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 ADOLPHE FOYET, WAN ZHANG-BEGLINGER,
and MARGIT CLAUSS

Appeal 2019-004184
Application 14/186,081
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHELLE N. ANKENBRAND, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SMITH Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8, 13, and 18–21. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Dow
Chemical Company. Appeal Br. 2.
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Application 14/186,081

2
The rejection of claims 8, 13, and 18–21 under 35 U.S.C. § 103 as
unpatentable over Tsuji (US 7,628,903 B1, issued Dec. 8, 2009) in view of
Lewis (GB 1,283,024, published July 26, 1972), Romer (US 2013/0256145
A1, published Oct. 3, 2013) and Lee (EP 2,626,449 A2, published Aug. 14,
2013) is presented for review.
Appellant’s invention relates generally to methods of electroplating a
uniform matte silver deposit where silver is electroplated at high speeds and
provides a substantially uniform matte silver deposit with good hardness,
ductility, and conductivity. (Spec. 1.) Independent claim 8 is representative
and is reproduced below:
8. A method of electroplating silver comprising:

a) contacting a substrate with an acidic silver electroplating
composition consisting of one or more sources of silver ions,
wherein the one or more sources of silver ions are in amounts
of 10 g/L to 80 g/L, one or more alkanesulfonic acids in
amounts of 20 g/L to 250 g/L, telluric acid in amounts of 200
mg/L to 800 mg/L, water, a pH of 1 to less than 1, one or more
optional compounds chosen from suppressors, surfactants and
grain refiners, one or more dihydroxy bisulfide compounds in
amounts of 10 g/L to 80 g/L, wherein the one or more
dihydroxy bisulfide compounds are chosen from 2,4-dithia-1,5-
pentanediol, 2,5-dithia-1,6-hexanediol, 2,6-dithia-l,7-
heptanediol, 2,7-dithia-1,8-octanediol, 3,5-dithia-l,7-
heptanediol, and 3,6-dithia-1,8-octanediol, and one or more
mercaptotetrazoles in amounts of 5 g/L to 160 g/L, wherein the
one or more mercaptotetrazoles are chosen from l-(2-
dimethylaminoethyl)-5-mercapto-1,2,3,4-tetrazole, and l-(2-
diethylaminoethyl)-5-mercapto-1,2,3,4-tetrazole, the acidic
silver electroplating composition is substantially free of
cyanide, wherein a ratio of a concentration of the one or more
mercaptotetrazoles to a concentration of the one or more
dihydroxy bis-sulfide compounds is 0.5:1 to 2:1; and

Appeal 2019-004184
Application 14/186,081

3
b) electroplating uniform matte silver on the substrate with the
acidic silver electroplating composition at a current density
from 2-26 A/dm2 and a temperature of 60-70 °C.

Appeal Br. 9, Claims Appendix.

OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we reverse the Examiner’s
rejections based on the arguments Appellant presents. We add the
following.
We limit our discussion to independent claim 8.
The dispositive issue on appeal is:
Did the Examiner reversibly err in determining that a person of
ordinary skill in the art would have combined the teachings of Tsuji, Lewis,
Romer, and Lee to perform a method of electroplating uniform matte silver
from an acid silver electroplating composition comprising telluric acid in
amounts as independent claim 8 requires? 2
We answer this question in the affirmative.
The Examiner finds Tsuji teaches a method of electroplating silver
comprising contacting a substrate with an acidic silver electroplating
composition. (Ans. 3.) The Examiner finds Tsuji differs from the claimed
invention by not disclosing the composition includes telluric acid in amounts
of 200 mg/L to 800 mg/L, as independent claim 8 requires. (Ans. 4–5.) The

2 The Examiner further cites Lee for describing the obviousness of including
mercaptotetrazole compounds in the electroplating bath, subject matter not
related to the dispositive issue. (Ans. 8.)

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Application 14/186,081

4
Examiner finds Lewis and Romer teach it was known to include brighteners,
specifically tellurium in the electrolytes used in the electroplating of silver
for the purpose of brightening the deposit. (Ans. 6.) The Examiner
determines it would have been obvious to one of ordinary skill in the art to
perform Tsuji’s method of electroplating silver including telluric acid in
amounts the claimed invention requires because Lewis and Romer each
teaches it was known to include brighteners in the electrolytes used in the
electroplating bath for silver. (Ans. 5–6).
Appellant argues the combination of Tsuji, Lewis, Romer, and Lee
fails to establish the obviousness of the claimed invention. (Appeal
Br. 4–8.) Appellant argues Tsuji discloses depositing silver with various
metals that do not include telluric acid in the silver baths for any reason.
(Appeal Br. 7.) Appellant argues Lewis, Romer, and Lee teach away from
the presently claimed method because the references teach including
tellurium in silver plating baths to provide a bright, not a matte deposit.
(Appeal Br. 7.) Appellant argues further the Examiner’s rejection is
premised on hindsight. (Appeal Br. 8.)
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see
also Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’
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Application 14/186,081

5
refers not to the teachings in the prior art of a motivation to combine, but to
the court’s analysis.”).
The Examiner’s rejection is premised on performing the method of
depositing silver as disclosed by Tsuji including telluric acid as a brightener.
(Ans. 4–6.) Tsuji discloses the suitability of including brighteners in the
plating process. (Tsuji col. 13.) In fact, Tsuji provides explicit concrete
examples of suitable brighteners, wherein none of the cited suitable
brighteners include telluric acid. (Tsuji col. 16.) Notwithstanding this
distinction, the Examiner turns to Lewis, Romer, and Lee for describing it
was known to utilize telluric acid as a brightener in silver plating baths.
However, the Examiner has failed to identify a teaching in any of the cited
references that suggests the inclusion of telluric acid as a brightener in silver
plating bath has advantages that outweigh Tsuji’s failure to include telluric
acid in the list of suitable concrete examples.
Accordingly, a preponderance of the evidence supports Appellant’s
position that the Examiner is using impermissible hindsight to provide a
basis for including telluric acid as a brightener in Tsuji’s silver plating bath.
The presently claimed method is directed to electroplating a uniform matte
silver deposit, not a bright or semi-bright silver deposit as disclosed in Tsuji,
Lewis, Romer, and Lee. The Examiner fails to adequately explain why a
person of ordinary skill in the art would have looked to include a brightener
—not included in the specific “concrete examples” of suitable brighteners
provided in Tsuji—to form a uniform matte silver deposit. The Examiner
does not adequately explain why the skilled artisan’s knowledge or
inferences and creativity would have supported the obviousness
determination based on the teachings of the applied references without an
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improper hindsight reconstruction. The Examiner also does not provide an
adequate technical explanation with the requisite rational underpinning of
why or how one skilled in the art, absent impermissible hindsight, would
have combined the teachings of Tsuji, Lewis, Romer, and Lee to arrive at
the claimed method of electroplating silver as required by independent claim
8. The fact finder must be aware “of the distortion caused by hindsight bias
and must be cautious of arguments reliant upon ex post reasoning.” KSR,
550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a “temptation to read into the prior art the teachings of the
invention in issue”)).
Accordingly, we reverse the § 103 rejection on appeal.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 13, 18–21 103 Tsuji, Lewis,
Romer, Lee
8, 13, 18–
21

REVERSED