Coventya, Inc.Download PDFPatent Trials and Appeals BoardDec 24, 20212020004554 (P.T.A.B. Dec. 24, 2021) Copy Citation 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. 14/414,821 01/14/2015 Matthew Joseph Wojcik TAS-021460US PCT 8952 26294 7590 12/24/2021 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVELAND, OH 44114 EXAMINER BAREFORD, KATHERINE A ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 12/24/2021 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): docketing@tarolli.com rkline@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW JOSEPH WOJCIK, AMBROSE SCHAFFER, and JEAN M. LAPLANTE ____________ Appeal 2020-004554 Application 14/414,821 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11–13, 15, 16, 18, 20, 51, 52, and 54. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Coventya, Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-004554 Application 14/414,821 2 CLAIMED SUBJECT MATTER The invention relates to electroless nickel coatings. Spec. ¶ 2. Claims 11 and 54 are reproduced below. Claim 11: A method of forming a black electroless nickel coating on a substrate, the method comprising: contacting a surface of the substrate to be coated with an aqueous electroless nickel plating bath to provide an electroless nickel coating on the surface having a phosphorus content of about 8% to about 11% by weight, the bath including about 2 g/1 to about 8 g/1 nickel, about 20 g/1 to about 35 g/1 of a hypophosphorous reducing agent, about 1 g/1 to about 75 g/1 each of a complexing agent, chelating agent, and/or pH buffer, about 40 ppm to about 100 ppm zinc, and about 5 ppm to about 30 ppm of a bismuth stabilizer, wherein the bath is free of a sulfur compound and has a pH of about 4.5 to about 5.0; etching the electroless nickel coating with an etchant agent to provide the coated substrate with a black surface, wherein the etchant agent comprises ferric sulfate and hydrochloric acid. Claim 54: A method of forming a black electroless nickel coating on a substrate, the method comprising: contacting a surface of the substrate to be coated with an aqueous electroless nickel plating bath to provide an electroless nickel coating on the surface having a phosphorus content of about 8% to about 11 % by weight, the bath including about 2 g/1 to about 8 g/1 nickel, about 20 g/1 to about 35 g/1 of a hypophosphorous reducing agent, about 1 g/1 to about 75 g/1 each of a complexing agent, chelating agent, and/or pH buffer, about 40 ppm to about 100 ppm zinc, and about 5 ppm to about 30 ppm of a bismuth stabilizer, wherein the bath consists essentially of lactic acid, acetic acid, malic acid, succinic acid, sodium hypophosphite, ammonium hydroxide, nickel, zinc, bismuth trichloride, and ethylenediamine tetraacetic acid and is free of a sulfur compound and has a pH of about 4.5 to about 5.0; etching the electroless nickel coating with an etchant agent to provide the coated substrate with a black Appeal 2020-004554 Application 14/414,821 3 surface, wherein the etchant agent comprises ferric sulfate and hydrochloric acid. Appeal Br. 36, 39 (Claims Appendix). Each remaining claim on appeal depends from claim 11. REJECTIONS The Examiner maintains the following grounds of rejection: I. Claims 11–13, 15, 16, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okumura,2 Toshifumi,3 Harbulak,4 and Pinsler,5 in view of either Satake6 or Parker,7 further in view of either Yasui8 or Mallory.9 II. Claims 20 and 54 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the prior art and reasons as applied in Rejection I, and further in view of Oyamada.10 III. Claims 51 and 52 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the prior art and reasons as applied in Rejection I, alternatively further in view of Narcus.11 2 JP 403068785A, published March 25, 1991, as translated (“Okumura”). 3 EP 2007154223, published June 21, 2007, as translated (“Toshifumi”). 4 US 4,483,711, issued November 20, 1984 (“Harbulak”). 5 US 3,914,126, issued October 21, 1975 (“Pinsler”). 6 JP 07216554 A, published August 15, 1995, as translated (“Satake”). 7 GB 1310921, published March 21, 1973 (“Parker”). 8 US 2009/0324405 A1, published December 31, 2009 (“Yasui”). 9 EP 0071436 A1, published February 9, 1983 (“Mallory”). 10 US 6,770,369 B1, issued August 3, 2004 (“Oyamada”). 11 US 4,160,049, issued July 3, 1979 (“Narcus”). Appeal 2020-004554 Application 14/414,821 4 OPINION Rejection I: claims 11–13, 15, 16, and 18 With regard to the Examiner’s rejection of claims 11–13, 15, 16, and 18, Appellant argues the rejected claims as a group, focusing on features recited in claim 11. Appeal Br. 6–30. We select claim 11 as representative of the group. Each remaining claim subject to this ground of rejection stands or falls with claim 11. In rejecting claim 11, the Examiner finds Okumura discloses a method for forming a black electroless nickel coating comprising contacting a substrate with an electroless nickel plating bath to form a nickel-phosphorus film, and oxidizing the alloy film with an acid solution, but fails to specify the recited makeup of the plating bath. Final Act. 3–4. See Okumura 2 (“The electroless nickel-phosphorus plating solution used in this step is not particularly limited, and any known one can be used.”). The Examiner finds Toshifumi discloses a plating bath suitable for electroless nickel plating, which bath includes a bismuth stabilizer. Id. at 4–5. The Examiner finds Satake teaches including zinc along with bismuth in an electroless nickel plating bath enhances wear resistance. Id. at 6–7. The Examiner finds Harbulak and Parker also teach including bismuth and zinc as stabilizers in an electroless nickel plating bath. Id. at 7–8. The Examiner further finds Yasui teaches providing electroless nickel coatings with a phosphorus content in the range of 7–10 wt% enhances corrosion resistance, id. at 9, and Harbulak teaches influencing phosphorus content through plating process conditions including bath temperature, pH, and hypophosphite and nickel concentration, id. at 9. Appeal 2020-004554 Application 14/414,821 5 Appellant principally argues none of the relied-upon references recognizes an ability to blacken a nickel coating having 8–11% phosphorus. Appeal Br. 10 (“[T]he cited references do not teach or suggest a method of forming a black electroless nickel coating . . . having a phosphorus content of about 8% to about 11% by weight, and etching the electroless nickel coating . . . to form a black surface.”). According to Appellant, coatings having 8–11% phosphorus “would be expected to be too corrosion resistant to blacken.” Id. at 12 (citing Spec. ¶ 5). See also id. at 12, 15–18 (arguing none of the cited references discloses a blackened coating having 8–11% phosphorus). Appellant’s arguments are not persuasive of reversible error. Appellant does not dispute the Examiner’s finding that Yasui would have provided a reason to include phosphorus within the recited range to enhance corrosion resistance of an electroless nickel coating. While the Specification states that blackened electroless nickel coatings typically include 1–6% phosphorus, and that “[h]igher phosphorous content alloys are not suitable because they are too corrosion resistant to blacken,” Appellant does not point to evidence that one of ordinary skill in the art would have expected nickel coatings having a phosphorous concentration as low as 8% could not have been blackened.12 Appellant’s argument that “increasing the phosphorous content of a coating would be expected to result in less black 12 To the contrary, the Examiner finds JP 59-22786, which is referenced in Okumura (Okumura 1), teaches blackening electroless nickel coatings having 1–15% phosphorus, and provides a working example having 9% phosphorus. Ans. 6, 8. Appellant does not dispute that finding. See Reply Br. 11 (acknowledging JP 59-22786 discloses “coatings having a broad range of phosphorus contents that can be blackened”). Appeal 2020-004554 Application 14/414,821 6 coatings,” Appeal Br. 25, also is not persuasive. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Appellant argues there is no suggestion in Okumura to exclude sulfur from the plating bath. Appeal Br. 13, 19–21. However, both Okumura and Toshifumi teach use of sulfur-free alternatives for the nickel component in a plating bath. Okimura 2; Toshifumi ¶ 27. Although the Examiner does not point to an express teaching regarding the exclusion of sulfur, Appellant does not show error in the Examiner’s finding that use of the disclosed sulfur-free nickel salts would have provided a sulfur-free plating bath composition. Appellant argues Toshifumi teaches use of zinc in a plating bath for a purpose other than as a stabilizer and at a concentration that is not within the recited range. Appeal Br. 14. The Examiner’s rejection, however, relies on Satake and Harbulak as evidence of a reason to include zinc at a concentration within the recited range as a stabilizer. Final Act. 6–8. Appellant’s argument that, “although zinc may generally be known in the art as a stabilizer, there is nothing in the prior art that would suggest to use about 40 to about 100 ppm of zinc in baths without sulfur to prepare electroless nickel coatings having a phosphorus content of about 8% to about Appeal 2020-004554 Application 14/414,821 7 11% that can be blackened,” is unavailing. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). The test for obviousness is what the combined teachings of the references would have fairly suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant argues the Specification provides evidence to show the recited plating baths yielded unexpected improvement in metal turnover (MTO) relative to coatings prepared using commercially available plating processes. Appeal Br. 27 (citing Spec. ¶ 100, Example 3). According to the Specification, breakdown of organic sulfur compounds in a plating bath can result in byproducts which accumulate and limit the potential age of the bath to two metal turnovers. Spec. ¶ 39. In Example 3, “[t]he rate of deposition per metal turnover (MTO) of electroless nickel coatings formed using the sulfur-free electroless nickel plating bath was compared with the rate of deposition per metal turnover (MTO) using a commercially available electroless nickel plating bath. Spec. ¶ 100. Figure 3 of the Specification depicts the results of the above-noted comparison. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d Appeal 2020-004554 Application 14/414,821 8 1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied- upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Here, the evidence relied upon by Appellant is not persuasive of unexpected results. Neither of the tested plating bath compositions mentioned in Example 3 is disclosed. See Spec. ¶ 100. As such, it is not possible to assess whether the reported improvement in metal turnover would reasonably have been expected over the full range of each of the various components recited in claim 11. Nor is it possible to assess whether the relied-upon example compares the claimed invention with the closest prior art. For the foregoing reasons, Appellant’s arguments do not identify reversible error in the Examiner’s rejection of claim 11. The rejection of claims 11–13, 15, 16, and 18 is sustained. Appeal 2020-004554 Application 14/414,821 9 Rejection II: claims 20 and 54 Each of claims 20 and 54 recites a method similar to claim 11 and adds that the plating bath consists essentially of specified components, including ethylenediamine tetraacetic acid (EDTA). Relevant to Appellant’s arguments on appeal, the Examiner relies on the same prior art cited in rejecting claim 11, and further finds Toshifumi and Oyamada each disclose use of EDTA as a known complexing agent in an electroless nickel plating bath. Final Act. 16. Appellant presents the same arguments concerning both claims. Appeal Br. 32–34. Particularly, Appellant argues “the cited references only teach that black electroless coating can be formed when sulfur is present in the bath, which is excluded by the present claims, and/or when the phosphorus content in the coating is less than ~7 wt%.” Id. at 32–33. However, as discussed above in connection with claim 11, Okumura states any known electroless nickel-phosphorus plating solution may be used in the disclosed method for forming black nickel coatings, and Toshifumi teaches a known sulfur-free electroless nickel-phosphorus plating solution. Appellant’s contention that the cited references teach a necessity of either a sulfur component or a phosphorus content less than 7 wt% is not supported by a preponderance of the evidence. Appellant also argues Okumura teaches including a nitrogen compound which would have been additional to any EDTA provided as a complexing agent. Id. at 33. However, Appellant neither contends nor points to evidence to show that such a nitrogen compound would have been precluded by the transition phrase, “consisting essentially of,” in each of claims 20 and 54. Appeal 2020-004554 Application 14/414,821 10 Appellant traverses the Examiner’s reliance on Satake and Parker for their teaching of zinc as stabilizer in nickel plating baths because Satake teaches addition of composite ceramics and Parker teaches addition of metal particles to the disclosed nickel plating solutions, which, Appellant contends, are precluded by the transition phrase, “consisting essentially of,” because ceramics and metal particles would materially affect the basic and novel characteristics of the claimed invention. Id. at 34. Particularly, Appellant contends such materials would have been expected to make the baths less stable. Id. However, Appellant does not persuasively show that the purported effect on bath stability would materially affect the basic and novel characteristics of the claimed method of forming a black electroless nickel coating. Moreover, Appellant’s argument does not address the Examiner’s reliance on Harbulak for its teaching of use of zinc as stabilizer in an electroless nickel plating bath. See Final Act. 7 (“Harbulak further describes how for a nickel electroless plating solution with hypophosphite metals can be used as stabilizers, including bismuth and also zinc.”) (internal citations omitted); Harbulak 13:5–17. For the foregoing reasons, Appellant does not identify the Examiner’s rejection of claims 20 and 54. The rejection of claims 20 and 54 is sustained. Rejection III: claims 51 and 52 Appellant does not present separate argument regarding claim 51 or 52 apart from reliance on arguments presented with regard to parent claim 11. See Appeal Br. 34. Accordingly, the rejection of claims 51 and 52 is sustained for the same reasons set forth above with regard to claim 11. Appeal 2020-004554 Application 14/414,821 11 CONCLUSION The Examiner’s decision rejecting claims 11–13, 15, 16, 18, 20, 51, 52, and 54 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11–13, 15, 16, 18 103(a) Okumura, Toshifumi, Harbulak, Pinsler, Satake, Parker, Yasui, Mallory 11–13, 15, 16, 18 20, 54 103(a) Okumura, Toshifumi, Harbulak, Pinsler, Satake, Parker, Yasui, Mallory, Oyamada 20, 54 51, 52 103(a) Narcus 51, 52 Overall Outcome 11–13, 15, 16, 18, 20, 51, 52, 54 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 Copy with citationCopy as parenthetical citation