Coventya, Inc.

Patent Trials and Appeals Board

Dec 24, 2021

2020004554 (P.T.A.B. Dec. 24, 2021)

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

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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
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Application 14/414,821

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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”).
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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.
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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”).
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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
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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
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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.

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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.
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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.
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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