Ex parte Boecker et al.

Board of Patent Appeals and Interferences

May 27, 1998

08042303 (B.P.A.I. May. 27, 1998)

Application for patent filed April 2, 1993.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JUERGEN BOECKER, MICHAEL BUTZ, ALFRED FREY,
PETRA HOFMEISTER and HANS SCHMIDT
________________
Appeal No. 95-3460
Application No. 08/042,3031
________________
ON BRIEF
________________
Before RONALD H. SMITH, SOFOCLEOUS and HANLON, Administrative
Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
17. Claim 18 stands withdrawn as being directed to a nonelected
invention.
The subject matter on appeal is directed to a process for
depositing metallic material onto a substrate.
The reference relied upon by the examiner is:
Appeal No. 95-3460
Application No. 08/042,303
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Sirinyan et al. (Sirinyan) 4,764,401 Aug. 16, 1988
Claims 1, 2, 4 to 6, 8, 14, 16 and 17 stand rejected under
35 U.S.C. 102(b) as being anticipated by Sirinyan.
Claims 3, 7, 9 to 13, and 15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sirinyan.
In their brief, appellants do not separately argue any of
their claims and thus the claims are considered to stand or fall
together as grouped. Independent claim 1 and dependent claim 3
are sufficiently representative of their groups and read as
follows:
1. A process for depositing metallic material onto a substrate
surface, comprising the steps of:
a.) providing an activator compound homogeneously
distributed in a solvent, the activator compound being
an ionogenic compound capable of releasing platinum
metal ions, the solvent including an organic or
inorganic acid;
b.) adding an anionic surfactant to the solution provided
in step a.), the anionic surfactant being a sulfonic
acid; and
c.) applying the solution provided in step b.) to said
surface, whereby catalytically active platinum metal is
deposited onto said surface.
3. The process according to claim 1, wherein said anionic
surfactant is n-alkylarylsulfonic acid.
After having reviewed the reference in light of the
arguments by the examiner and appellants, we find that we cannot
sustain these rejections.
Appeal No. 95-3460
Application No. 08/042,303
Sirinyan, column 2, lines 10 to 14 and 30 to 32, teaches2
the use of an organometallic compound of the group 8 of the
Period Systems of Elements with the organo portion selected from
sulphonic acid groups, sulphonic acid halide groups and sulphonic
acid ester groups.
-3-
Absent from Sirinyan is any teaching of a sulfonic acid
anionic surfactant as recited in claim 1. Thus, Sirinyan cannot
anticipate claims 1, 2, 4 to 6, 8, 14, 16 and 17, since Sirinyan
does not meet every element of the claimed invention. Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379, 231
USPQ 81, 90 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).
Moreover, as argued by appellants, Sirinyan requires a chemical
reaction between the activator compound and the sulfonic acid
surfactant, whereas appellants' process does not.
With respect to claim 3, we do not agree with the
examiner that one skilled in the art would have found it obvious
to use n-alkylarylsulfonic acid, as recited in claim 3, in lieu
of the organometallic compounds disclosed in Sirinyan. The
examiner has the burden to show the equivalence of the
organometallic compound containing sulfonic acid groups with 2
n-alkylarylsulfonic acid in the electroless metallization process
Appeal No. 95-3460
Application No. 08/042,303
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of Sirinyan. On this record, we can only conclude that it would
not have been obvious to substitute n-alkylarylsulfonic acid for
the recited organometallic compounds of Sirinyan.
For the foregoing reasons, the examiner’s rejections are
reversed.
REVERSED
RONALD H. SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL SOFOCLEOUS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
Appeal No. 95-3460
Application No. 08/042,303
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Bernard Tiegerman
IBM Corp.
Intellectual Property Law N50/251-2
1701 North St.
Endicott, NY 13760