Ex Parte Couble

Board of Patent Appeals and Interferences

Sep 30, 2002

08868092 (B.P.A.I. Sep. 30, 2002)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWARD C. COUBLE, MARK J. KAPECKAS, STEVEN M. FLORIO,
and DAVID L. JACQUES
____________
Appeal No. 2000-1835
Application No. 08/868,092
____________
ON BRIEF
____________
Before OWENS, KRATZ and DELMENDO, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 13-23, which are all of the claims pending in
this application.
BACKGROUND
Appellants' invention relates to a process for
electroplating the walls of holes in a printed circuit board.
Appellants state that “[t]he rejected claims do not stand or fall
together” (brief, page 5). Accordingly, we shall treat the
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Application No. 08/868,092
Page 2
appealed claims separately to the extent justified by appellants’
arguments in the brief. An understanding of the invention can be
derived from a reading of exemplary claim 13, which is reproduced
below.
13. A process for metallizing the walls of holes within a
printed circuit board substrate having metallic and non-metallic
regions, said process comprising the steps of treating the
printed circuit board substrate with a single aqueous acid
solution containing a hydroxyl ammonium reducing agent and an
amine polyelectrolyte, contacting the so treated surface with an
aqueous dispersion of carbonaceous particles to form a coating of
said dispersion over all surfaces of said substrate and
electroplating metal on said substrate from an electrolytic metal
plating solution.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Growald et al. (Growald) 3,674,711 Jul. 04, 1972
Doty et al. (Doty) 3,962,497 Jun. 08, 1976
Hou et al. (Hou) 4,309,247 Jan. 05, 1982
Pendleton 5,015,339 May 14, 1991
Toro 5,143,592 Sep. 01, 1992
Florio et al. (Florio) 5,683,565 Nov. 04, 1997
(filed May 23, 1996)
Claims 13-16 and 20-23 stand rejected under 35 U.S.C. § 103
as being unpatentable over Pendleton in view of Doty, Growald and
Florio. Claims 17-19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Pendleton in view of Hou and Toro.
Appeal No. 2000-1835
Application No. 08/868,092
Page 3
We refer to the brief and to the answer for the opposing
viewpoints expressed by appellants and by the examiner concerning
the above-noted rejections.
OPINION
We have carefully considered all of the arguments advanced
by appellants and the examiner and agree with appellants that the
aforementioned § 103 rejections as they pertain to claims 14-17,
19 and 22 are not well founded. However, appellants have not
convinced us of any reversible error in the examiner’s § 103
rejections as they pertain to claims 13, 18, 20, 21 and 23.
Accordingly, unlike the other appealed claims, we shall sustain
the examiner’s rejections as they pertain to claims 13, 18, 20,
21 and 23.
§ 103 Rejection Over Pendleton, Doty, Growald and Florio
Starting with independent claims 13 and 21, we note that
Pendleton discloses a process for electroplating a printed wiring
(circuit) board substrate that substantially corresponds to the
process of appealed claims 13 and 21. Pendleton teaches that,
inter alia, a solution containing a polyelectrolyte and a
reducing agent is used to treat the substrate, which is followed
by contacting the so treated substrate with a liquid dispersion
of carbon black particles to coat the surfaces of the substrate.
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Application No. 08/868,092
Page 4
Subsequently metal is electroplated on the substrate. See, for
example, the abstract and column 6, lines 25-58 of Pendleton.
Pendleton (column 6, lines 59-62) further discloses that the
method is particularly useful for electroplating nonconductive
portions of through hole walls of printed wiring boards.
Pendleton (column 7, lines 6-10 and the paragraph bridging
columns 9 and 10) teaches that water may be used in forming the
solution containing a polyelectrolyte and a reducing agent and
that water may be used as a liquid dispersing medium for the
carbon black dispersion; hence suggesting the claimed requirement
for an aqueous solution and an aqueous dispersion. Pendleton
describes hydroxylamine sulfate as a preferred acidic reducing
agent, cationic polyamine homopolymer resins as a preferred
polyelectrolyte and hydrochloric acid as a pH adjustor for use in
the treating solution. See column 9, lines 16-56 of Pendleton.
Moreover, we note that Pendleton (column 19, l6 line 68 through
column 20, line 26) teaches that less defects are obtained by
using their method.
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Application No. 08/868,092
Page 5
1 See the definition of hydroxylamine sulfate at page 460 of
Hawley, The Condensed Chemical Dictionary, 8th Ed. (1975). A
copy is attached to this decision.
As such, appellants principal argument with respect to the
subject matter found in claims 13 and 21 is that “. . . Pendleton
does not suggest the use of a hydroxyl ammonium compound as a
reducing agent generally . . .” (brief, page 6).
However, as explained above, Pendleton does teach that
hydroxylamine sulfate may be employed as a reducing agent.
Hydroxylamine sulfate1 can be defined as a hydroxyl ammonium
sulfate, which is a hydroxyl ammonium compound. Consequently, we
agree with the examiner’s obviousness conclusion with respect to
claims 13 and 21.
Regarding dependent claims 20 and 23, we note that Florio
discloses that carbon black and graphite may each be used alone
or together as carbonaceous particles as a coating material prior
to electroplating. See column 5, line 40 through column 6, line
21 and column 9, lines 39-41 of Florio. Consequently, we agree
with the examiner’s determination that it would have been obvious
for one of ordinary skill in the art to employ graphite in
addition to or in place of carbon black as the carbonaceous
material used in the coating dispersion of Pendleton with the
reasonable expectation of obtaining similar results. See answer,
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Application No. 08/868,092
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paragraph bridging pages 6 and 7. Appellants’ contentions to the
contrary (brief, page 8) are not persuasive since both Pendleton
and Florio employ the carbonaceous material as a coating prior to
electroplating and after preparing the substrate surfaces for the
carbonaceous coating.
Accordingly, we shall sustain the examiner’s § 103 rejection
of claims 13, 20, 21 and 23.
Our disposition of the examiner’s § 103 rejection of
dependent claims 14-16 is another matter. Claims 14 and 15
require particular pH conditions for the acid aqueous solution
and claims 16 and 22 require hydroxyl ammonium nitrate as a
reducing agent. The examiner’s predicate for the § 103 rejection
of claims 14 and 15 is that “it appears that pH is a result
effective variable” (answer, page 6). Such a supposition does
not take the place of evidence. While we recognize, as discussed
above, that Pendleton may use an acid to adjust pH, the examiner
has not established where Pendleton together with the other
applied references would have suggested the particularly claimed
pH values for the treating solution of Pendleton. With regard to
claims 16 and 22, we note that the examiner relies on Growald to
suggest the use of a hydroxyl ammonium nitrate salt as the
reducing agent in Pendleton, specifically referring to column 3,
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Application No. 08/868,092
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lines 30 and 31 thereof at page 5 of the answer. However, the
examiner has not fairly explained how the teachings of Growald
with respect to a nitrate anion for a compound used to form
electroconductive polymer for an electrically conductive plastic
sheet would have suggested a hydroxyl ammonium nitrate salt as a
reducing agent in Pendleton.
Consequently, we shall reverse the examiner’s § 103
rejection of claims 14-16 and 22.
§ 103 Rejection Over Pendleton, Hou and Toro
Regarding dependent claim 18, the examiner relies on Toro in
addition to Pendleton to suggest the use of sulfonic acid as the
pH adjustor to be used in Pendleton. According to the examiner
(answer, page 8), one of ordinary skill in the art would have
been led to select sulfonic acid as an alternative to the
hydrochloric acid mentioned by Pendleton for adjusting pH of the
solution. This is so since Toro teaches that both of those acids
are alternatives and each are useful in combination with reducing
agents in treating substrates prior to treating with a
carbonaceous dispersion. Appellants’ arguments (brief, page 9)
are directed to Toro, as if applied alone by the examiner,
whereas the examiner relies on the combined teachings of
Pendleton and Toro. It follows that such arguments by counsel
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Application No. 08/868,092
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are not persuasive. Accordingly, we shall sustain the examiner’s
§ 103 rejection of claim 18.
However, with respect to dependent claims 17 and 19, we side
with appellants. With respect to claim 17, the examiner
additionally relies on Hou to suggest the use of a polyquaternary
amine in Pendleton. Here, the examiner (answer, page 8)
predicates the rejection on the assumption that Pendleton would
not appear to require a particular polyelectrolyte polymer and
that Hou teaches a quaternary ammonium group. However, Hou is
concerned with forming a filter sheet from cellulose fibers
and uses the polyelectrolytes suggested therein as a charge
modifier for such a sheet. The examiner has not reasonably
explained why one of ordinary skill in the art would have been
led to modify the polyelectrolyte used in pretreating a surface
prior to carbonaceous material deposition and electroplating as
discussed in Pendleton based on the teachings of Hou with respect
to a charge modifier for a filter sheet.
With respect to dependent claim 19, the examiner (answer,
page 9) argues that adding a surfactant to the treating solution
of Pendleton would have been obvious without the citation of any
evidence to substantiate that position. Of course, it is the
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Application No. 08/868,092
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examiner who has the burden to produce such evidence in
presenting a sustainable rejection.
Thus, we shall reverse the examiner’s § 103 rejection of
claims 17 and 19.
CONCLUSION
The decision of the examiner to reject claims 13, 20, 21 and
23 under 35 U.S.C. § 103 as being unpatentable over Pendleton in
view of Doty, Growald and Florio and to reject claim 18 under
35 U.S.C. § 103 as being unpatentable over Pendleton in view of
Hou and Toro is affirmed.
The decision of the examiner to reject claims 14-16 and 22
under 35 U.S.C. § 103 as being unpatentable over Pendleton in
view of Doty, Growald and Florio and to reject claims 17 and 19
under 35 U.S.C. § 103 as being unpatentable over Pendleton in
view of Hou and Toro is reversed.
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Application No. 08/868,092
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
PFK:pgg
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Application No. 08/868,092
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