Ex Parte Crouse

Board of Patent Appeals and Interferences

Jul 15, 2009

11049828 (B.P.A.I. Jul. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KENNETH CROUSE
__________

Appeal 2009-003788
Application 11/049,828
Technology Center 1700
___________

Decided: 1July 15, 2009
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003788
Application 11/049,828

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-20 and 22-27. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
The subject matter on appeal is directed to a method of plating on a
non-conductive substrate. Claim 1 is reproduced below:
1. A method of plating on a non-conductive substrate, the
method comprising the steps of:
a) applying a catalytic ink to at least a portion of a
surface of the non-conductive substrate, wherein the catalytic
ink consists essentially of:
i) a solvent;
ii) a source of catalytic metal ions;
iii) a crosslinking agent;
iv) a copolymer; and
v) a polyurethane polymer;
b) reducing the source of catalytic metal ions to its
associated metal with a suitable reducing agent; and
c) plating metal on the catalytic ink applied to the
portion of the surface of the non-conductive substrate.

App. Br. 14, Claim Appendix.2
The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 3-10, 12-15, and 18-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rolker and Voss.
(2) Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rolker, Voss, and Chen.
(3) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rolker, Voss, and Savino.

2 Appeal Brief dated June 5, 2008.
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(4) Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rolker, Voss, and Miller.
(5) Claims 1-4, 6-10, 13, 15-20, and 22-27 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Brummett and
Goosey.
(6) Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Brummett, Goosey, and Voss.
(7) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brummett, Goosey, and Savino.
(8) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brummett, Goosey, and Rolker.
The Examiner relied on the following prior art as evidence of
unpatentability:
Rolker 3,900,320 Aug. 19, 1975
Voss 2002/0001709 A1 Jan. 3, 2002
Chen 6,461,678 B1 Oct. 8, 2002
Savino 4,794,147 Dec. 27, 1988
Miller 4,082,898 Apr. 4, 1978
Brummett 4,368,281 Jan. 11, 1983
Goosey 2002/0069788 A1 Jun. 13, 2002

ISSUES
(1) Has the Appellant identified reversible error in the Examiner’s
conclusion that the catalytic ink recited in claim 1 would have been obvious
to one of ordinary skill in the art in view of the combined teachings of
Rolker and Voss?
(2) Has the Appellant identified reversible error in the Examiner’s
finding that Rolker teaches the step of “reducing the source of catalytic
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Application 11/049,828

metal ions to its associated metal with a suitable reducing agent” as recited
in claim 1?
(3) Has the Appellant identified reversible error in the Examiner’s
conclusion that the copolymer recited in claim 12 would have been obvious
to one of ordinary skill in the art in view of the teachings of Rolker?
(4) Has the Appellant identified reversible error in the Examiner’s
finding that the palladium complex in the ink composition of Brummett is a
catalytic metal that is reduced to its associated metal in the disclosed
process?
PRINCIPLES OF LAW
The test for obviousness “is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” The
test is not that the claimed invention must be expressly suggested in any one
or all of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The disclosure in a prior art reference of compositions having a
multitude of effective ingredient combinations does not render any particular
formulation less obvious, particularly when the claimed composition is used
for the identical purpose taught by the prior art reference. Merck & Co., Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Determining whether a reference is from a nonanalogous art is
twofold. First, we decide if the reference is within the field of the inventor’s
endeavor. If it is not, we proceed to determine whether the reference is
reasonably pertinent to the particular problem with which the inventor was
involved. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
A factual finding not shown by an Appellant to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
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Application 11/049,828

ISSUES (1), (2), AND (3)
A. FINDINGS OF FACT
1. Rolker
Rolker discloses a method for treating a substrate to activate its
surface for electroless plating. Rolker 1:29-32.
According to the method, a catalytic solution having particular
viscosity characteristics is prepared. The solution comprises a binder
material such as one or more polymers and/or polymer formers, a compound
of catalytic metal, and at least one solvent. Rolker 3:8-13.
The solution is applied to a plastic or ceramic substrate and dried to
form a polymer layer. An electroless plating solution is subsequently
applied to the coated substrate. Rolker 3:13-21.
The binder can be any of the well known inorganic or organic
materials that can be dried and/or cured to form a film, such as certain
polymer forming materials. Examples include polyurethane resins,
polyacrylate resins, and polyvinyl resins, such as polyvinyl chloride. Rolker
5:25-67.
The Examiner found, and the Appellant does not dispute, that
hydroxylpropyl acrylate is a known polyacrylate resin forming material.
Ans. 6, 253; App. Br. 8.
Generally, the polymer former is used in its liquid state, when it is
somewhat polymerized but not fully cross-linked. Mixtures of polymers
and/or monomers, as well as copolymers, can be utilized. Rolker 6:1-6.
The compound of catalytic metal is a metal compound that is capable
of being reduced to its active metal constituent. Rolker 5:12-15.

3 Examiner’s Answer dated June 23, 2008.
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Reduction takes place either as a result of using moderate air drying
temperatures (e.g., 50°C.) or immediately upon contact with a reducing
component of the electroless plating bath. Rolker 3:34-37.
In one example, palladium acetate as the metal compound may be
dissolved in benzene and then added to a cyclohexanone solution of a
polyester bis(-phenylisocyanate) methane based polyurethane. Rolker 6:33-
36.
2. Voss
Voss discloses a primer for the electroless metallization of substrate
surfaces by chemical reduction comprising (a) a film or matrix former, (b)
an additive having a molecular mass of 500 to 20,000, (c) an ionic and/or
colloidal metal, (d) an organic and/or inorganic filler, (e) a hydrophilic
swelling material, and (f) organic solvents. Voss, paras. [0009]-[0016].
Preferably, the film or matrix former comprises a polyurethane. Voss,
para. [0018].
The film or matrix former may also comprise additives, such as
crosslinking catalysts. Voss, paras. [0023]-[0024].
Preferred activators are ionic and/or colloidal metals which may be
reduced with a reducing agent, and thus, permit metallization. Voss, para.
[0029].
The primer may be applied to a substrate surface in accordance with
customary methods, such as printing, stamping, dipping, brushing, knife-
coating, and spraying. Voss, para. [0036].
After application of the primer, the substrate is subsequently plated in
a metallizing bath. See, e.g., Voss, para. [0044].
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Suitable substrates include glass, plastic, and metallic surfaces. Voss,
para. [0038].
B. ANALYSIS
1. Issue (1)4
The Examiner found that Rolker does not disclose a specific
embodiment of the catalytic solution or ink that includes a polyurethane, a
copolymer, and a crosslinking agent. Ans. 6. Nonetheless, the Examiner
found that Voss:
teaches that it is well known to activate a non-conductive
substrate for plating by applying a catalytic primer “ink”
containing solvent, source of catalytic metal ions and polymer
materials. Paragraphs [0010] – [0017] and [0037] – [0038].
Voss teaches that the polymer materials can include
polyurethane and a cross linking agent or catalyst for the
polymer. Paragraphs [0017] and [0023] – [0024].

Ans. 7.
The Examiner concluded that the claimed subject matter would have
been obvious to one of ordinary skill in the art in view of the combined
teachings of Rolker and Voss. Ans. 7-8.
The Appellant argues that the combined teachings of Rolker and Voss
do not describe or suggest a catalytic ink formulation within the scope of
claim 1 for several reasons. First, the Appellant argues that Voss does not

4 We confine our discussion to claim 1, which contains claim limitations
representative of the arguments made by Appellant pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). The Appellant has not presented separate arguments for
rejections (2), (3), and (4). See App. Br. 8-9. Therefore, we have considered
these grounds of rejection based on the arguments advanced in support of
the patentability of claim 1.
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describe or suggest a composition consisting essentially of the ingredients
recited in claim 1. App. Br. 7.
It is of no moment that Voss may not describe or suggest a
composition within the scope of claim 1. Keller, 642 F.2d at 425. The
Examiner merely relied on Voss to show that it would have been obvious to
one of ordinary skill in the art to add a crosslinking agent to the catalytic ink
composition of Rolker. Ans. 22, 24.
The Appellant argues that Rolker teaches away from including the
additives of Voss, such as fillers, crosslinking agents, and hydrophilic
swelling agents, because these additives would increase the viscosity of the
disclosed composition above the desired value. App. Br. 6.
This argument is not persuasive of reversible error. We recognize that
Rolker is concerned about maintaining a particular viscosity. However, the
Appellant has failed to direct us to any evidence establishing that the
crosslinking agents disclosed in Voss would substantially change the
viscosity of the Rolker solution. In re Schulze, 346 F.2d 600, 602 (CCPA
1965) (“Argument in the brief does not take the place of evidence in the
record.”).
Moreover, the Examiner found:
. . . Rolker teaches to dissolve the materials in solvent and
indicates that this solvent is what is used to control the viscosity
(column 6, lines 20-25 and 40-45, as solvent is selected based
on the resulting viscosity requirements), and therefore, one of
ordinary skill in the art would simply control . . . the viscosity
of the resulting mixture, including the additional cross-linking
agent to get the desired viscosity range, by adjusting the solvent
used and the amount of solvent. There is no requirement as to
the specific individual viscosity of components, only of the
resulting solution that is actually to be applied.

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Ans. 22. The Appellant has failed to direct us to any error in these findings.
The Appellant also argues that Voss cannot be combined with Rolker
in the manner proposed by the Examiner because Voss and Rolker are
directed to different types of formulations and are attempting to solve
different problems. In particular, the Appellant argues that Voss is directed
to a primer composition that would not require a reducing step.5 App. Br. 7.
This argument is also not persuasive of reversible error. Voss
discloses a primer for metallizing substrate surfaces by chemical reduction.
Voss, para. [0010]. Voss expressly discloses that ionic and/or colloidal
metals in the primer may be reduced with a reducing agent. Voss, para.
[0029].
Furthermore, the Examiner found that the compositions of Rolker and
Voss have many of the same components and are used for the same purpose.
In particular, the Examiner found:
The “catalytic ink” of Rolker and the “primer” of Voss are both
applied liquid materials that form catalysts that activate surfaces
for electroless deposition (see paragraphs [0004], [0038],
[0044] of Voss, for example).

Ans. 22; see also Ans. 7 (Voss also discloses a composition containing
solvent, source of catalytic metal ions, and polymer materials); Ans. 23 (the
compositions of Voss and Rolker have “many overlapping materials”). The
Appellant has failed to direct us to any error in these findings.
Thus, although Rolker and Voss have chosen different terminology to
describe their compositions, it is reasonable to find that the two
compositions are from the same field of endeavor, i.e., electroless

5 The Appellant does not dispute that the invention of Rolker and the
Appellant’s invention are from analogous arts.
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deposition. Accordingly, we find that the teachings of Rolker and Voss may
be properly combined. Wood, 599 F.2d at 1036.
For the reasons set forth above, the Appellant has failed to identify
reversible error in the Examiner’s conclusion that the catalytic ink recited in
claim 1 would have been obvious to one of ordinary skill in the art in view
of the combined teachings of Rolker and Voss.
2. Issue (2)
The Appellant argues that claim 1 recites the step of “reducing the
source of catalytic metal ions to its associated metal with a suitable reducing
agent.” The Appellant argues that the Examiner has not shown that the
combination of Rolker and Voss describes or suggests this step. App. Br. 7.
The Examiner relies on Rolker to teach the reducing step recited in
claim 1.6 See Ans. 4, 24-25. In particular, Rolker discloses:
The compound of catalytic metal is a metal compound
that is capable of being reduced to its active metal constituent
so as to form catalytic metal bonding sites for a further metal
plating process.

Rolker 5:12-15. According to Rolker, reduction of the metal compound to
form nucleating sites can take place immediately upon contact with the
reducing agent in the electroless plating solution. Rolker 8:63-67.
The Examiner explains:
If appellant is arguing that a separate step of reducing with
reducing agent, where that step is followed by a later plating
step, is not shown, the Examiner notes that this is not required.
As worded, step b) and c) in claim 1 can be performed at the

6As discussed above, Voss discloses that the ionic and/or colloidal metals in
the primer may be reduced with a reducing agent. Voss, para. [0029]; see
also Ans. 23.

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same time and thus, the described reducing as part of the
electroless plating step in Rolker would give both the required
reducing and the required plating.

Ans. 25. The Appellant has failed to establish otherwise.
Thus, the Appellant has not identified reversible error in the
Examiner’s finding that Rolker teaches the step of “reducing the source of
catalytic metal ions to its associated metal with a suitable reducing agent” as
recited in claim 1.
3. Issue (3)
Claim 12 reads as follows:
The method according to claim 1, wherein the copolymer
comprises vinyl chloride and hydroxylpropyl acrylate.

App. Br. 15, Claim Appendix.
The Appellant does not point to any error in the Examiner’s finding
that Rolker discloses using copolymers of various polymer formers,
including polyacrylate resins and polyvinyl chloride. The Appellant also
does not dispute that hydroxylpropyl acrylate is a known polyacrylate resin
forming material. App. Br. 8.
Instead, the Appellant argues that Rolker describes a long list of
polymer formers and does not describe or suggest the particular combination
of polymers recited in claim 12. App. Br. 8.
We disagree. While Rolker may disclose a multitude of polymer
formers, this fact alone does not render any particular combination less
obvious. This is especially true where the Appellant’s claimed composition
is used for the same purpose taught by Rolker, i.e., a catalytic ink. Merck,
874 F.2d at 807.

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Application 11/049,828

ISSUE (4)
A. FINDINGS OF FACT
The Appellant’s Specification includes the following description of
Brummett:
U.S. Patent No. 4,368,281 to Brummett et al., the subject
matter of which is herein incorporated by reference in its
entirety, describe . . . an ink formulation comprising an
appropriate coordination complex of palladium. . . . However,
there is no suggestion that the catalytic ink formulation
described by Brummett et al. can be used for forming RF
antennae and circuitry for wireless articles.

Spec. 6:8-16 (emphasis added).
The Examiner found that Brummett discloses a catalytic ink
comprising a solvent, a source of catalytic metal ions, a crosslinking agent,
and a resin. Ans. 13.
The Examiner found that the source of catalytic metal ions is a
coordination complex of palladium. Ans. 13; Brummett 3:43-54.
The Examiner found that after the ink is applied to a substrate, the
source of catalytic metal ions is activated or reduced to its associated metal
with a suitable activating or reducing agent, such as hydrazine. Ans. 13;
Brummett 3:55-66, 6:3-43.
The Appellant uses hydrazine to reduce a source of catalytic metal
ions (i.e., palladium) to the associated metal. Spec. 11:13-17.

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B. ANALYSIS7
The Appellant argues that Brummett does not expressly disclose that
the palladium complex is a catalytic metal or that the palladium complex is
reduced to its associated metal. App. Br. 9-10.
The Appellant’s argument is not persuasive of reversible error. The
Examiner found:
Brummett provides a palladium complex that would clearly be
a source of catalytic metal ions (material iii [sic, material ii] . . .
of the independent claims), as Brummett provides that the
palladium complex contains palladium metal as a base (column
3, lines 40-50), providing palladium ions in the complex.

Ans. 28. The Appellant does not direct us to any error in these findings.8
Thus, based on the record before us, it is reasonable to find that the
palladium complex disclosed in Brummett is a catalytic metal.
To the extent that Brummett does not expressly disclose reducing the
palladium complex to its associated metal in the “activation” step (see
Brummett 5:25-27), Brummett discloses that an activator solution containing
hydrazine may be used to partially activate the ink. Brummett 6:3-43; see
also Ans. 29. According to the Appellant’s Specification, hydrazine reduces
a source of catalytic metal ions, such as palladium, to the associated metal.
Spec. 11:13-17.

7 We confine our discussion to claim 1, which contains claim limitations
representative of the arguments made by Appellant pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). The Appellant has not presented separate arguments for
rejections (6), (7), and (8). See App. Br. 10-11. Therefore, we have
considered these grounds of rejection based on the arguments advanced in
support of the patentability of claim 1.
8 Indeed, the Appellant identifies the formulation of Brummett as a “catalytic
ink formulation.” Spec. 6:8-16.
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The Examiner explains:
[T]he process described in Brummett appears to physically be
the same process as described as applicant (specification page
17, lines 13-20, where the source of catalytic metal ions is
reduced to associated metal using a reducing agent (. . .
“otherwise known as activation” . . .), and also provides the use
of hydrazine as reducing agent, as well). As the same process
steps provided by applicant are performed, one of ordinary skill
in the art would expect the same reducing results, even though
Brummett did not use the exact same terminology when
describing what happens when the reducing agent is contacted.

Ans. 29. The Appellant has failed to establish otherwise.
For the reasons set forth above, the Appellant has failed to identify
reversible error in the Examiner’s finding that the palladium complex in the
ink composition of Brummett is a catalytic metal that is reduced to its
associated metal in the disclosed process.
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

tc
ARTHUR G. SCHAIER
CARMODY & TORRANCE LLP
50 LEAVENWORTH STREET
P.O. BOX 1110
WATERBURY, CT 06721

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