Ex Parte Gioria

Board of Patent Appeals and Interferences

Aug 22, 2002

09069442 (B.P.A.I. Aug. 22, 2002)

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written for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEAN-MICHEL GIORIA
_____________
Appeal No. 2001-0964
Application No. 09/069,442
______________
ON BRIEF
_______________
Before GARRIS, WARREN, and LIEBERMAN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-17 and 19-21. The only other claim in the application,
which is claim 18, has been allowed.
The subject matter on appeal relates to an electroplating
bath and to an electrodeposit (i.e., resulting from use of the
electroplating bath) wherein the bath and the electrodeposit are
free of cobalt, cadmium and nickel ions. This appealed subject
matter is adequately illustrated by independent claims 1 and
4 which read as follows:
Appeal No. 2001-0964
Application No. 09/069,442
2
1. An electrodeposit which contains about 1.25 to
about 1.55% w/w iron, about 1 to 2 ppm zirconium, and about
97.7 to 98.7 [sic, %] gold, wherein the electrodeposit has a
pale yellow colour less than about 3N on the NIHS 03-50
scale, wherein the electrodeposit is free of cobalt, cadmium
and nickel ions.
4. An electroplating bath comprising a cyanide-
containing gold compound, an iron compound selected from the
group consisting of a soluble salt, a complex and mixtures
thereof, a zirconium compound selected from the group
consisting of a soluble salt, a complex and mixtures
thereof, a citrate, a weak acid, and optionally a
heterocyclic sulphonate, wherein the bath is free of cobalt,
cadmium and nickel ions.
The references set forth below are relied upon by the
examiner in the Section 102 and Section 103 rejections before us:
Korbelak et al. (Korbelak) 4,075,065 Feb. 21, 1978
Hendriks et al. (Hendriks) 5,169,514 Dec. 8, 1992
Moon 5,552,031 Sep. 3, 1996
Claims 4, 7, 9, 13, 14, 20 and 21 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Korbelak.
Claims 5, 6 and 8 stand rejected 35 U.S.C. § 102(b) as being
anticipated by, or alternatively under 35 U.S.C. § 103(a) as
being obvious over, Korbelak.
Claims 1-3, 10 and 15 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Korbelak.
Claims 11, 12 and 19 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Korbelak in view of Moon.
Appeal No. 2001-0964
Application No. 09/069,442
3
Finally, claims 16 and 17 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Korbelak in view of Hendriks.
As indicated on pages 3-5 of the brief, the appealed claims
have been grouped separately. Accordingly, in assessing the
merits of the above noted rejections, we have individually
considered each of the appealed claims which have been separately
grouped and argued in the brief and reply brief. See 37 CFR
§ 1.192(c)(7)(8)(1999).
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by the
appellant and by the examiner concerning the rejections before
us.
OPINION
We cannot sustain any of the examiner’s Section 102
rejections. Additionally, we cannot sustain the examiner’s
Section 103 rejection of claim 19 based on Korbelak in view of
Moon. However, we will sustain each of the other Section 103
rejections advanced by the examiner on this appeal. In addition,
pursuant to 37 CFR § 1.196(b), we make a new rejection below of
certain claims under 35 U.S.C. § 103(a). Our reasons follow.
Appeal No. 2001-0964
Application No. 09/069,442
4
The Section 102 Rejections
It is well settled that anticipation under 35 U.S.C. § 102
is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir), cert. dismissed, 468 U.S. 1228 (1984). In particular, for
a Section 102 rejection to be proper, the prior art reference
“must clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited
reference”; In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524, 526
(CCPA 1972).
Korbelak discloses an electroplating bath comprising five
components plus water and discloses numerous effective compounds
for each of these components. As correctly indicated by the
examiner, each of the compounds required by appealed independent
claim 4 are among the many taught by patentee as possible
ingredients in his electroplating bath. However, as correctly
argued by the appellant, the Korbelak reference contains no
disclosure that the bath should be free of cobalt, cadmium and
Appeal No. 2001-0964
Application No. 09/069,442
5
nickel ions as required by the claim under review. To the
contrary, patentee explicitly discloses cobalt, nickel and
cadmium as among the many metals, including the here claimed
iron, which are listed for use as a hardener in his
electroplating bath (e.g., see lines 42-55 in column 2).
On page 10 of the answer, the examiner responds to the
appellant’s above noted argument with the following rebuttal:
Korbelak et al. on col. 2, lines 42-55 merely disclose a
laundry list of additives which may or may not be added to
the electroplating bath. Korbelak et al. do nothing to
specify which of said metals indicated in col. 2, lines 42-
55 are most desirable and it is therefore left to one of
ordinary skill in the art to determine which of said metals
to use in an electroplating bath.
The examiner’s rebuttal is not persuasive of his
anticipation finding. There is simply nothing in the Korbelak
reference, including the examples, which “clearly and
unequivocally” discloses the here claimed bath or directs those
skilled in the art to the here claimed bath “without any need for
picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”
In re Arkley, 455 F.2d at 587-88, 172 USPQ at 526. Instead, the
here claimed bath is obtained only by picking, choosing and
combining selected compounds from among the many disclosed by
Korbelak.
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Application No. 09/069,442
6
For example, a zirconium compound must be selected from many
other compounds as the second component of patentee’s bath and
combined with an iron compound which itself must be selected from
the many other compounds listed as patentee’s fifth component
while simultaneously avoiding use of the cobalt, nickel and
cadmium compounds which are also taught by patentee as effective
ingredients for use as his fifth component. This is improper
under 35 U.S.C. § 102. Id. Indeed, as aptly stated by the
examiner in the aforenoted quotation from page 10 of the answer,
“it is . . . left to one of ordinary skill in the art to
determine which of said metals [disclosed by Korbelak] to use in
an electroplating bath.” Such a determination relates to
obviousness under Section 103 rather than anticipation under
Section 102.
In light of the foregoing, it is apparent that the
examiner’s finding of anticipation is improper. We cannot
sustain, therefore, the examiner’s Section 102 rejection of
independent claim 4 or of claims 7, 9, 13, 14, 20 and 21 (which
depend from claim 4) as being anticipated by Korbelak. Likewise,
we cannot sustain the examiner’s alternative Section 102
rejection of claims 5, 6 and 8 (which depend from claim 4) as
being anticipated by Korbelak.
Appeal No. 2001-0964
Application No. 09/069,442
7
The Section 103 Rejections
Concerning the Section 103 rejection of appealed independent
claim 1, we agree with the examiner’s conclusion that it would
have been obvious for an artisan with ordinary skill to formulate
an electroplating bath and thereby obtain an electrodeposit which
contain ingredients such as the here claimed iron, zirconium and
gold and which are free of cobalt, cadmium and nickel ions. This
is because Korbelak expressly teaches formulating an
electroplating bath (and consequently an electrodeposit) from a
listing of ingredients which includes iron, zirconium and gold
(as well as a citrate, and a weak acid; compare appealed
independent claim 4) as fully explained in the answer. Although
Korbelak discloses a large number of possible ingredient
formulations for his electroplating bath and does not highlight
the particular formulation here claimed, an obviousness
conclusion is appropriate because each of the formulations
embraced by patentee’s broad disclosure are generically taught as
being effective and because Section 103 does not require that the
here claimed formulation be taught by the prior art as preferred.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807-08,
10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
Appeal No. 2001-0964
Application No. 09/069,442
8
In support of his opposing view, the appellant argues that,
“of all the examplary [sic] electroplating solutions disclosed by
Korbelak . . . , eleven (11) of the seventeen (17), or 65%,
contain either cobalt or nickel” and that “[t]herefore, one of
ordinary skill in the art would not look to Korbelak . . . for
guidance on producing an electroplating bath which is free of
cobalt, nickel and cadmium” (brief, page 8). While the
appellant’s finding regarding the examples of Korbelak may be
correct, it does not support the subsequent conclusion that one
“would . . . not look to Korbelak . . . for guidance on producing
an electroplating bath which is free of cobalt, nickel and
cadmium.” On the contrary, by the appellant’s implicit
concession, six of patentee’s exemplary electroplating solutions
do not contain cobalt, nickel or cadmium. This fact would have
suggested a formulation free of these ingredients and would have
led an artisan to reasonably expect such a formulation to be
successful. See In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1680-81 (Fed. Cir. 1988)(for obviousness under Section 103,
all that is required is a reasonable expectation of success).
The appellant’s other arguments concerning the Section 103
rejections based on Korbelak alone are unpersuasive for the
reasons expressed by the examiner in the answer.
Appeal No. 2001-0964
Application No. 09/069,442
9
In particular, we fully agree with the examiner’s basic
position that the pale yellow color range for the here claimed
electrodeposit, which is based on the NIHS 03-50 scale, is
indistinguishable from the yellow to white color range disclosed
by patentee (e.g., see lines 42-45 in column 3), which is not
described in terms of the aforementioned NIHS 03-50 scale. Under
these circumstances, it is appropriate to require the appellant
to prove that Korbelak’s electrodeposit does not actually possess
the same color characteristic as the here claimed electrodeposit,
and the fairness of so allocating this burden of proof is evinced
by the inability of the Patent and Trademark Office to
manufacture products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433-34 (CCPA
1977). On the record before us, the appellant has proffered no
such proof.
Similarly, we share the examiner’s conclusion that it would
have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for the here claimed parameters,
such as ingredient concentration, since these parameters are
evinced by Korbelak to be known in the prior art as result-
effective variables. In re Woodruff, 919 F.2d 1575, 1578,
Appeal No. 2001-0964
Application No. 09/069,442
1It is appropriate to here clarify that we sustain the
examiner’s Section 103 rejection of dependent claims 5, 6 and
8 (as well as dependent claims 10 and 15) based upon an
obviousness conclusion rather than an anticipation finding with
respect to the subject matter of parent independent claim 4.
10
16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955).
For these reasons and those expressed in the answer, we will
sustain the Section 103 rejection of claims 1-3, 10 and 15 as
being obvious over Korbelak as well as the alternative Section
103 rejection of claims 5, 6 and 8 as being obvious over
Korbelak.1
Concerning the Section 103 rejection based on Korbelak in
view of Moon, we again share the examiner’s obviousness
conclusion, namely, that it would have been obvious to provide
the electroplating bath formulations of Korbelak with diammonium
hydrogen citrate to obtain the conductive salt function thereof
in accordance with the teachings of Moon. Contrary to the
appellant’s belief, this obviousness conclusion is not
forestalled simply because Moon’s electroplating bath includes
palladium as well as gold. This is because the enhancements
achieved by Moon’s conductive salts would have been desirable in
Appeal No. 2001-0964
Application No. 09/069,442
11
the context of Korbelak’s electrodeposits. Therefore, we will
sustain the examiner’s Section 103 rejection of claims 11 and
12 as being obvious over Korbelak in view of Moon.
However, the corresponding Section 103 rejection of claim
19 as being obvious over Korbelak in view of Moon cannot be
sustained. This is because neither Korbelak nor Moon contains
any teaching or suggestion concerning the ammonium zirconium
citrate complex which is required by claim 19. Concerning this
issue, it is the examiner’s position that, “[a]lthough Moon does
not specifically disclose an ammonium zirconium citrate complex,
Moon does disclose that said conductive salts may be mixed (col.
4 [sic, 3], line 44) which would result in a complex depending on
the specific admixture” (answer, page 8). The examiner’s
aforequoted position is not well taken since it is plainly based
on conjecture, speculation or assumption, and it is well settled
that a Section 103 rejection must rest on a factual basis rather
than conjecture, speculation or assumption. In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968), reh’g denied, 390 U.S. 1000 (1968).
Finally, we also will sustain the examiner’s Section 103
rejection of claims 16 and 17 as being obvious over Korbelak in
view of Hendriks. The appellant’s arguments against this
Appeal No. 2001-0964
Application No. 09/069,442
2For clarity of exposition and completeness, we have applied
this new rejection against claim 4 and all claims depending
therefrom which were rejected by the examiner based on Korbelak
alone.
12
rejection are unpersuasive for the reasons expressed in the
answer. These arguments are additionally unpersuasive because
the specific heterocyclic sulfonates and concentrations thereof,
which are recited in these dependent claims, are optional by the
express language of parent independent claim 4. That is, these
claims simply define specific compounds and concentrations for
the optional heterocyclic sulfonate of the parent claim if the
sulfonate is present but do not actually require the sulfonate to
be present. Viewed from this perspective, it is apparent that
claims 16 and 17 merely describe subject matter which is optional
and therefore fail to patentably distinguish over Korbelak alone
in terms of 35 U.S.C. § 103(a).
The rejection pursuant to 37 CFR § 1.196(b)
We make the following rejection in accordance with our
authority under 37 CFR § 1.196(b).
Claims 4-10, 13-15, 20 and 21 are rejected under 35 U.S.C.
§ 103(a) as being obvious over Korbelak.2
As previously explained, the Korbelak reference, though not
anticipatory, unquestionably teaches ingredients for an
Appeal No. 2001-0964
Application No. 09/069,442
13
electroplating bath which include the ingredients required by the
here rejected claims. Thus, it would have been obvious for one
with ordinary skill in the art to select from Korbelak’s
ingredient-lists the specific ingredients under consideration
based upon patentee’s teaching that such ingredients are
effective in his desired electroplating bath formulations.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d at 807-08,
10 USPQ2d at 1846.
These specific ingredients include: a cyanide-containing
gold compound such as potassium gold cyanide as Korbelak’s first
component (e.g., see lines 50-54 in column 1); an iron compound
such as iron sulfate as patentee’s fifth component (e.g., see
lines 42-55 in column 2); a zirconium compound such as zirconium
sulfate as his second component (e.g., see line 57 in column 1,
lines 3-14 in column 2 and Table II in column 6); a citrate
compound such as a metal citrate as patentee’s fourth component
(e.g., see lines 29-41 in column 2) or as patentee’s fifth
component (again see lines 42-55 in column 2); and a weak acid
such as citric, malic, lactic, glycolic or tartaric acid as
patentee’s third component (e.g., see lines 19-28 in column 2).
Appeal No. 2001-0964
Application No. 09/069,442
14
Moreover, the concentration ranges taught by Korbelak for these
ingredients encompass, and thus either expressly disclose or at
least would have suggested, concentration values of the type here
claimed.
Finally, for a number of reasons, the artisan in formulating
the above discussed electroplating bath would not have used the
cobalt, nickel or cadmium compounds which patentee includes
(along with iron compounds) as possible ingredients for his fifth
component. First of all, the Korbelak reference contains no
teaching that cobalt, nickel or cadmium compounds are required in
order to formulate an effective electroplating bath. Secondly,
patentee expressly discloses several effective bath formulations
which do not include cobalt, nickel or cadmium compounds (e.g.,
see solutions E, G, H, I, J and M in columns 4-6). This last
mentioned disclosure would have led the artisan to reasonably
expect success in formulating an electroplating bath which is
free of cobalt, cadmium and nickel ions as required by the claims
under consideration. In re O’Farrell, 853 F.2d at 903-04, 7
USPQ2d at 1681.
Appeal No. 2001-0964
Application No. 09/069,442
15
Summary
For the reasons set forth above, we have not sustained the
examiner’s Section 102 rejections of claims 4-9, 13, 14, 20 and
21 as being anticipated by Korbelak or his section 103 rejection
of claim 19 as being obvious over Korbelak in view of Moon.
However, we have sustained the examiner’s Section 103 rejections
of claims 1-3, 5, 6, 8, 10-12 and 15-17 based on Korbelak alone
or in view of Moon or Hendriks. In addition, we have made a new
Section 103 rejection of claims 4-10, 13-15, 20 and 21 as being
obvious over Korbelak alone.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that
“[a] new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellants may file a single request for
rehearing within two months from the date of
the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
Appeal No. 2001-0964
Application No. 09/069,442
16
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application
will be remanded to the examiner . . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record . . . .
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.

Appeal No. 2001-0964
Application No. 09/069,442
17
The decision of the examiner is affirmed in part.
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; 37 CFR § 1.196(b)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
BRG:hh
Appeal No. 2001-0964
Application No. 09/069,442
18
PHILIP R. WARN, ESQ.
WARN IP LAW OFFICE
P.O. BOX 70098
ROCHESTER HILLS, MI 48307