Ex Parte Gong et al

Patent Trial and Appeal Board

Feb 23, 2016

13103859 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/103,859 05/09/2011 QingGong
22852 7590 02/25/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11245.0079-01000 1095
EXAMINER
LAW, NGA LEUNG V
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QING GONG, LIANG ZHOU,
WEIFENG MIAO, and XIONG ZHANG
Appeal2014-005414
Application 13/103,859
Technology Center 1700
Before TERRY J. OWENS, BEYERL YA. FRANKLIN and A VEL YN M.
ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10 and 12-13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our opinion below, we refer to the Final Office Action appealed from,
filed July 12, 2013 (Final), the Appeal brief filed November 11, 2012
(Appeal Br.), the Examiner's Answer filed January 1, 2014 (Ans.) and the
Reply Brief filed March 28, 2014 (Reply Br.).
2 Appellants identify the real party in interest as BYD Company Limited.
Appeal2014-005414
Application 13/103,859
STATEMENT OF CASE
The claims are directed to a surface metallization method for plastic
articles. Spec. i-f2. Claim 1 is illustrative of the claimed subject matter and,
is reproduced below with relevant claim language emphasized:
1. A method of metalizing a plastic substrate comprising:
providing a plastic substrate having a plastic and a
plurality of accelerators dispersed in the plastic, the accelerators
having a formula AB03, wherein A is one or more elements
selected from Groups 9, 10, 11 of the Periodic Table of Elements
and optionally one or more elements selected from Groups 1 and
2, and the lanthanide series of the Periodic Table of Elements, B
is one or more elements selected from Groups 4 B and 5B of the
Periodic Table of Elements, and 0 is oxygen;
irradiating a surface of the plastic substrate to expose at
least a first accelerator without reducing the accelerators to pure
metals;
plating the irradiated surface of the plastic substrate to
form at least a first metal layer on the at least first accelerator;
and
plating the first metal layer to form at least a second metal
layer.
Claims Appendix at Appeal Br. 15 (emphasis added).
REJECTIONS
The Examiner made the following rejections:
A. Claims 1-8, 10, and 12-13 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Li et al.,3 in view of
Belouet et al. 4 Final 2---6.
3 Li et al., US 2009/0292051 Al, published November 26, 2009 (hereinafter
"Li").
4 Belouet et al., US 6,743,345 B2, issued June 1, 2004 (hereinafter
"Belouet").
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Application 13/103,859
B. Claim 9 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Li in view of Belouet (as applied to
claims 1-8, 10, and 12-13 above) and further in view of
Laude.5 Id. at 6-7.
C. Claims 1-13 stand provisionally rejected under 35 U.S.C
§ 101 as claiming the same invention as claims 1-13 of
copending Application No. 13350161. Id. at 7.
D. Claims 1 and 5-13 stand provisionally rejected under
35 U.S.C §101 as claiming the same invention as claims
1-13 of copending Application No. 12842407. Id. at 8.
OPINION
Obviousness Rejections
The Examiner rejects claims 1-8, 10, and 12-13 as obvious in light of
Li in combination with Belouet and claim 9 as obvious in light of Li,
Belouet, and Laude. Final 2-7. Appellants raise three arguments in
opposition to the Examiner's finding of obviousness; in particular; that: (1)
Li does not disclose the claimed "accelerator" (Appeal Br. 8-1 O); (2) the
combination of Li and Belouet is based on hindsight reasoning (Id. at 10-
11 ); and (3) the combination does not disclose the step of "irradiating a
surface of the plastic substrate to expose at least a first accelerator ... " (Id. at
11-12). The substance of each argument is directed to whether there is
reason to combine the teachings of Li and Belouet to create the claimed
combination.
The issue on appeal is whether the Examiner reversibly erred in
finding the step of "irradiating a surface of the plastic substrate to expose at
5 Laude, US 5,599,592, issued February 24, 1997 (hereinafter "Laude").
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Application 13/103,859
least a first accelerator ... " is present in the combination of Li and Belouet.
We find the Examiner did commit reversible error.
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains."' KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). While KSR explains that an obviousness "analysis need not seek out
precise [prior art] teachings," it nonetheless does not dispense with the need
to determine whether a person of ordinary skill in the art would have had "an
apparent reason to combine the known elements in the fashion claimed." Id.
at 418. "[M]ere identification in the prior art of each element is insufficient
to defeat the patentability of the combined subject matter as a whole." In re
Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006). "Rather, to establish a prima facie
case of obviousness based on a combination of elements disclosed in the
prior art, the [Examiner] must articulate the basis on which it concludes that
it would have been obvious to make the claimed invention." Id.; see also In
re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).
Rejections based on§ 103(a) must rest on a factual basis without
resort to hindsight reconstruction of the invention from the prior art. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Improper use of hindsight is
inferred when the specific understanding or principal within the knowledge
of one of ordinary skill in the art leading to the modification of the prior art
to arrive at appellant's claimed invention has not been explained. In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).
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Appeal2014-005414
Application 13/103,859
Regarding claim 1, the Examiner determines that Li meets all the
claim limitations with the exception of "irradiating a surface of the plastic
substrate to expose at least a first accelerator ... " and where the first
accelerator is not reduced to pure metal. Final 3. With respect to the first
exception, the Examiner looks to Belouet to supply the missing step. The
examiner notes that Belouet discloses
a method of metallizing a substrate comprising a polymer matrix
doped with photoreducer material dielectric particles, irradiating
the surface to be metallized of the substrate part with a laser and
immersing the irradiated part in an autocatalytic bath (plating)
containing metal ions, with deposition of the latter in a layer on
the irradiated surface (abstract) and discloses the dielectric
particles, including Ce02 and Ti02, is exposed (column 3 lines
30-33).
Id. Therefore, continues the Examiner, because Li teaches Ce02 and Ti02
along with CaCu3 Ti4012 as "equivalent ceramic filler[ s ]" by extension,
CaCu3 Ti4012 of Li "is also exposed after the laser irradiation as evidenced
by Belouet .... " Id.
We are not persuaded by the Examiner's argument. Neither Li nor
Belouet expressly teach that CaCu3 Ti4012 is exposed after laser irradiation.
Rather, the Examiner infers that the ceramic filler CaCu3 Ti4012 of Li would
behave in a similar manner as the disclosed photoreducers of Belouet. The
prior art, however, does not characterize CaCu3 Ti4012 as a photoreducer and
Examiner does not provide evidence to support the position that
CaCu3 Ti4012 would necessarily be exposed after laser irradiation.
Therefore, we cannot agree that a person of ordinary skill in the art at the
time would have adopted the Examiner's inference. Rather, we find that
only through hindsight can the claimed method step be achieved.
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Application 13/103,859
Moreover, as Appellants suggest, even if we were to assume that
CaCu3 Ti4012 would in fact be exposed through irradiation, one of skill in the
art at the time of the invention would not expect the exposure to take place.
Reply Br. 11. This is because Li teaches calcium copper titanate
(CaCu3 Ti4012}-more broadly a perovskite-as one of many classes of
ceramic fillers disclosed in Li. See Li i-f3 7 ("ceramic filler[ s] ... can include
inorganic oxides, metal oxides, silicates, borides, carbides, nitrides,
perovskites and perovskites derivatives, or the like .... "). Li also teaches
that, in general, ceramic fillers alone cannot be plated. Id. at i131. Rather,
the use of LDS (laser direct structuring) additives are required for plating to
occur. Id.; see also id. at i1 67 ("without the copper chromium oxide spinel
additive, the compounds cannot be plated at all after laser etching.")
(emphasis added). In particular, it is the "[b ]reaking down copper chromium
oxide spinel [, an LDS additive, that] forms heavy-metal nuclei during
activation [or irradiation] with the laser during the LDS process. These
nuclei enable the material to then be plated by enabling adhesion of the
metallization layer in metallization process." Id. From the teachings of Li,
the skilled artisan at the time of the invention would understand that
something in addition to a mere ceramic filler, i.e., an LDS additive, would
be required for metallization to occur. The addition of Belouet only
provides that certain metal oxides (Ce02 and Ti02}-and not all ceramic
fillers-are an exception to Li's general teaching.
On this record, we cannot sustain the Examiner's rejection of claims
1-10 and 12-13.
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Application 13/103,859
Provisional Double Patenting Rejections
The Examiner also provisionally rejects claims 1-13, under 35 U.S.C.
§ 101, as claiming the same invention as claims 1-13 of copending
Application No. 13/350161. The method claims 1-13, of Application No.
13/350161, are withdrawn as of August 24, 2012. The Examiner also
provisionally rejects claims 1 and 5-13, under 3 5 U.S. C. § 101, as claiming
the same invention as claims 1-8 and 11-12 of copending Application No.
12/842407. Application No. 12/842407 is abandoned as of February 15,
2013. The provisional obviousness-type double patenting rejections,
therefore, are moot.
CONCLUSION
The Examiner erred in rejecting claims 1-10 and 12-13.
DECISION
For the above reasons, the Examiner's rejection of claims 1-10 and
12-13 is reversed.
REVERSED
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