Ex parte GUHL et al.

Board of Patent Appeals and Interferences

Nov 24, 1999

08493758 (B.P.A.I. Nov. 24, 1999)

Application for patent filed June 22, 1995.1
Appeal No. 1997-0330
Application 08/493,758
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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DIETER GUHL,
and FRANK HONSELMANN
____________
Appeal No. 1997-0330
Application No. 08/493,7581
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and LORIN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
Appeal No. 1997-0330
Application 08/493,758
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. ' 134 from the final
rejection of claims 1 and 3, all the claims pending in
the application. On consideration of the record, we
affirm the '103 rejection of claim 1, reverse the '102
rejection of claim 1, reverse the '102 and '103
rejections of claim 3, and, pursuant to 37 C.F.R. '
1.196(b), apply a new '103 rejection of claims 1 and 3.
Representative Claim
1. An acidic electrolyte for dip-tin-plating of
aluminum alloys, containing tin salts, surfactants and
additives yielding fluoride ions, comprising, as
additives yielding fluoride, fluorine complexes having an
optimum effective fluoride content that corresponds to
the maximum solubility of the additives and wherein the
fluoride complex is present in concentrations exceeding
its solubility product.
The reference relied upon by the examiner is:
Kirman et al. (Kirman) 4,170,525 Oct. 9, 1979
The rejection is:
Claims 1 and 3 are rejected under 35 U.S.C. ' 102(b)
as anticipated by or, in the alternative, under 35 U.S.C.
Appeal No. 1997-0330
Application 08/493,758
3
' 103 as being obvious over Kirman.
I. Examiner's rejection.
The rejection of claims 1 and 3 is presented under
alternative grounds of anticipation under '102 and
obviousness under '103. To reach the merits of each
ground, we will treat them separately.
Anticipation of Claim 1
Representative claim 1 is directed to an electrolyte
composition comprising three components:
tin salts;
surfactants; and,
additives yielding fluoride ions.
There is no dispute that each of these three components
are identically taught in Kirman: col. 5, lines 43-45;
col. 5, line 56; and, col. 5, lines 30-42, respectively.
The issue is whether Kirman identically teaches the
remaining limitation in representative claim 1: that the
fluoride ion-yielding additives of the electrolyte
Appeal No. 1997-0330
Application 08/493,758
4
comprise "fluorine complexes having an optimum effective
fluoride content that corresponds to the maximum
solubility of the additives and wherein the fluoride
complex is present in concentrations exceeding its
solubility product."
The examiner argues that Kirman teaches an
electrolyte with the HBF fluoride complex at a4
concentration to give an excess of available F ions. The-
argument appears to be that if Kirman teaches providing
excess F ions, this necessarily teaches providing the-
complex in a concentration exceeding its solubility
product. We disagree. The test for anticipation is not
whether the prior art is broad enough to suggest a
claimed limitation. AF[o]r a prior art reference to
anticipate in terms of 35 U.S.C. ' 102, every element of
the claimed invention must be identically shown in the
single reference,@ In re Bond, 910 F.2d 831, 832, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990). Here, Kirman does not
show a fluoride complex concentration in excess of its
"solubility product" and therefore Kirman does not
Appeal No. 1997-0330
Application 08/493,758
5
identically show the claimed electrolyte. Since there is
no identity, we reverse the rejection of claim 1 for
anticipation under '102.
Obviousness of Claim 1
The issue is whether Kirman renders obvious the
electrolyte of representative claim 1 wherein the
fluoride ion-yielding additives of the electrolyte
comprise "fluorine complexes having an optimum effective
fluoride content that corresponds to the maximum
solubility of the additives and wherein the fluoride
complex is present in concentrations exceeding its
solubility product." According to the specification (p.
3), such a concentration is selected to obtain "a
relatively, constant active substance [i.e., fluoride
complex]" in the electrolyte. In other words, the
fluoride complex is in the electrolyte at a concentration
that exceeds the amount needed to maintain the plating
process. According to appellants (brief, p. 10), Kirman
does not disclose this excess level of fluoride complex
and contend that by requiring the fluoride complex to be
Appeal No. 1997-0330
Application 08/493,758
6
present in concentrations exceeding its solubility
product, the claimed invention patentably distinguishes
over Kirman.
From our review of Kirman, we do not find that
Kirman places any limitation on the concentration of
fluoride complex in the plating bath. When discussing
the fluoride component in the plating bath, Kirman merely
requires a source of supply, leaving open the amount.
See col. 5, lines 30-42. Nothing critical is indicated
for the fluoride concentration. Kirman places
limitations on, for example, the concentration of
stannous ions (col. 3, lines 3-20) but suggests no upper
limit for the fluoride ions. Although Kirman (col. 5)
does disclose preferable ranges for fluoride ion
concentration, depending on the type of tin alloy being
deposited, higher concentrations are not precluded. In
fact, with respect to coating pure tin, Kirman (col. 4,
lines 67-68) specifically states that the plating bath
can contain "greater than 1.0 g/l fluoride ions, or
fluoride containing ions, or mixtures thereof".
Appeal No. 1997-0330
Application 08/493,758
7
Kirman does not place any restrictions on the
fluoride concentration. Therefore, although Kirman does
not expressly recite a fluoride complex concentration in
excess of its "solubility product", given that this is an
amount of fluoride in excess of what is needed and that
Kirman suggests using any amount, it reasonably suggests
to one of ordinary skill in this art to employ a fluoride
complex in Kirman's electrolyte bath at any
concentration, including that claimed, in order to
achieve similar tin-plating results. There is therefore
a prima facie case of obviousness for the claimed
invention over Kirman's disclosed electrolyte.
Having established a prima facie case of
obviousness, the burden now shifts to appellants to come
forward with objective evidence to rebut the prima facie
case. See In re De Blauwe, 736 F.2d 699, 706, 222 USPQ
191, 197 (Fed. Cir. 1984), citing In re Rinehart, 531
F.2d 1048, 189 USPQ 143 (CCPA 1976).
In order for a showing of "unexpected results" to be
probative evidence of non-obviousness, it falls upon
the applicant to at least establish: (1) that there
actually is a difference between the results obtained
Appeal No. 1997-0330
Application 08/493,758
"It should be noted that in each example relating to the2
present invention, the electrolyte, Na SiF or KBF , is2 6 4
present in an amount exceeding [appellants= emphasis] its
solubility product. E.g., Example 1, Na SiF has the2 6
solubility product of 7.5 g/l but it is present in a
quantity of 8 g/l.
Whereas, in the comparison Example, based on the cited art, HBF is present in an4
amount 3.5 g/l which is below [appellants= emphasis] its solubility of 300 g/l at the cited
temperature. Thus, once these F ions are consumed, there is no way, a replenishment is possible-
based on the teachings of the cited art. The presently pending claim 1 clearly has this limitation that
in the present case, fluorine complex must be present in concentration exceeding its solubility
product." (Brief, p. 10).
8
through the claimed invention and those of the prior
art, In re Klosak, 59 CCPA 862, 455 F.2d 1077, 173 USPQ
14 (1972); and (2) that the difference actually
obtained would not have been expected by one skilled in
the art at the time of invention, Id.; In re D'Ancicco,
58 CCPA 1057, 439 F.2d 1244, 169 USPQ 303 (1971).
In re Freeman, 177 USPQ 139, 143 (CCPA 1973).
Appellants (brief, p. 10 ) argue that there is a difference between the2
claimed electrolyte and that of the cited art and direct our attention to three examples on pages
4 and 5 of the specification. Considering that the issue is whether there is an unexpected result
associated with electrolytes having a fluoride complex in concentrations exceeding, as opposed
to not exceeding, its solubility product, an appropriate showing of unexpected results would
have been a side-by-side experiment comparing two electrolytes, each containing the same
fluoride complex but in concentrations above and below its solubility product and under
essentially identical conditions. Here instead, each of appellants' three examples involve a
Appeal No. 1997-0330
Application 08/493,758
9
different fluoride complex: Na SiF , KBF , and HBF ; and are conducted under different2 6 4 4
conditions. Na SiF and KBF are dissolved in the electrolyte at 20 and 30 C while HBF is2 6 4 40 0
dissolved at 30 C. Na SiF and KBF are present in concentrations above their solubility0 2 6 4
product while HBF is present below its solubility product. Based on the information from4
these three examples, it is impossible to determine if, under uniform conditions, Na SiF and2 6
KBF would perform any differently if present below their solubility product or, with respect to4
HBF , above its solubility product. As a result, we cannot determine if an actual difference4
exists for the claimed electrolyte as opposed to electrolytes with fluoride concentrations at any
other level.
Furthermore the "Comparison Example", which appellants argue (brief, p. 10) is based
on the cited art, employs HBF at a concentration approaching the minimum level (i.e., 3.5 g/L)4
disclosed in Kirman. Since, as the examiner has indicated (examiner=s answer, p.
5), Kirman teaches much higher concentrations, objective
evidence that persuasively demonstrates differences
between the claimed and Kirman electrolytes would require
an evaluation of the closest prior art. Here that would
be Kirman electrolytes with HBF concentrations of at4
least 200 g/L (Kirman, col. 5).
Since a valid comparative evaluation was not
Appeal No. 1997-0330
Application 08/493,758
10
conducted, appellants have not established unexpected
results for the claimed electrolyte to overcome the prima
facie case. We therefore affirm the '103 rejection of
claim 1 over Kirman.
Anticipation and Obviousness of Claim 3
We reverse the '102 rejection as to claim 3 because
this claim requires that the fluoride complexes of claim
1 be Na SiF or KBF . Kirman does not disclose these2 6 4
complexes and therefore lacks the requisite identity for
anticipating the claim.
There is also no prima facie case of obviousness
under '103 because there is no suggestion in Kirman, and
no other cited art, that would guide one of ordinary
skill to choose these types of complex salts. We agree
with appellants (brief, p.11, first paragraph) that
Kirman teaches acids as fluoride ion sources and not
salts and does not suggest employing one over the other.
While this argument does not bear on claim 1 where both
acids and salts are covered, claim 3 is specifically
directed to salts. Examiner bears the burden of showing
Appeal No. 1997-0330
Application 08/493,758
11
that, given the teachings of Kirman, one of ordinary
skill would have selected the two recited salts. This
has not been done and we therefore reverse this
rejection.
II. New Ground of Rejection under 37 C.F.R. ' 1.196(b)
Under the provisions of 37 C.F.R. ' 1.196(b), we
make the following new ground of rejection.
Obviousness
Claims 1 and 3 are rejected under 35 U.S.C. ' 103 as
being unpatentable over Kirman in view of Beckwith [U.S.
3,769,182].
For the reasons set forth supra, Kirman renders
prima facie obvious the claimed acidic electrolyte
composition comprising tin salts, surfactants and
fluoride complexes at the claimed concentration. Kirman
however does not teach employing fluoride salts in the
plating bath as prescribed by claim 3. Kirman (col. 5,
lines 30-42) teaches only acids as a source for the
fluoride ions.
Appeal No. 1997-0330
Application 08/493,758
12
Beckwith also teaches an acidic plating bath for
electro-depositing tin-containing salts (Example 2, col.
9), surfactants (col. 2, line 40), and a fluoride-
containing electrolyte. Beckwith's source of fluoride
is, however, not limited to acids. Salts (col. 4, lines
16-38), including "complex salts"(col. 4, line 25) of
fluoborates (i.e., BF ) and fluosilicates (i.e., SiF ),4 6- -2
may also be used. Beckwith suggests that using these
types of complex salts is an equivalent alternative to
using the acid counterpart. Given this suggestion, to
one with ordinary skill in the art with Beckwith in hand,
it would have been prima facie obvious to substitute the
acid (e.g., HBF ) used in Kirman with a complex salt, as4
claim 3 prescribes, and achieve the same electrolytic
result.
This decision contains a new ground of rejection
pursuant to 37 C.F.R. ' 1.196(b) (amended effective Dec.
1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
Appeal No. 1997-0330
Application 08/493,758
13
63, 122 (Oct. 21, 1997)). 37 C.F.R. ' 1.196(b) provides
that A[a] new ground of rejection shall not be considered
final for purposes of judicial review.@
37 C.F.R. ' 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 rejection to avoid
termination of proceedings (37 C.F.R. ' 1.197(c)) as to
the rejected claims:
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. . . .
Appeal No. 1997-0330
Application 08/493,758
14
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-IN-PART - 37 C.F.R. ' 1.196(b)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Administrative Patent Judge )

Appeal No. 1997-0330
Application 08/493,758
15
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