Ex Parte Hamilton et al

Patent Trial and Appeal Board

Oct 27, 2014

12488158 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT HAMILTON and MARK WOJTASZEK
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Appeal 2013-003607
Application 12/488,158
Technology Center 1700
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Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1–4 and 6–9. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b). Oral arguments were heard in this appeal on October 9,
2014.
We REVERSE.
Appellants’ invention is directed to a method of selectively plating a
molded plastic article having a plateable portion and a non-plateable portion
with metal while minimizing or eliminating metal adherence to the non-
plateable portion of the molded article (Spec. 4:11–13).
Claim 1 is illustrative:
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1. A method of selectively plating a plastic article comprising a first
polymer resin portion and a second polymer resin portion, wherein said first
polymer resin portion is not rendered plateable by sulfonation and said
second polymer resin portion is rendered plateable by sulfonation, the
method comprising the steps of:
a) contacting the first polymer resin portion and the second polymer
resin portion of the plastic article with a sulfonating agent, wherein the
second polymer resin portion is rendered plateable by sulfonation;
b) contacting the sulfonated plastic article with an activating agent
comprising ionic palladium followed by an ionic palladium reducer so as to
accept electroless plating thereon;
c) plating the sulfonated and activated plastic article in an electroless
plating bath;
wherein the first polymer resin portion comprises a catalytic poison
compound;
wherein the first polymer resin portion comprises a different polymer
from the second polymer resin portion; and
whereby the plastic article is selectively plated such that the first
polymer resin portion does not have plating thereon and the second polymer
resin portion is electrolessly plated.

Appellants appeal the following rejection:
Claims 1–4 and 6–9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hepfer (US 3,640,789, patented Feb. 8, 1972) in view of
McCormack (US 3,443,988, patented May 13, 1969) and Roubal et al. (US
4,039,714, patented Aug. 2, 1977), alone, or further in view of Ancker et al.
(US 3,556,955, patented Jan. 19, 1971).

Appellants’ arguments focus on the sole independent claim 1 only
(App. Br. 5–9). According, the rejection of the dependent claims will stand
or fall with our analysis of the rejection of claim 1.

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ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of Hepfer, Roubal, and McCormack1 would have rendered obvious
the subject matter of claim 1? We decide this issue in the affirmative.

FINDINGS OF FACT AND ANALYSES
The Examiner finds that Hepfer teaches a claimed process, except for
the step of providing a catalytic poison within the first polymer resin portion
not to be plated and the step of contacting the first and second polymer resin
portions with a sulfonating agent (Final Off. Act. 3–4). The Examiner finds
that McCormack teaches adding catalytic poisons to the resin to prevent
plating on areas of a resin where plating is not desired (Final Off. Act. 4).
The Examiner concludes that it would have been obvious to modify Hepfer
to further provide use of a catalytic poison in the first polymer resin portion
that is not to be plated as suggested by McCormack in order to prevent any
stray plating on the first polymer areas where plating is not desired. Id.
The Examiner further finds that Roubal discloses substituting a
sulfonating treatment in lieu of the toxic chromium trioxide treatment when
plating plastic materials (Final Off. Act. 5). The Examiner finds that Roubal
teaches after sulfonating the plastic, the surface is activated using a catalyst
that includes ionic palladium followed by contacting with an ionic palladium
reducing agent. Id. The Examiner finds that Roubal discloses that the
activated surface is then immersed in an electroless plating bath. Id. The
Examiner finds that Roubal discloses that conditioning time, temperature

1 We focus on the teachings of Hepfer, Roubal, and McCormack alone as
Appellants do not specifically dispute the Examiner’s findings or
conclusions regarding Ancker.
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and other process conditions are dependent upon the type of plastic material
to be treated and the conditions may be readily determined by simple
preliminary steps. Id. The Examiner concludes that it would have been
obvious to modify Hepfer as modified by McCormack “to replace the use of
conventional conditioning with the sulfonating process of Roubal with an
expectation of being able to desirably not use toxic chromium or the narrow
control conditions with chromium trioxide” (Final Off. Act. 5–6). The
Examiner further concludes that determining the optimum conditioning
conditions for each polymer material so that only one polymer would be
conditioned would have been obvious in light of the Hepfer’s teachings that
conditions may be tailored so that certain polymers are activated. The
Examiner finds that Roubal further suggests selecting conditions for specific
materials used in the molded article to cause activation of that polymer
(Final Off. Act. 6).
Appellants argue that the Examiner’s finding that Roubal’s teaching
to optimize the sulfonation conditions for a particular plastic would have
suggested selective deposition is based on impermissible hindsight and is
speculative (App. Br. 8). Appellants contend that Roubal discloses that the
sulfonation treatment achieves a uniform metallic coating over any type of
plastic but does not disclose or suggest achieving selective metallization
over two plastics (App. Br. 7, Reply Br. 5).
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner finds that Roubal’s optimization of the sulfonation conditions
for a particular polymer could have been optimized so that, for example,
acrylonitrile butadiene styrene (ABS) could be rendered plateable and
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polycarbonate could not be rendered plateable (Ans. 9). However, the
Examiner has not established that the sulfonation conditions in, for example,
Roubal’s Examples 1 (ABS) and 8 (polycarbonate) relied upon the Examiner
would produce plating on only ABS with no plating on the polycarbonate
when those plastics are treated with the operating conditions presented
therein. While Roubal discloses optimizing sulfonation conditions for a
particular plastic, there is no evidence provided that particular plastics may
not have overlapping sulfonation/metal deposition conditions. The
Examiner has not established that Roubal would have taught or suggested
selective plating of a plastic article having a first polymer resin portion and a
second polymer resin portion wherein the first and second polymers are
different using a sulfonation process as required by the claims. While
Hepfer teaches that a plastic article composed of two different polymers may
be selectively sensitized to metal deposition by controlling the acid
concentration, time and temperature, such a finding does not establish that
Roubal’s sulfonation process would have been used to selectively sulfonate
a plastic article composed of two plastics.
The Examiner relies on McCormack to teach that it would have been
beneficial to add catalytic poison in the polymer not to be plated to prevent
any sensitizing from occurring during plating even if the polymer is not
prepared for plating (Ans. 13). It is unclear if the sensitizing prevention
stated by the Examiner was meant to include sulfonation of the particular
polymer having the catalytic poison. However, the Examiner has not
established that by using McCormack’s catalytic poisons no sulfonation
would occur on the polymer containing the catalytic poison. Though
McCormack discloses that the catalytic poisons keep the polymer treated
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with them inert to sensitizing or seeding, McCormack uses palladium
chloride or an acidic solution of stannous chloride and precious metal
chloride as sensitizing and seeding agents, not sulfonation followed by an
activating/sensitizing step (col. 8, ll. 29–40). The Examiner has not
established what effect the addition of McCormack’s catalytic poisons
would have on the sulfonation of the polymer or metallization of a
sulfonated polymer surface.
On this record, we find that the Examiner has not established a prima
facie case of obviousness. We reverse the Examiner’s § 103 rejection.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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