Ex Parte Hamilton et al

Patent Trial and Appeal Board

Dec 16, 2014

12693548 (P.T.A.B. Dec. 16, 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, ERNEST LONG, and
ANDREW M. KROL
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Appeal 2013-002957
Application 12/693,548
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for treating a laser-activatable
nonconductive substrate. Claim 1 is illustrative:
1. A method of treating a laser-activatable non-conductive substrate,
the method comprising the steps of:
a) treating the non-conductive substrate with an aqueous composition
comprising:
i) a thiol functional organic compound; and
ii) preferably, a surfactant;
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Application 12/693,548

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b) selectively laser activating portions of a surface of the non-
conductive substrate;
e) contacting the substrate with an electroless plating bath such that
areas of the substrate which were contacted by the laser plate, but areas that
were not contacted by the laser do not plate.

The References
Rolker US 3,900,320 Aug. 19, 1975
Thorn US 5,476,580 Dec. 19, 1995
Frey US 7,160,583 B2 Jan. 9, 2007
Schoedner US 2007/0092638 A1 Apr. 26, 2007
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
4, and 9–12 over Rolker in view of Schoedner, claims 2, 3, and 15 over
Rolker in view of Schoedner and Frey and claims 5–8, 13, and 14 over
Rolker in view of Schoedner and Thorn.
OPINION
We reverse the rejections. We need address only the independent
claims, i.e., claims 1 and 15.1 Those claims require treating a laser
activatable nonconductive substrate with an aqueous composition
comprising a thiol-functional organic compound. To meet that claim
requirement the Examiner relies upon Rolker (Final Rejection mailed June 4,
2012, pp. 6–7).
Rolker discloses a method for forming a metal image on a
nonconductive (plastic or ceramic) substrate, comprising applying to the

1 The Examiner does not rely upon Frey or Thorn for any disclosure that
remedies the deficiency in the references applied to the independent
claims (Final Rejection mailed June 4, 2012, pp. 9–12).
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substrate a photosensitive pre-plate solution including a photoreactable
nitrogen atom-containing compound dispersed with a photoinitiator in a
hydrophilic film-forming binder material comprising fine particles of metal
and a photographically inert solid-film-forming component, which can be
thiolated gelatin, to achieve a hydrophilic continuous phase which retains the
dispersed phase in discrete particle form (abstract; col. 11, ll. 23–60). Thus,
Rolker’s thiolated gelatin is applied to the substrate during the process of
forming thereon a photosensitive pre-plate solution that renders the substrate
light activatable, rather than being applied to a substrate that already is light
activatable.
The Examiner argues that “[t]he limitation ‘the non-conductive
substrate’ is not the same as ‘a laser activatable non-conductive substrate’”
(Ans. 3).
Claims 1 and 15 require “treating the non-conductive substrate”, not
“treating a non-conductive substrate”. The only substrate to which “the” can
refer is the previously-recited laser-activatable nonconductive substrate.
Hence, those claims require that the nonconductive substrate which is treated
with the thiol functional organic compound is laser activatable before that
treatment.2 Because Rolker’s nonconductive substrate is not light
activatable until after it has been treated with the thiolated gelatin-containing
composition, it does not meet that claim requirement.
Thus, the Examiner has not carried the burden of establishing a prima
facie case of obviousness. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.

2 That claim interpretation is consistent with the Appellants’ Specification
(Spec. 4:9–25) and argument (Br. 7).
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1988); In re Piasecki, 745 F.2d 1468, 1472 (CCPA 1984); In re Rinehart,
531 F.2d 1048, 1051 (CCPA 1976). Accordingly, we reverse the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 4, and 9–12 over
Rolker in view of Schoedner, claims 2, 3, and 15 over Rolker in view of
Schoedner and Frey and claims 5–8, 13, and 14 over Rolker in view of
Schoedner and Thorn are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

cdc