10482092 (B.P.A.I. Jul. 20, 2010)

Ex Parte Imori et al

Board of Patent Appeals and InterferencesJul 20, 2010

10482092 (B.P.A.I. Jul. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/482,092 12/19/2003 Toru Imori Komatsu Case 298 3724 7590 07/20/2010 Flynn Thiel Boutell & Tanis 2026 Rambling Road Kalamazoo, MI 49008-1699 EXAMINER BAREFORD, KATHERINE A ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 07/20/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TORU IMORI and ATSUSHI YABE ____________ Appeal 2009-013484 Application 10/482,092 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal from the final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013484 Application 10/482,092 1. A metal plating method comprising the steps of surface-treating an article with a liquid prepared by mixing or reacting an organic acid salt of a silane coupling agent containing an azole in a molecule and a noble metal compound and then conducting electroless plating on the surface-treated article. The Examiner relies upon the following references as evidence of obviousness (Ans. 3): Imori (US ‘467) 6,780,457 B2 Aug. 24, 2004 Kumagai (US ‘181) 6,710,181 B2 Mar. 23, 2004 Imori (US ‘461) 7,045,461 B2 May 16, 2006 Imori (Application ‘172) 10/558,172 Nov. 22, 2005 Yabe (Application ‘230) 10/576,230 April 14, 2006 Masashi et al. (WO ‘119) WO 01/77119 Oct. 18, 2001 Imori (WO ‘652) WO 01/81652 Nov. 01, 2001 Appellants’ claimed invention is directed to a metal plating method comprising treating the surface of an article with a liquid prepared by mixing or reacting an organic acid salt of a silane coupling agent that contains an azole, and a noble metal compound, such as a palladium compound. The Examiner has rejected the appealed claims under the ground of non-statutory obviousness-type double patenting as follows: (a) claims 1-7 over claims 1-5 and 9-12 of US ‘467 in view of WO ‘119, (b) claims 1-7 over claims 1 and 9 of US ‘461 in view of WO ‘119, (c) claims 1-7 over claims 2-5 of Application No. ‘172 in view of WO ‘119, (d) claims 1-7 over claims 1, 4, and 5 of Application No. ‘230 in view of WO ‘119, and (e) claims 5 and 7 over claims 1-3 of US ‘181 in view of WO ‘652. 2 Appeal 2009-013484 Application 10/482,092 In addition, claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over WO ‘652 in view of WO ‘119. We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find ourselves in agreement with Appellants that the Examiner’s rejections are not sustainable. The fundamental position taken by the Examiner in all of the rejections is that it would have been obvious for one of ordinary skill in the art to modify “primary” references, which teach metal plating with a silane coupling agent containing an azole, by substituting an organic acid salt of a silane coupling agent containing an azole taught by the “secondary” references which teach the salt as enhancing adhesion between resins and metals or inorganic materials, such as glass fibers. However, as pointed out by Appellants, there is no teaching in the “secondary” references that the organic acid salt can be used in a plating process. Since the Examiner has not made the case that one of ordinary skill in the art would have reasonably expected that the organic acid salt of the silane coupling agent would have the same properties as the non-salt form, we agree with Appellants that given the dissimilarity between using a pretreatment agent to catalytically activate a substrate for electroless plating and a pretreatment agent for two substrates to make them more susceptible to being adhered to each other, one of ordinary skill in the art would not attempt to combine these references in the manner suggested by the Examiner (Reply Br. 2, first para.). In addition, we note that Appellants’ Specification sets forth objective evidence that the use of a silane coupling agent within the scope of the appealed claims produces superior plating results compared a silane coupling agent not in the salt form. 3 Appeal 2009-013484 Application 10/482,092 Consequently, it is our judgment that the evidence of non-obviousness presented by Appellants outweighs the evidence of obviousness proffered by the Examiner. Accordingly, based on the foregoing, we are constrained to reverse the Examiner’s rejections. REVERSED ssl FLYNN THIEL BOUTELL & TANIS 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1699 4