Ex Parte Inazawa et al

Patent Trial and Appeal Board

Mar 25, 2016

11791518 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111791,518 0512412007
20277 7590 03/29/2016
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Shinji Inazawa
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.
070456-0194 4507
EXAMINER
LIN, JAMES
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINJI INAZA WA, KOJI NITTA, KAZUNORI OKADA, and
TOSHIYUKI NOHIRA1
Appeal2014-005764
Application 11/791,518
Technology Center 1700
Before CHUNG K. PAK, MARK NAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 4, and 10-13. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to a molten salt bath that can
provide a deposit with a smooth surface. Spec. 1 :7-1 O; Claim 1. Claim 1 is
reproduced below from page 9 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real parties in interest are SUMITOMO
ELECTRIC INDUSTRIES, LTD. and KYOTO UNIVERSITY. App. Br. 1.
Appeal2014-005764
Application 11/791,518
1. A molten salt bath for depositing at least one element selected
from the group consisting of scandium, yttrium, titanium,
zirconium, hafnium, vanadium, niobium, chromium,
molybdenum, tungsten, manganese, technetium, rhenium, and
lanthanoid including:
at least two elements selected from the group consisting of
lithium, sodium, potassium, rubidium, cesium, beryllium,
magnesium, calcium, strontium, and barium;
at least one element selected from the group consisting of
chlorine, bromine, and iodine;
at least one element selected from the group consisting of
scandium, yttrium, titanium, zirconium, hafnium, vanadium,
niobium, chromium, molybdenum, tungsten, manganese,
technetium, rhenium, and lanthanoid; and
polyethylene imine,
wherein said polyethylene imine has a weight-average molecular
weight of at least 3000.
EVIDENCE RELIED ON BY THE EXAMINER
Mi ya ta et al.
Komatsu et al.
T otsuka et al.
Beica et al.
Murphy et al.
us 3,867,266
us 3,959,092
US 2003/0085133 Al
US 7,151,049 B2
US 7,314,544 B2
REJECTIONS ON APPEAL
Feb. 18, 1975
May 25, 1976
May 8, 2003
Dec. 19, 2006
Jan. 1, 2008
1. Claims 1, 3, 4, and 10-12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Miyata in view of Totsuka or Beica.
2. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Miyata in view of Murphy and Komatsu, additionally in view of
T otsuka or Beica.
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Application 11/791,518
ANALYSIS
The Examiner finds that Miyata teaches an electroplating method
involving the use of the molten salt bath of claim 1 except for the inclusion
of a polyethylene imine having a weight-average molecular weight of at
least 3000. Ans. 2-3. The Examiner finds that Totsuka, which is directed to
an aqueous electroplating method and composition, teaches a leveling agent
that "level[s] the final thickness of the deposit," and that the leveling agent
may be polyethylene imines having an average molecular weight of 5,000 to
100,000. Id. at 3; Totsuka i-f 25. The Examiner further finds that Beica,
which is also directed to aqueous electroplating compositions and methods,
likewise teaches the use of polyethylene imines as additives "to improve the
deposit." Id. The Examiner concludes that it would have been obvious to
add a polyethylene imine to the salt bath of Miyata to achieve a smoother,
improved deposit. Id. at 4--5.
The Appellants explain that Totsuka and Beica are directed to aqueous
electroplating solutions rather than to non-aqueous molten salt baths, and the
Appellants argue that aqueous electroplating solutions are significantly
different from molten salt baths. See App. Br. 4--5. The Appellants point
out that aqueous electroplating solutions such as those of Totsuka and Beica
operate at lower temperatures than the molten salt bath of Miyata. Id. at 5.
Totsuka discloses a preferred temperature range of 5°C to 30°C, see Totsuka
,-r 34, and Beica discloses a temperature range of l 5°C to 66°C, Beica at 8:6-
10. Miyata, by contrast, discloses a molten salt bath temperature of 160°C.
Miyata at 4: 1-5.
In support of their argument concerning the differing temperatures of
aqueous electroplating solutions and molten salt baths, the Appellants cite
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Application 11/791,518
Totsuka if 34, lines 13-17. Those lines teach that "the additive [to the
electroplating solution] tends to be decomposed at above 30°C." Totsuka
if 34. While Totsuka does not expressly identify "the additive" in if 34, it
teaches "additives" including "polymer and ... brightener and leveler," if 5,
and it teaches that polyethylene imine is a known leveler, if 25. Thus, a
person of ordinary skill in the art would have understood Totsuka to teach
that certain additives to electroplating solutions, including polyethylene
imine, decompose at temperatures above 30°C. That teaching is consistent
with the Appellants' Specification, which discloses that, "even if an organic
type brightener and/or lubricating agent is added into the molten salt bath,
the organic type brightener and/ or lubricating agent will decompose
immediately. Therefore, it was conventionally unthinkable of conducting
electrolysis with an organic type brightener and/or lubricating agent included
in a molten salt bath." Spec. 3:21-25.
The Examiner bears the burden of establishing a prima facie case of
obviousness based on the prior art. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). The Examiner's conclusion that a person of ordinary skill
reasonably would have expected polyethylene imine to function as a leveler
in a molten salt bath rests largely on the finding that molten salt baths and
aqueous solutions are both used in electroplating processes. E.g., Ans. 4, 10
(if 21). While we recognize that some evidence supports the Examiner's
position that aqueous electroplating solutions are similar to molten salt baths
in certain respects, id. 8-13, on this record, the fact that both are used for
electroplating is insufficient to establish a reasonable expectation of success.
In particular, the Examiner's analysis does not adequately explain why a
person of ordinary skill in the art would have expected polyethylene imine to
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Application 11/791,518
retain its leveling function (or its stability) in a different chemical
environment (aqueous vs. non-aqueous) and at a significantly higher
temperature.
Moreover, while the Examiner finds that "[a]t [the 160°C temperature
taught by Miyata], a polyethylene imine would not have been expected to
significantly decompose," Ans. 11, that finding appears to conflict with
Totsuka's teaching that additives tend to decompose at temperatures above
30°C, see Totsuka ,-r 34. The Examiner relies on the Appellants'
Specification for support, see Ans. 11, but the Specification's disclosure that
additives "decompose immediately" at temperatures of 400°C does not
logically imply that those additives therefore would be stable at 160°C.
Neither the Examiner nor the Appellants have provided any direct evidence
of whether a person of ordinary skill would have expected polyethylene
imine to be stable at the 160°C temperature of Miyata. On this record, and
in the absence of direct evidence on point, Totsuka's teaching of additive
decomposition at temperatures above 30°C-which the Examiner fails to
acknowledge or address-is more persuasive than the Examiner's
unsupported finding that a person of ordinary skill would have expected
polyethylene imine to be stable at 160°C.
Based on the evidence and the arguments before us, and having
considered both the similarities and differences between the processes of
Miyata and Totsuka/Beica, we are not persuaded that a preponderance of the
evidence supports the Examiner's conclusion that a person of ordinary skill
in the art reasonably would have expected polyethylene imine to retain its
stability and leveling function under the conditions of the Miyata process.
We therefore reverse the Examiner's rejection of claim 1. Because the
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Application 11/791,518
Examiner's rejections of the remaining claims on appeal does not remedy
the foregoing error, we likewise reverse the Examiner's rejections of claims
3, 4, and 10-13.
CONCLUSION
We REVERSE the Examiner's rejection of claims 1, 3, 4, and 10-13.
REVERSED
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