Ex Parte Knop et al

Board of Patent Appeals and Interferences

May 11, 2009

11114440 (B.P.A.I. May. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACEK M. KNOP, JOHN G. CARTER,
and DONALD E. CLEARY
____________

Appeal 2009-2268
Application 11/114,440
Technology Center 2800
____________

Decided:1 May 11, 2009
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 3, 7, 8, 10-15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery) or Notification Date
(electronic delivery).

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Application 11/114,440

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STATEMENT OF CASE
Appellants’ claimed invention is directed to an improved
plating method where adjustments of the plating cycle improve
throwing power and reduce nodule formation (Spec. 1:1-3).
Independent claim 3, reproduced below, is representative of the
subject matter on appeal.
3. A method comprising generating an electric current through
an electrically conductive substrate, electrolyte and anode in
electrical communication; and interrupting the current for an
interval from 0 minutes to 5 minutes within an initial 10
minutes of a metal plating cycle with additional current
interruptions of intervals from 5 seconds to 3 minutes for every
10 to 20 minutes of the metal plating cycle.

REFERENCES
Müll US 5,958,207 Sep. 28, 1999
Colbey 20030070934 A1 Apr. 17, 2003

The Examiner rejected claims 3, 7, 8, and 10-122 under
35 U.S.C. § 102(b) based upon the teachings of Müll.
The Examiner rejected 13 under 35 U.S.C. § 103(a) based upon
the teachings of Müll and Colbey.
The Examiner rejected claims 14 and 15 under 35 U.S.C.
§ 103(a) based upon the teachings of Müll.
Appellants contend that the time period between increasing the
current density from 0.1 to 30 seconds is not taught by Müll, that the

2 The Examiner noted that the rejection of claim 13, under 35 U.S.C.
§ 102 in the Final Office Action mailed September 7, 2007, was a
typographical error. Claim 13 should only be included in the § 103
rejection (Ans. 2-3).
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brief pauses in Müll involve interrupting the current such that it is
zero for 0.1 to 30 seconds, and that the current does not fall back to
zero after each positive step, but rather, is increased with each current
step (App. Br. 8). Appellants further contend that although Müll
discloses short periods where the current falls to zero, Müll does not
disclose the time over which the current is held at zero, and such
periods do not occur during the plating cycle (App. Br. 8-9).

ISSUE
Did Appellants establish that the Examiner erred in finding that
Müll teaches or suggests all the features of Appellants claims?

FINDINGS OF FACT
1. Appellants’ claimed method includes interrupting current
during a metal plating cycle for an interval from 0-5 minutes within an
initial 10 minutes. Additionally, current interruptions occur at
intervals from 5 seconds to 3 minutes for every 10 to 20 minutes of
the plating cycle (cl. 3; Spec. 5:26-30; Spec. 8:1-8).
2. When a current interruption interval during the metal
plating cycle is reached in Appellants’ process, the “current is reduced
to 0 and the metal plating ceases or is a least reduced.” When the
current interruption interval ends, the current is raised to the desired
current density and the metal deposition continues. (See Spec. 8:24-
27; Spec. 14:14-17; Spec. 16:22-24; Spec. 17:24-25)
3. Müll teaches electrochemically depositing a structured
surface coating on a component. The process includes raising current
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in discrete steps during a nucleation phase with brief pauses between
each increase of between 0.1 and 30 seconds. The process current is
then maintained at a constant level. (Abstract)
4. Müll teaches the process current does not fall back to
zero after each positive step within the phase, but rather, is further
increased with each current step (col. 2, ll. 40-43).
5. Figure 5 of Müll shows variation in current density with
respect to time. During phase 15, the current density is increased in
110 equal steps to a structure current density of 100 mA/cm2. The
time period between two current steps is 10 seconds. After a growth
working period of 16-60 seconds the current density is lowered in 22
equal steps to an end value of 0 mA/cm2. The time between two
current steps is 4 seconds (col. 6, ll. 56-65). Thereafter, “following a
short current-free period” the process cycle is repeated (col. 6, ll. 65-
67).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently described, in
a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of
Calif., Inc., 814 F.2d 628, 631 (Fed. Cir. 1987).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

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ANALYSIS
Anticipation
The Examiner rejected claims 3, 7, 8, and 10-12 under
35 U.S.C. § 102 (b) as anticipated by Müll (Ans. 3-4). The Examiner
asserts that Müll teaches all the features of claim 3. Particularly, the
Examiner states that the term “current interruptions” as defined by
Appellants in the Specification is not defined to only mean that “the
current has to return to zero” (Ans. 8). Therefore, this term does not
limit the Examiner’s interpretation that “current interruption” can
mean “a change in the present current level to another level” as taught
by Müll (Ans. 8). It should be noted, however, that Appellants
Specification, makes clear that the terms “interrupting the current”
and “current interruptions” mean the current is reduced to zero during
an interruption (FF 2). Thus, giving these terms their broadest
reasonable construction in light of the specification, these terms are
interpreted to mean the current is reduced to zero.
Appellants contend that although Müll teaches increasing the
current density within a time period from 0.1 to 30 seconds, Müll does
not teach that the brief pauses involve interrupting the current such
that it is “0” for 0.1 to 30 seconds (cl. 3). Rather, Müll teaches that
the intervals between changes in the current are such that the current
is held at a specific current density for 0.1 to 30 seconds followed by
an increase or decrease in current to form the graphs shown in Figs. 2,
5, 6, and 7 (App. Br. 7-8). Appellants acknowledge that Müll teaches
“short periods where the current falls to 0” (App. Br. 8-9; FF 5).
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Appellants contend, however, that such periods of zero current do not
occur during the plating cycle.
Müll does teach “short periods” where the current falls to zero,
as taught by Appellants’ “current interruption.” These periods in Müll
occur between phases of the plating cycle (col. 6, ll. 65-67; Figs. 2, 5,
6, and 7) and thus occur during the plating cycle. However, Müll does
not teach or suggest how long the “short periods” of the elapsed time
of the current interruptions are between phases of the metal plating
cycle. That is, Appellants claim 3 recites that there are “additional
current interruptions of intervals from 5 seconds to 3 minutes for
every 10 to 20 minutes of the metal plating cycle.” Neither phase 15
in Figure 5 nor Müll’s disclosure teaches what this time interval
between phases is where the current goes to zero.
Thus, since Müll does not teach or suggest every feature of
claim 3, Müll does not anticipate claim 3. Because claims 7, 8, and
10-12 depend from claim 3, Müll also does not anticipate these
claims.
Obviousness
The Examiner rejected claim 13 as obvious over Müll and
Colbey. The Examiner finds that Colbey teaches electrolytic bath
plating for deposition of a metal on a substrate. The Examiner
concludes it would be obvious to use the electrolytic plating process
of Müll to deposit metal on the substrate of Colbey to provide an
electrically improved metal wiring surface (Ans. 5-6). Claim 13 is
dependent upon claim 3. Colbey, however, does not cure Müll of the
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deficiencies in the rejection of claim 3, set forth above. Thus, claim
13 is not obvious over the combination of Müll and Colbey.
The Examiner rejected claims 14 and 15 as obvious over Müll
reasoning that it would be obvious to interrupt the current for 1 or 5
minutes within the initial 10 minutes of metal plating for intervals of 1
or 2 minutes for every 20 or 10 minutes, respectively. Because Müll
does not teach the time intervals between phases of the metal plating
cycle as set forth above with respect to claim 3, claims 14 and 15,
which are dependent upon claim 3, are not obvious over Müll.

CONCLUSION
The Examiner erred in rejecting claims 3, 7, 8, and 10-12 under
35 U.S.C § 102 over Müll.
The Examiner erred in rejecting claim 13 under 35 U.S.C § 103
over Müll and Colbey.
The Examiner erred in rejecting claims 14 and 15 under
35 U.S.C § 103 over Müll.

DECISION
The Examiner’s decision rejecting claims 3, 7, 8, and 10-15 is
reversed.

REVERSED
KIS

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