Ex Parte Letize

Board of Patent Appeals and Interferences

Mar 26, 2010

11479692 (B.P.A.I. Mar. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAYMOND A. LETIZE
__________

Appeal 2009-009285
Application 11/479,692
Technology Center 1700
____________

Decided: March 26, 2010
____________

Before MICHAEL P. COLAIANNI, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-10. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We AFFIRM.
Appellant describes a process for increasing the adhesion of a copper
or copper alloy surface and a polymeric substrate (Spec. 1).
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Claim 1 is illustrative:
1. A process for increasing the adhesion of a copper or copper alloy
surface to a material comprising polymers, said process comprising:

(a) contacting the copper or copper alloy surface with a composition
comprising:

1. water;

2. a source of cupric ions;

at a pH from 2.8 to 4.2;

such that a conversion coating is formed on the copper or copper
alloy surface.

The Examiner relies on the following references as evidence of
unpatentability:
Merchant 6,221,176 B1 Apr. 24, 2001
Cole 6,746,547 B2 Jun. 8, 2004

Appellant seeks review of the following rejections:
1. Claims 1-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cole.
2. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merchant.
3. Claims 3, 4, and 7-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merchant in view of Cole.

With regard to rejection (1), Appellant separately argues claims 1 and
3 (App. Br. 3-5). Appellant argues claims 4 and 8 and claims 6 and 10 as
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groups, which we select claims 4 and 6 as representative (App. Br. 5).
37 C.F.R. §41.37(c)(1)(vii).
With regard to rejections (2) and (3), we focus on claim 1 for reasons
evident from the decision.

ISSUE
1. Has Appellant identified error in the Examiner’s finding that Cole or
Merchant teaches or would have suggested the composition including
the pH range recited in claims 1 and 6? We decide this issue in the
negative with regard to Cole and in the affirmative with regard to
Merchant.
2. Has Appellant identified error in the Examiner’s finding that Cole
teaches or would have suggested a buffer solution as recited in claims
3 and 8? We decide this issue in the negative.

FACTUAL FINDINGS (FF)
1. The Examiner finds that Cole discloses an acidic solution that with a
normality range of .001 N to 2.0 N, which corresponds to a pH of 3 or
lower (Ans. 5). The Examiner further finds that “strong acid” is
defined as an acid having a pH of 1-3 (Ans. 5). Appellant did not file
a Reply Brief to contest these findings.
2. Cole discloses that the acidic oxide-producing composition may
include cupric ions in addition to cuprous ions (col. 11, ll. 1-10).
3. Cole discloses using a buffer with the acidic oxide-producing
composition, which may include sodium hydroxide (col. 11, ll. 51-
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61). Though the aforementioned column 11 buffer disclosure in Cole
states that “[t]he pH of the ammoniacal oxide-producing composition
can be adjusted using an appropriate acid or base . . . ,” the context of
the buffer disclosure is clearly used in the acidic oxide-producing
composition embodiment. Notably, Cole’s acidic oxide producing
composition embodiment disclosure spans from column 11, line 1 to
column 12, line 18, which includes the buffer disclosure. Cole's
ammoniacal oxide-producing embodiment disclosure starts at column
12, line 19 and goes to column 13, line 39).
4. The Examiner finds that the Letize Declaration1 fails to evidence
criticality of the claimed pH range (i.e., 2.8-4.2) because it only
“alleges unexpected superior results for the claimed pH range and
does not provide factual evidence data, such as comparison data
between the instant invention and the closest prior art, to substantiate
such an allegation” (Ans. 7).
5. The Examiner does not cite to any portion of Merchant or other
evidence regarding the Merchant rejection that substantiates the
finding that “the acidic copper sulfate bath as taught by Merchant has
a pH that encompasses the claimed pH ranges as recited in claims 1
and 6” or that “Merchant teaches an acidic pH in treatment solution
which implies a pH that encompasses the claimed pH ranges” (Ans. 4;
6).

1 Letize Declaration filed April 8, 2008.
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ANALYSIS
Issue (1): pH range
Appellant argues that Cole teaches a different composition that
includes a cuprous ligand and the composition has a different pH than that
claimed in claims 1 and 6 (App. Br. 4). Appellant further argues that the
claimed pH range is critical as evidenced by the Letize Declaration to
achieve the unexpected result of forming a conversion coating in an acid
solution (App. Br. 4-5; Letize Declaration ¶ (6)).
Contrary to Appellant’s argument, claim 1 uses the open-ended claim
language “comprising” which does not exclude prior art that contains
features, such as the cuprous ligand of Cole, in addition to the features
recited in claim 1. Appellant’s argument regarding the pH being different
fails to address and show error in the Examiner’s finding that Cole’s strong
acid disclosure and actual embodiment discloses a pH range (i.e., 3 or lower)
that overlaps with the claimed pH ranges (i.e., 2.8-4.2 (claim 1) or 3-4
(claim 6)).
Appellant’s argument that the Letize Declaration establishes the
criticality of the claimed range and unexpected results is unpersuasive. As
aptly stated by the Examiner, the Letize Declaration fails to compare the
claimed invention to the closest prior art (i.e., Cole). Moreover, it is noted
that Cole teaches that using an acidic oxide-producing composition yields
the expected result of forming a coating on the copper.
For these reasons, Appellant has not identified error in the Examiner’s
stated rejection over Cole.
The Examiner’s rejections (2) and (3) based on Merchant stand on
different footing. The Examiner fails to cite or explain why the acidic
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copper sulfate solution of Merchant necessarily or obviously has a pH falling
within the ranges of claims 1 and 6. The Examiner states that the acidic
copper sulfate solution of Merchant has a pH encompassed by the claimed
pH ranges and that Merchant’s acidic pH treatment solution implies a pH
that encompasses the claimed pH ranges. These unsupported statements are
insufficient to establish that the claimed pH ranges would have been obvious
over Merchant.
The same shortcomings in the Examiner’s analysis regarding
Merchant are applicable to the combination of Merchant in view of Cole.
For the reasons, Appellant has identified error in the Examiner’s § 103
rejections of claims 1-10 over Merchant or Merchant in view of Cole. We
reverse rejections (2) and (3).

Issue (2): Buffer Solution
Appellant argues that Cole fails to teach using a buffer solution as
recited in claims 3 and 8 (App. Br. 5). Appellant contends that Cole only
discloses a buffer solution is used with the non-acidic embodiment (App. Br.
5).
As part of the acidic oxide-producing composition embodiment, Cole
discloses using a buffer solution of sodium hydroxide (FF 3). Contextually,
the Cole buffer disclosure only makes sense if it is read as pertaining to the
acidic oxide-producing composition embodiment. To find otherwise would
make the buffer paragraph a non-sequitur in Cole’s acidic oxide-producing
composition embodiment discussion.
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Because we agree with the Examiner that Cole teaches a buffer with
the composition, Appellant has not identified error in the Examiner’s finding
that Cole teaches the subject matter of claims 3 and 8.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 1-10 over Cole.
We reverse the Examiner’s § 103 rejection of claims 1, 2, 5, and 6
over Merchant.
We reverse the Examiner’s § 103 rejection of claims 3, 4, and 7-10
over Merchant in view of Cole.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

ORDER
AFFIRMED

cam

ARTHUR G. SCHAIER
CARMODY & TORRANCE LLP
50 LEAVENWORTH STREET
P O BOX 1110
WATERBURY, CT 06721