Ex Parte Moore

Board of Patent Appeals and Interferences

Mar 16, 2010

10440381 (B.P.A.I. Mar. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMIE MOORE
____________

Appeal 2009-005974
Application 10/440,381
Technology Center 1700
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Decided: March 16, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
CHUNG K. PAK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 8 through 11, all of the claims pending in
the above-identified application. We have jurisdiction under 35 U.S.C. §§ 6
and 134.
Appeal 2009-005974
Application 10/440,381

STATEMENT OF THE CASE
The subject matter on appeal is directed to “[a]n electroforming
system adapted to fabricate a fractal antenna” (Spec. 3, ll. 2-3 and claim 8).
This electroforming system is illustrated in Figure 3:

The electroforming system 300 includes an electrical source 302, an
electrolyte solution 304 in a container 306, a cathode-mandrel 308 having a
mold 310 in the shape of a fractal antenna and an anode 312 formed of a
metal that will form the fractal antenna, such as nickel (Spec. 6, ll. 14-21).
“The electrolyte solution 304 contains salts of the metal forming the anode
304” (Spec. 6, ll. 21-22).
Details of the appealed subject matter are recited in representative
claim 8 reproduced from the Claims Appendix to the Appeal Brief (“App.
Br.”) filed August 21, 2008 as shown below:
8. An electroforming system adapted to fabricate a fractal antenna,
comprising:

an electrolyte solution containing salts of a metal used to form
the fractal antenna;
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an anode immersed in the electrolyte solution, the anode being
made of the metal used to form the fractal antenna;

a cathode adapted to form the fractal antenna and on which
metal from the anode is deposited to form a fractal antenna when
electricity is applied to the system, the cathode having a mold, the
mold having a shape corresponding to the fractal antenna; and

an electrical source to provide electricity to the system.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 2 and 3 of the Answer.
(“Ans.”) dated October 16, 2008:
Louzos 3,684,480 Aug. 15, 1972
Lam 4,773,971 Sep. 27, 1988
C. Puente et al, Multiband properties of a fractal tree antenna generated by
electrochemical deposition, in 32 “Electronics Letters” No. 25, 2298-2299
(Dec. 5, 1996) (hereinafter referred to as “Puente”).

Appellants request review of the Examiner’s § 103(a) rejection of
claims 8 through 11 as unpatentable over the combined disclosures of Lam,
Louzos, and Puente (App. Br. 3).1
Appellants traverse the Examiner’s § 103(a) rejection, arguing that
one of ordinary skill in the art, armed with the knowledge taught by Lam,
Louzos, and Puente, would not have been led to modify the electroforming

1 Appellants argue the limitations of claim 8 only (App. Br. 3-5 and Reply
Br. 1-7). Therefore, for purposes of this appeal, we select claim 8 to decide
the propriety of the Examiner’s § 103(a) rejection set forth in the Answer.
See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to the same
ground of rejection are argued as a group by appellant, the Board may select
a single claim from the group of claims that are argued together to decide the
appeal with respect to the group of claims as to the ground of rejection on
the basis of the selected claim alone.”).

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system taught by Lam for the purpose of producing a fractal antenna within
the meaning of 35 U.S.C. § 103 (App. Br. 3-5 and Reply Brief (“Reply Br.”)
filed December 16, 2008, 1-7).
ISSUE AND CONCLUSION
The dispositive question is: Would the collective teachings of Lam,
Louzos, and Puente have led one of ordinary skill in the art to the claimed
electroforming system within the meaning of 35 U.S.C. § 103(a)? On this
record, we answer this question in the affirmative.
RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Lam’s Figure 7A illustrates an electroforming system as shown
below:

This electroforming system includes an electroform bath 7-1, a cathode
mandrel 7-9 having a mold defining a pattern and a source material anode
plate 7-3 for supplying the electroforming material, such as nickel, and an
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electrical source connected to the cathode mandrel 7-9 and the source
material anode plate 7-3 (col. 4, ll. 54-65, together with col. 4, ll. 17-29).
2. Appellants do not dispute the Examiner’s finding that Lam’s Figure 7
also shows the cathode mandrel 7-9 and the source material anode plate 7-3
immersed in an electrolyte solution. (Compare Ans. 3, with App. Br. 3-6
and Reply Br. 1-7; see also the dotted line in the electroforming bath in
Figure 7A, which indicates an electrolyte solution).
3. Lam, like Appellants, teaches making a reusable thin film cathode
mandrel having a mold for its electroforming system (Compare Lam, col. 1,
l. 65 to col. 2, l. 36 and col. 3, ll. 31-62, with Spec. 5, l. 8 to Spec. 6, l. 13).
4. Lam, like Appellants, teaches that its electroforming process involves
transferring a metal, such as nickel, from the anode metal (nickel) plate only
to the conductive area (mold) of the reusable thin film cathode mandrel until
a desired deposition thickness is produced, so as to produce a desired device
duplicative of the patterns defined by the mold (col. 3, l. 61 to col. 4, l. 6).
5. Lam teaches, at column 2, lines 37-55, that its electroforming system
employing this reusable thin film cathode mandrel
has the advantage of producing high quality precision devices.
This advantage results from the defect free surface of the thin
film and the precision molds created by standard
photolithography and etching processes. Additionally, the thin
film mandrel has the advantage of producing high quality
precision devices cheaply. This advantage results from the low
cost procedures used to produce the mandrel and the low cost
procedures for using the mandrel. The thin film mandrels are
capable of producing a wide variety of devices. Devices
traditionally manufactured by precision machining techniques
such as laser machining, mechanical machining, and chemical
etching can be manufactured by an electroforming process
using the thin film mandrel. The electroforming process using
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the thin film mandrel produces devices having the same or
better quality as those produced by precision machining and the
thin film process produces the devices at a much lower cost.

6. Lam teaches that its electroforming process is an electrodeposition
process (abstract).
7. Appellants also do not dispute the Examiner’s finding that
“electrodeposition encompasses electroforming.” (Compare Ans. 3. with
App. Br. 3-6 and Reply Br. 1-7.)
8. Lam does not specifically mention that its electroforming system
comprising a reusable thin film cathode mandrel having a mold is used for
producing fractal antennas. See generally Lam.
9. Appellants acknowledge that fractal antennas are known to be made
by chemical etching and are known to be “twenty-five percent more efficient
than the rubbery stub-like antennas found on most of today’s cellular
telephones” (Spec. 2).
10. Appellants do not argue that the electroforming material, such as
nickel, taught by Lam is not known to be a fractal antenna material. (See
App. Br. 3-6 and Reply Br. 1-7.)
11. Puente illustrates various fractal tree antennas requiring high quality
precision and mentions employing electrodeposition for producing such
antennas (pp. 2298-2299).
12. Louzos teaches (col. 3, l. 74 to col. 4, l. 14) that:
To carry out the electroformation process . . . , the
external circuit is closed suitably by means of a switch and
electrical current is allowed to flow through the cell. The anode
is consumed during the electrolysis forming nickel ions in the
electrolyte and depositing nickel at the cathode . . . .
Essentially all of the electrical current flowing through the cell
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is utilized in forming the nickel deposit. The cell electrolyte is
invariant in that the anode is continuously replenishing nickel
ions into the electrolyte as nickel ions are removed at the
cathode.

13. Louzos also teaches (col. 4, l. 71 to col. 5, l. 19 that:
In the practice of the invention, the electrolyte may
contain any divalent nickel salt whose principal requirement is
that it be soluble in a solvent of high dielectric constant
resulting in a solution of sufficient ionic conductivity to permit
the maintenance of at least the minimum cathode current
density necessary for electroforming the nickel fibers of the
invention.
. . . .
The concentration of the soluble nickel salt in the
electrolyte solution should be fairly high in order to promote
the electroformation process and to maintain a sufficiently high
conductivity.

PRINCIPLES OF LAW
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 417-18 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ. [(Emphasis added.)]

See also In re Bozek, 416 F.2d 1385, 1390, (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”).
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The common knowledge attributable to one of ordinary skill in the art
includes what was admittedly known in the art by Appellants at the time of
the invention. See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The
admitted prior art in applicant’s Specification may be used in determining
the patentability of a claimed invention.); see also In re Davis, 305 F.2d 501,
503 (CCPA 1962).
The Supreme Court also instructs us that:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product . . . of
ordinary skill and common sense.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421.

ANALYSIS
As indicated supra, Lam teaches an electroforming system comprising
a cathode mandrel having a mold defining a pattern and a source material
anode plate for supplying the electroforming material, such as nickel, a
known fractal antenna forming metal, immersed in an electrolyte solution in
an electroform bath and an electrical source connected to the cathode
mandrel and the source material anode plate.
Lam does not specifically mention that its electroforming system is
adapted to fabricate a fractal antenna (i.e., a cathode mandrel having a mold
having a shape corresponding to a fractal antenna). However, Lam not only
teaches using nickel, a known fractal antenna forming metal, in its
electroforming system as an electroforming metal from an anode plate, but
also teaches various advantages of employing its electroforming system in
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producing a wide variety of high quality precision devices, which are
inclusive of fractal antennas. More importantly, Puente illustrates various
fractal tree antennas requiring high quality precision and mentions
employing electrodeposition for producing such antennas. According to
Lam, its electroforming process is an electrodeposition process. Appellants
also do not dispute the Examiner’s finding at page 3 of the Answer that
“electrodeposition encompasses electroforming.”
Given the above teachings, one of ordinary skill in the art would have
been led to modify the electroforming system taught by Lam for the purpose
of producing fractal antennas via electrodeposition (i.e., shaping the mold of
Lam’s reusable cathode mandrel in the form of a desired fractal antenna),
with a reasonable expectation of successfully obtaining the low cost and
high quality precision fractal antennas. This is especially true in this case
since there was a significant known market demand for fractal antennas in
the cellular phone industry as acknowledged by Appellants.
As to the claimed inclusion of salts of a metal used to form the fractal
antenna in an electrolyte solution, Lam, as indicated, supra, teaches a nickel
anode plate as a source material for supplying or transferring the
electroforming material (nickel) to the cathode mandrel having a mold
through an electrolyte solution. Louzos explains that as a nickel anode
supplies nickel to a cathode mandrel through an electrolyte solution, it
continuously replenishes nickel ions into the electrolyte solution, thus
indicating the presence of nickel salts (salts of a metal used to form the
fractal antenna) inherently in the electrolyte solution taught by Lam during
its electroforming process. In any event, Louzos also teaches (col. 4, l. 71 to
col. 5, l. 19) that:
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In the practice of the invention, the electrolyte may
contain any divalent nickel salt whose principal requirement is
that it be soluble in a solvent of high dielectric constant
resulting in a solution of sufficient ionic conductivity to permit
the maintenance of at least the minimum cathode current
density necessary for electroforming the nickel fibers of the
invention.
. . . .
The concentration of the soluble nickel salt in the
electrolyte solution should be fairly high in order to promote
the electroformation process and to maintain a sufficiently high
conductivity.

It follows that one of ordinary skill in the art would have also been led
to employ soluble nickel salts in the electrolyte solution used in an
electroforming system employing a nickel based anode for supplying nickel
to a cathode mandrel, such as that suggested by Lam and Puente above, with
a reasonable expectation of successfully providing a sufficiently high
conductivity to the electrolyte solution for promoting the electroforming
process.
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103.

ORDER
In view of the foregoing, the decision of the Examiner is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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