Ex parte NAGY

Board of Patent Appeals and Interferences

Jul 29, 1997

07982999 - (D) (B.P.A.I. Jul. 29, 1997)

Application for patent filed November 30, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALBERT E. NAGY
__________
Appeal No. 95-0044
Application 07/982,9991
__________
ON BRIEF
__________
Before KIMLIN, JOHN D. SMITH, and PAK, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0044
Application 07/982,999
2
This is an appeal from the final rejection of claims 1-7, 9,
and 10, all the claims remaining in the present application.
Claim 1 is illustrative:
1. A process for electrolytic treatment of copper foil,
comprising the steps of:
(A) applying a voltage across an anode and cathode, wherein
the anode and cathode are in contact with an electroplating
composition containing a gelatin component;
(B) removing organic particulate matter by contacting the
electroplating composition containing the organic particulate
matter with macroreticular resin; and
(C) electrolytically treating said copper foil.
The examiner relies upon the following references as
evidence of obviousness:
Meitzner et al. 4,486,313 Dec. 4, 1984
(Meitzner)
Herbert 4,501,646 Feb. 26, 1985
DiFranco et al. 5,171,417 Dec. 15, 1992
(DiFranco)
Appellant’s claimed invention is directed to a process for
Appeal No. 95-0044
Application 07/982,999
3
the electrolytic treatment of copper foil wherein the
electroplating composition contains a gelatin component. The
process produces a gelatin by-product in the form of an organic
particulate which causes defects in laminate boards. Appellant’s
process removes the organic particulate from the electroplating
composition by providing contact between the electroplating
composition and a macroreticular resin.
Appealed claims 1-7, 9, and 10 stand rejected under
35 U.S.C. § 112, second paragraph. In addition, the appealed
claims stand rejected under 35 U.S.C. § 103 as being unpatentable
over Herbert in combination with DiFranco and Meitzner.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejections.
We consider first the rejection under § 112, second
paragraph. According to the examiner, claim 1 is indefinite
because it is not clear where the organic particulate matter is
removed from and, also, “where the foil is or how the foil
participates in the overall process during the particulate
Appeal No. 95-0044
Application 07/982,999
4
removal process.” (Page 6 of Answer). However, we fully concur
with appellant that when the claim language is read in light of
the present specification, as it must be, it is abundantly clear
that the organic particulate matter is removed from the
electroplating composition. Furthermore, as is evident from the
prior art cited in the present specification and applied by the
examiner, one of ordinary skill in the art would have no
difficulty in understanding how the copper foil is processed in
the claimed electrolytic treatment. Regarding the examiner’s
statement that “[c]laim 1 as written does not specifically state
that the gelatin is the organic particulate matter that Appellant
is trying to remove from the bath,” (page 10 of Answer), it is
clear from the present specification that it is not gelatin, but
a gelatin by-product, that is the organic particulate matter.
We now turn to the examiner’s § 103 rejection. We find no
error in the examiner’s conclusion that the combined teachings of
Herbert and DiFranco evidence that it was known in the art to
electrolytically treat copper foil with an electroplating
composition containing a gelatin component. However, as
Appeal No. 95-0044
Application 07/982,999
5
maintained by appellant, neither reference teaches that the
gelatin produces an organic particulate material as a by-product
that must be removed. Also, neither Herbert nor DiFranco teach
or suggest contacting the electroplating composition with a
macroreticular resin, as required by the appealed claims. While
appellant’s specification readily acknowledges that Meitzner
discloses appellant’s macroreticular resin as useful for removal
of ionic solutes and organic fluids from fluids, Meitzner
provides no suggestion of employing the macroreticular resin in
an electrolytic process of the type claimed. Consequently, we
agree with appellant that the only motivation for utilizing the
macroreticular resin of Meitzner in the processes of Herbert and
DiFranco arises from appellant’s specification. By now it is
axiomatic that the use of such impermissible hindsight cannot
support a rejection under 35 U.S.C. § 103.
In conclusion, based on the foregoing, the examiner’s
Appeal No. 95-0044
Application 07/982,999
6
decision rejecting the appealed claims is reversed.
REVERSED
)
Edward C. Kimlin )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
John D. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Chung K. Pak )
Administrative Patent Judge )
Appeal No. 95-0044
Application 07/982,999
7
Walter C. Danison, Jr.
Benesch, Friedlander, Coplan & Arnoff
2300 BP America Building
200 Public Square
Cleveland, OH 44114-2378