Ex Parte Pearson et al

Patent Trial and Appeal Board

Aug 10, 2017

13398242 (P.T.A.B. Aug. 10, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/398,242 02/16/2012 Trevor Pearson 2156-686A 3674
34238 7590 08/14/2017
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
patents @ carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte TREVOR PEARSON1
and NICOLE J. MICYUS
Appeal 2017-000038
Application 13/398,242
Technology Center 1700
Before MARKNAGUMO, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Trevor Pearson and Nicole J. Micyus (“Pearson”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1—
14 and 16. We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as MacDermid Acumen, Inc.
(Appeal Brief, filed 16 May 2016 (“Br.”), 2 (un-numbered).)
2 Office Action mailed 29 February 2016 (“Final Rejection”; cited as “FR”).
Appeal 2017-000038
Application 13/398,242
OPINION
A. Introduction3
The subject matter on appeal relates to electro-plating or electrolessly
plating active metal substrates comprising aluminum (Al) or magnesium
(Mg) or their alloys to improve their corrosion resistance while maintaining
high electrical conductivity. Aluminum and magnesium are valued for their
high strength, low density, and, in the case of aluminum, high electrical
conductivity. (Spec. 1,11. 10-12.) The high activity, however, is said to
result in a galvanic couple when Al or Mg is placed in contact with more
noble metals, with the Al or Mg functioning as the anode of the resulting
corrosion cell. Thus, the ’242 Specification teaches, the exposed Al or Mg
substrate may catastrophically corrode. (Id. at 11. 18—22.)
According to the Specification, cadmium plated aluminum connectors
and fasteners have been used because of the galvanic compatibility arising
from the similar corrosion potential of cadmium to many aluminum alloys,
as well as good lubricity, corrosion resistance, and ease of passivation.
(Id. at 11. 24—29.) The toxicity of cadmium (id. at 2,11. 1—2), however, has
led to searches for other materials, including zinc-nickel alloys, which are
said to have conductivity problems, and nickel, which is said to have
significant contact corrosion issues due to a larger corrosion potential than
cadmium (id. at 11. 9—24). In particular, the Specification teaches that in the
nickel:aluminum corrosion cell, nickel would be the cathode, and the
3 Application 13/398,242, Coatings having enhanced corrosion
performance and method of using the same, filed 16 February 2012.
We refer to the “’242 Specification,” which we cite as “Spec.”
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Appeal 2017-000038
Application 13/398,242
aluminum would be anodically dissolved. (Id. at 11. 24—25.) The
Specification teaches further that the anode dissolution can be limited by
forming oxides on the surface. (Id. at 3,11. 5—7.) Cathode corrosion
reactions are said to involve the reduction of hydrogen ions in acid media,
and of oxygen in neutral and alkaline media, and generally to be rate-
limiting because the concentrations of these ions tends to be low. (Id. at
11.7-11.)
Pearson seeks patent protection for a method of plating in which a
corrosion inhibitor is incorporated in the electrodeposited or electrolessly
deposited metal coating in an evenly dispersed manner. (Id. at 4,11. 18—20.)
This goal is accomplished by providing fine particles (average diameter
between about 0.2 pm to about 10 pm; id. at 5,11. 13—15)—most preferably
polytetrafluorethylene (PTFE4) particles that have been coated with a
cationic surfactant that is adsorbed on the particles (id. at 11. 17—19). The
positively charged surfactants are said to cause the particles to deposit
readily with the metal on the cathode, and to inhibit cathodic reduction
reactions of the co-deposited metal, thereby improving the galvanic and
contact corrosion properties of the metal. (Id. at 11. 23—25.)
The Specification reveals that the corrosion inhibitor may be
dissolved in water and the particles contacted with the solution, or the
particles may be treated in situ in the plating bath by adding the corrosion
inhibitor to the plating bath. (Id. at 6,1. 27, to 7,1. 4.) The particles are said
to be advantageously PTFE in applications where contact corrosion
4 Teflon® is the registered trademark of Chemours, a spin-off of DuPont Co.,
for PTFE.
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Application 13/398,242
resistance is important, as in coating electrical connectors, where lubricity
and wear resistance of the coating is also important. {Id. at 7,11. 18—21.)
Claim 1 is representative and reads:
A method of plating a part to improve the corrosion
resistance and contact corrosion properties by plating said
part with a composite coating, wherein
the part is selected from the group consisting of aluminum,
alloys of aluminum, magnesium, alloys of magnesium and
connectors made of metal or plated plastic in contact with
any of the foregoing,
the method comprising the steps of:
d) contacting particles selected from the group consisting
of polytetrafluoroethylene (PTFE), colloidal silica,
colloidal graphite, ceramics, carbon nanotubes, boron
nitride, silicon carbide, nano-diamond, diamond, and
combinations of one or more of the foregoing with
a corrosion inhibitor,
wherein the corrosion inhibitor is adsorbed on the
surface of the particles; and thereafter
e) combining the particles having the corrosion inhibitor
adsorbed thereon with a plating bath comprising metal
ions to be plated to create a dispersion of particles with
the plating bath; and
f) plating the part with the plating bath;
wherein the dispersed particles co-deposit with the plated
metal to form a composite coating directly on the part,
wherein the composite coating contains 10—12% by
weight phosphorus.
(Claims App., Br. 12 (unnumbered); some indentation, paragraphing, and
emphasis added.)
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Application 13/398,242
The Examiner maintains the following grounds of rejection5,6’7:
A. Claims 1—3, 11—14, and 16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Yano,8 Kashiwada,9 and optionally Chiba.10
Al. Claims 4—10 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Yano, Kashiwada, and Chiba.
A2. Claims 4—10 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Yano, Kashiwada, optionally
Chiba, and Bengston.11
5 Examiner’s Answer mailed 15 July 2016 (“Ans.”).
6 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
7 The Examiner has withdrawn a provisional obviousness-type double
patenting rejection in response to a terminal disclaimer, filed with the Brief
(Br. 9), which, the Examiner reports (Ans. 2), has been accepted.
8 Hideo Yano et al., Sliding surface of composite nickel-plated sliding
member, U.S. Patent No. 4,666,786 (1987).
9 Tsuyoshi Kashiwada et al., Hydrodynamic bearing, hydrodynamic bearing
apparatus, U.S. Patent No. 6,447,167 B1 (2002).
10 Tadashi Chiba and Koji Monden, Electroless composite plating solution
and electroless composite plating method, U.S. Patent No. 6,273,943 B1
(2001).
11 John E. Bengston, Electroless plating of nickel onto surfaces such as
copper or fused tungsten, U.S. Patent No. 5,147,692 (1992).
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Application 13/398,242
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Pearson argues that the Examiner erred harmfully in findings of fact
regarding Yano. According to Pearson, “the examiner assumes either that
these properties[12] can be achieved with 5—12% phosphorus without a heat
treatment or that a heat treatment will be used to achieve the desired wear
resistance.” (Br. 6,11. 21—23.) In particular, Pearson urges, “[tjhere is no
teaching or suggestion that the wear resistance (as shown in Figure 2) can be
achieved without a heat treatment {only 0.5—5% phosphorus is successful
without a heat treatment).'1'’ (Br. 6.11. 25—27; emphasis added.) Pearson
explains further that “Yano specifically teaches that when a heat treatment is
used, it causes degradation of the film or change in the size of the member.”
{Id. at 11. 27-28.)
The difficulty with this argument is that Pearson appears to have
misapprehended or overlooked the teachings of Yano. Yano states that an
object of the invention is to obtain “a composite nickel plating film which
imparts excellent wear and lubricating characteristics to a sliding surface and
which is hardened without being subjected to a heat treatment.” (Yano,
col. 1,11. 60—63.) In preferred embodiments of the invention, these goals are
accomplished by providing an electroless nickel plating bath having a
phosphorus concentration of 0.5 to 5% and “suspended fine particles of a
cubic material having high hardness and wear resistance . . . such as silicon
12 The properties to which Pearson refers are hardening of the nickel plating
film with improved wear resistance, and reduced wear of a mating member.
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Application 13/398,242
carbide . . . and fine particles of a soft material having self-lubricating
characteristics and an average particle size of 1 to 10 p such as .. .
Teflon[®].” (Id. at col. 2,11. 1-11.)
Critically, Yano instructs that “[w]hen a heat treatment is not
performed and the plating film has a phosphorus concentration of 5 to 12%,
the film has a hardness of about 600 mHV. However, when the phosphorus
concentration is reduced to 0.5 to 5%, the hardness is increased up to
about 700 mHV.” (Id. at 11. 29-34.) Thus, Yano teaches that high hardness
films having high phosphorus (5—12%) content can be obtained without
heating; but that still higher hardness films can be obtained at lower
phosphorus contents of 0.5 to 5%. Pearson’s statement that “only 0.5—5%
phosphorus is successful without a heat treatment” (Br. 6,11. 26—27) is
contradicted directly by Yano. We conclude that Pearson has not
demonstrated harmful error in the Examiner’s assumption, as Pearson puts
it, “that these properties can be achieved with 5—12% phosphorus without a
heat treatment.” (Id. at 11. 21—22.)13
Pearson’s argument that the references “do[] not teach or suggest that
a composite coating containing 10-12% phosphorus would improve
corrosion resistance and contact corrosion properties” (id. at 6,11. 23—25),
are not persuasive of harmless error, as the recitation of the purpose of a
13 The Examiner’s argument that it would have been obvious to use a heat
treatment to achieve the desired wear resistance by hardening the plated
nickel film is erroneous for the same reasons that Pearson’s arguments are
erroneous, as discussed infra', but the Examiner’s error is ultimately
harmless.
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Application 13/398,242
process claim is of little moment when the steps of the process, as here,
would have been obvious over the applied prior art.
Pearson also misapprehends Yano Figure 2, which shows the prior art
capability for producing high hardness films at different phosphorus contents
of A (0.5 to 5%), B (5—12%), and C (0%). {Id. at 4,11. 37-43.) Such heat-
treatment of films, Yano instructs, “results in degradation in the strength of
the film material and a change in size of the member.” (Yano, col. 1,11. 53—
55.) Figure 2 does not represent inventive films of Yano formed without
hardening by heat treatment. Similarly, Pearson’s remarks concerning the
films plated in a 7% phosphorus bath (Br. 7, last para, (referring to Yano
col. 4,11. 29—31)) are misdirected because, as the Examiner points out
(Ans. 9), Yano presents that as an example of a conventional composite
plating process, not as an example of the failure of Yano’s “no heating”
process at higher phosphorus concentrations.
Pearson’s criticisms of the combination of the teachings of Yano with
those of Kashiwada (Br. 8) are not well-taken. The Examiner finds, and
Pearson does not dispute, that Kashiwada teaches electroless composite
plating baths similar to those taught by Yano.14 In particular, the Examiner
finds that Kashiwada teaches bonding cationic surfactants to PTFE particles
to make them hydrophilic to disperse them in the coating solution. (FR 7.)
In Kashiwada’s words, “it [cationic surfactant] helps adsorb PTFE particles
on the plated surfaces by migrating PTFE particles to the surfaces of the
base materials which are catalytically activated by hypophosphorous acid.”
14 Yano describes bath compositions comprising nickel sulfate,
hydrophosphate, and a wetting agent (Example 1 at col. 3).
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Application 13/398,242
(Kashiwada col. 8,11. 61—64.) As the Examiner reasons (FR 8—9), it would
have been obvious to treat the PTFE particles suggested by Yano with
cationic surfactants as suggested by Kashiwada to obtain similar improved
results. The Examiner has not suggested that all of the teachings of
Kashiwada be incorporated bodily into the process taught by Yano.
Pearson criticizes the Examiner’s reliance on Chiba as failing to cure
the deficiencies of Yano and Kashiwada. (Br. 8, 2d para.) But we have
found no deficiencies that need curing. Moreover, Chiba’s teachings of
electroless composite plating solutions comprising cationic quaternary
ammonium salt surface active agents (e.g., Chiba col. 4,11. 35—40; Table 1,
Example 1 at col. 11), with PTFE particles (id. at col. 11,11. 19-20), and a
preferred range of 7—12% by weight phosphorus (id. at col. 10,11. 33—35)
strengthen the rejections.
Pearson does not present separate arguments for separately rejected
claims 4—10, which therefore stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv) (2015).
C. Order
It is ORDERED that the rejection of claims 1—14 and 16 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).
AFFIRMED
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