Ex Parte Takizawa et al

Patent Trial and Appeal Board

Jun 28, 2013

12587816 (P.T.A.B. Jun. 28, 2013)

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.
12/587,816 10/14/2009 Yasushi Takizawa 52480-2 CON 3749
7590 06/28/2013
John J. Piskorski
Rohm and Haas Electronic Materials LLC
455 Forest Street
Marlborough, MA 01752
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
06/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUSHI TAKIZAWA
and
MASAAKI IMANARI
____________

Appeal 2012-001473
Application 12/587,816
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
DEBORAH KATZ, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 9 and 11-15. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 The Appellants identify the real party in interest as “The Dow Chemical
Company through its wholly owned subsidiary Rohm and Haas Electronic
Materials, LLC.” Appeal Brief filed June 9, 2011 (“Br.”) at 2.
Appeal 2012-001473
Application 12/587,816

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BACKGROUND
The invention relates to a tin plating solution. Specification (“Spec.”)
1. Representative claim 9 is reproduced below:
9. A tin electroplating solution comprising
one or more compounds for supplying stannous ions
selected from the group consisting of stannous salts of sulfuric
acid, alkane sulfonic acids, and alkanol sulfonic acids,
one or more organic acids selected from the group
consisting of alkane sulfonic acids and alkanol sulfonic acids,
the organic acids are in amounts of 70 g/L to 250 g/L, and
one or more of 2-naphthol-7-sulfonic acid or alkali metal
salts thereof in amounts of 0.2 g/L to 0.5 g/L.
Br. 19 (Claims App’x; paragraphing added for better readability).
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 9 and 13 as unpatentable over Crosby (hereinafter “EP
’575”)2 in view of Schweikher;3
II. Claims 11 and 12 as unpatentable over EP ’575 in view of
Schweikher and further in view of Opaskar;4
III. Claim 14 as unpatentable over EP ’575 in view of Schweikher;
and

2 European Patent Application 0 490 575 A2 published June 17, 1992.
3 U.S. Patent 2,407,579 issued September 10, 1946.
4 U.S. Patent 4,662,999 issued May 5, 1987.
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IV. Claim 15 as unpatentable over EP ’575 in view of Schweikher
and further in view of Hirano (hereinafter “EP ’147”).5

DISCUSSION
In addressing Rejections I and II, the Appellants rely on the same
arguments offered in support of claim 9. Br. 8-12. In addressing Rejections
III and IV, the Appellants rely on the same arguments offered in support of
claim 14. Id. at 13-17. Furthermore, the Appellants’ arguments in support
of claim 9 are substantially identical to the arguments in support of claim 14.
Therefore, our discussion below of claim 9 controls the outcome for all
claims on appeal.
The Examiner found that EP ’575 describes every limitation of claim
9 except “one or more of 2-naphthol-7-sulfonic acid or alkali metal salts
thereof in amounts of 0.2 g/L to 0.5 g/L.” Ans. 5-6. The Examiner further
found, however, that EP ’575 discloses the use of a class of substituted aryl
sulfonic acid compounds that is inclusive of 2-naphthol-7-sulfonic acid. Id.
at 6, 18-19. Additionally, the Examiner found that Schweikher teaches that
2-naphthol-7-sulfonic acid provides various advantages in the
electrodeposition of tin from a fluoride-stannous chloride bath. Id. at 6-7.
Based on these findings, the Examiner concluded that a person of ordinary
skill in the art would have been prompted to use appropriate amounts of

5 European Patent Application EP 0 889 147 A1 published January 7, 1999.
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2-naphthol-7-sulfonic acid in formulating the tin electroplating solution of
EP ’575, thus arriving at a solution encompassed by claim 9. Id. at 7-8.
Relying on the working examples of the Specification, the Appellants
contend that the use of “2-naphthol-7-sulfonic acid or its alkali metal salt
provides a tin deposit which is uniform, has a semi-glossy appearance and
has good solder wettability.” Br. 8. The Appellants also argue that “EP
’575 even fails to suggest the desirability of including 2-naphthol-7-sulfonic
acid or its alkali metal salts” and that it actually prefers phenol sulfonic acid.
Id. at 9-10. Furthermore, the Appellants argue that EP ’575 and Schweikher
cannot be combined because they constitute non-analogous art. Id. at 11-12.
The Appellants’ arguments are not persuasive to show reversible
error. The Examiner’s finding that 2-naphthol-7-sulfonic acid is a known
species that falls within a class of compounds disclosed in EP ’575 is
undisputed. EP ’575 at p. 2, ll. 34-38. Therefore, a person of ordinary skill
in the art would have been prompted to use any known compound within the
class of substituted aryl sulfonic acids described as a suitable component in
the formulation of the tin electroplating composition of EP ’575 (e.g.,
2-naphthol-7-sulfonic acid), especially given the fact that Schweikher
teaches the successful use of the compound in a fluoride-stannous chloride
tin electroplating solution to improve the appearance and other
characteristics of tin deposits. Because 2-naphthol-7-sulfonic acid falls
within the generic description of EP ’575, a person of ordinary skill in the art
would have had a reasonable expectation of success in using the compound
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as a component in EP ’575. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ( “[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”).
See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness
rejection of claims affirmed in light of prior art teaching that “hydrated
zeolites will work” in detergent formulations, even though “the inventors
selected the zeolites of the claims from among ‘thousands’ of compounds.”).
That EP ’575 may disclose a preference for phenol sulfonic acid
(Table 1) rather than 2-naphthol-7-sulfonic acid does not alter the
obviousness analysis. As explained by our reviewing court, “case law does
not require that a particular combination must be the preferred, or the most
desirable, combination described in the prior art in order to provide [the]
motivation [or reason] for the current invention.” In re Fulton, 391 F.3d
1195, 1200 (Fed. Cir. 2004).
The Appellants’ argument that Schweikher teaches away from the
claimed subject matter is unpersuasive. Br. 11. Specifically, the Appellants
urge that “Schweikher is teaching a tin deposit which may be readily
brightened by fusion to a brilliant appearance (Col. 1, lines 28-31), not a
semi-glossy deposit as the tin deposits of the presently claimed invention.”
Id. But the Appellants have not demonstrated (e.g., by comparative testing)
that what Schweikher considers “brilliant” does not fall within the scope of
claim 9, which does not objectively or quantitatively specify any particular
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glossiness (or lack thereof). In any event, the fact that Schweikher’s tin
deposits “may be readily brightened by fusion to a brilliant appearance,” col.
1, ll. 28-32, does not necessarily mean the tin deposit per se exhibits a
“brilliant appearance.”
Next, we consider the Appellants’ Specification examples. The
Appellants’ Specification examples compare compositions containing
sodium 2-naphthol-7-sulfonate against compositions containing other
naphthol sulfonates (e.g., sodium 2-naphthol-6-sulfonate) in terms of plating
film appearance. Spec. 7-9, Table 1. In addition, the Specification
compares Working Example 1 (a composition containing sodium
2-naphthol-7-sulfonate) against Comparative Example 4 (a composition
containing disodium 2-naphthol-3,6-disulfonate) in terms of solder
wettability. Id. at 11, Table 2.
The Appellants’ relied-upon evidence, however, is not persuasive as
objective evidence of nonobviousness sufficient to outweigh the evidence of
obviousness. With respect to plating film appearance, it is impossible for us
to determine whether the differences in the subjective qualitative terms (e.g.,
“uniform” versus “irregular” or “semi-glossy” versus “dull to semi-glossy”)
constitute differences that would have been considered unexpected by one of
ordinary skill in the art. Indeed, the Appellants do not allege, much less
establish, that any of the relied-upon evidence constitute evidence of
unexpected results. The data reported for solder wettability (e.g., “1.6
seconds” versus “5 seconds or longer”) suffer from the same or similar
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problem as the data for plating film appearance. Moreover, the Appellants
have not compared the invention recited in claim 9 against the closest prior
art, which is a tin electroplating solution containing phenol-4-sulfonic acid.
Lastly, we find no merit in the Appellants’ argument that the prior art
references constitute non-analogous art. EP ’575, Schweikher, and the
current application all relate to similar tin electroplating compositions and
are therefore in the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). Moreover, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one.” KSR, 550 U.S. at 417.

SUMMARY
Rejections I–IV are 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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