Ex Parte Tremmel

Patent Trial and Appeal Board

Feb 28, 2017

13043783 (P.T.A.B. Feb. 28, 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.
13/043,783 03/09/2011 Robert A. Tremmel 2156-669B 9514
34238 7590 03/02/2017
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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 ROBERT A. TREMMEL
Appeal 2015-007357
Application 13/043,783
Technology Center 1700
Before CATHERINE Q. TIMM, MARKNAGUMO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
Opinion for the Board by GUPTA, Administrative Patent Judge.
Opinion dissenting by Nagumo, Administrative Patent Judge.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 11—25 and 27—33. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 In this decision, we refer to Appellant’s Specification filed March 9, 2011
(“Spec.”), the Final Office Action mailed October 16, 2014 (“Final Act.”),
the Appeal Brief filed March 10, 2015 (“App. Br.”), the Examiner’s Answer
mailed June 15, 2015 (“Ans.”), and the Reply Brief filed August 5, 2015
(“Reply Br.”).
2 Appellant identifies the real party in interest as MacDermid Acumen, Inc.
App. Br. 1.
Appeal 2015-007357
Application 13/043,783
The subject matter on appeal relates to semi-bright nickel plating
baths that provide good properties with respect to leveling, ductility and
stress and that are virtually sulfur-free. Spec. 1,11. 10-13. Claim 11,
reproduced below with key limitations emphasized, is illustrative of the
claims on appeal.
11. A method of plating a substrate to produce a sulfur-free
semi-bright nickel deposit thereon, the method comprising the
steps of:
a) providing a nickel plating bath comprising:
i) nickel ions;
ii) a soluble salt of chloroacetic acid, acetic acid,
glycolic acid, propionic acid, benzoic acid,
salicyclic acid or chlorobenzoic acid; and
iii) at least one hexyne diol and at least one
butyne diol; and
b) contacting the substrate with the nickel plating bath
and applying electrical current to produce a sulfur-
free semi-bright nickel deposit on the substrate,
wherein the nickel plating bath is substantially free
of coumarin, substantially free of aldehydes, and
has a pH from 4.1 to 5.0.
App. Br. 9 (Claims Appendix, emphasis added).
DISCUSSION
Appellant does not present arguments contesting the Examiner’s
rejection of claims 29-32 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over GB 1 386
781 (published March 12, 1975) (hereinafter “GB ’781”), the rejection of
claim 33 under pre-AIA 35 U.S.C. § 103(a) over GB ’781 in view of CS 217
2
Appeal 2015-007357
Application 13/043,783
564 B1 (published Oct. 12, 1990) (hereinafter “CS ’564”)3, or the rejection
of claims 29—33 under pre-AIA 35 U.S.C. § 103(a) over CS ’564 in view of
GB ’781. See App. Br. 4—8; see also Reply Br. 2 (stating that “Appellant is
not pursuing claims 29-33 on appeal”). Consequently, Appellant has
waived any argument of error, and we summarily sustain the rejections of
claims 29-33. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection”) and Manual of Patent Examining Procedure (MPEP) § 1205.02
(9th ed., Mar. 2014) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner's answer.”).
The Appellant presents arguments contesting the rejections under
35 U.S.C. § 103(a) of claims 11—25, 27, and 28 over GB ’781 in view of
CS ’564 and over CS ’564 in view of GB ’781. App. Br. 4—8.
Appellant argues the claims as a group in addressing both grounds of
rejection. We choose claim 11 as representative and claims 12—25, 27, and
28 will stand or fall with claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that GB ’781 teaches a coumarin-free aqueous
and substantially aldehyde-free, nickel plating bath that produces semi-
bright sulphur-free nickel electrodeposits that contains nickel ions, a soluble
salt of acetic, glycolic, or propionic acid, and water-soluble acetylenic
3 We will cite to the English-language translation of CS ’564 of record, as
cited by the Examiner.
3
Appeal 2015-007357
Application 13/043,783
compounds including 2-butyn-l,4-diol or 3-hexyn-2,5-diol. Final Act. 8
(citing Office Action mailed Aug. 29, 2014); see also Ans. 3-A; GB ’781, 2,
11. 22—25, 66, 71, 105—127. The Examiner acknowledges that GB ’781 does
not teach or suggest that this nickel bath includes at least one hexyne diol
and at least one butyne diol. Final Act. 9. The Examiner relies on CS ’564
to satisfy this element of claim 11. Final Act. 8.
The Examiner finds that CS ’564 teaches a semi-gloss nickel plating
bath that includes acetylene compounds, such as 2-butyn-l,4-diol and
3-hexyn-2,5-diol. Id. at 9-10 (citing CS ‘564, 3,1. 19 to 4,1. 1). The
Examiner further finds CS ’564 teaches that acetylene compounds promote
the leveling effect of semi-gloss nickel plating baths. Id.
The Examiner finds that one of ordinary skill in the art would have
been motivated to add a second a-alkynol, such as 3-hexyn-2,5-diol, into the
nickel-plating bath disclosed by GB ’781 to further promote the leveling
effect of GB ’781 ’s semi-bright nickel plating bath. See Final Act. 10; see
also Ans. 22.
Appellant argues that a person of ordinary skill in the art would not
have been motivated “to modify the nickel plating bath as described by
[GB ’781] to comprise at least one hexyne diol and at least one butyne diol
because [CS ’564] teaches away from using such a combination.” App.
Br. 6. Specifically, Appellant contends that CS ’564 teaches away from
using a combination of at least one hexyne diol and at least one butyne diol
because it teaches that: (1) a nickel plating bath including hexyn-2,5-diol
and 2-butyn-l,4-diol, as in Example 1, results in poor adhesion, peeling, and
irregular formations after plating on steel plates (citing CS ’564, 6,11. 15—24,
and 7,11. 7—9); (2) adhesion in CS ’564 was only achieved after addition of a
4
Appeal 2015-007357
Application 13/043,783
pyridine derivative, which is not a component of the claimed nickel bath
(citing CS ’564 7,11. 10—19); and (3) the acetylene compounds in CS ’564
were used as brighteners whereas in Appellant’s nickel bath, the acetylene
compounds were found to be useful as levelers. App. Br. 6.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s rejection. Appellant agrees (App. Br. 6,11. 6—9) with the
Examiner’s finding that the nickel plating bath in Example 1 of CS ’564,
includes both hexyn-2,5-diol and 2-butyn-l,4-diol (see Ans. 9-10).
Example 1 did not result in peeling and irregular formations after initially
coating the steel plates with the semi-gloss nickel coating. Rather, peeling
and irregular formations only occurred after the nickel coated plates were
washed with water and left in an open atmosphere for a period generated by
a multiple of 30 seconds and then coated with subsequent semi-gloss nickel
layers. CS ’564, 6,1. 14 to 7,1. 9. To overcome these shortcomings,
CS ’564 teaches adding derivatives of pyridine to the brightening additives,
e.g., 2-butyn-1,4-diol and 3-hexyn-2,5-diol. CS ’564, 4,1. 2 to 5,1. 4.
Appellant does not direct us to, nor are we aware of, any teaching in
GB ’781 that its nickel baths could not include additional ingredients such as
a pyridine derivative. Moreover, CS ’564 teaches that pyridine derivatives
do not have any negative effect on the quality of a semi-gloss coating and
can be added directly to the functional bath. CS ’564, 6,11. 3—8. Thus, one
of ordinary skill in the art concerned with reduced adhesion of subsequent
nickel layers due to exposure to moisture would have included a pyridine
derivative as well as an additional brightening additive in GB ’781 ’s nickel
plating baths. As the Examiner points out, Appellant’s claim 11 are open-
ended and do not exclude pyridine derivatives. Ans. 22.
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Appeal 2015-007357
Application 13/043,783
In addition, GB ’781 teaches a nickel plating bath that includes a-
alkynols, such as 2-butyn-l,4-diol or 3-hexyn-2,5-diol. GB ’781, 2,11. 64—
71. As stated in In re Kerkhoven, “[i]t is prima facie obvious to combine
two compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Thus, based on GB ’781 disclosure, it would have been obvious for one of
ordinary skill in the art to have used one or a combination of a-alkynols in a
nickel plating bath. Moreover, Appellant’s Specification teaches that it was
well-known in the art to use a combination of hexyne diol and butyne diol in
semi-gloss nickel plating baths. Spec. 4,11. 27—29.
Finally, contrary to Appellant’s contentions, CS ’564 teaches that
acetylene compounds, such as 3-hexyn-2,5-diol, are useful as levelers.
CS ’564, 3,11. 19-21 to 4,1. 1 (“Acetylene compounds also promote the
leveling effect of semi-gloss nickel plating baths.”).
Appellant’s argument that “a person of ordinary skill in the art would
not consider using [CS ’564] as a reference since it is concerned with plating
nickel using an aldehyde based nickel bath and additionally teaches that the
combination of diols would be unsuccessful” is misplaced. App. Br. 7. The
Appellant is attacking CS ’564 individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“one cannot show nonobviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”). The Examiner relies on GB ’781 for teaching the use of
acetylene compounds, such as 2-butyn-1,4-diol or 3-hexyn-2,5-diol, in a
nickel plating bath that is free of coumarin, and substantially free of
6
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Application 13/043,783
aldehydes. Ans. 4; see also GB ’781, 2,11. 22—34. Moreover, as discussed
above, CS ’564 does not teach that the combination of diols would be
unsuccessful.
In the Reply Brief, Appellant argues for the first time that Example 1
in CS ’564 uses a hexyne diol in combination with an ethoxylated butyne
diol, and that an ethoxylated butyne diol does not satisfy the “at least one
butyne diol” element of claim 1. Reply Br. 2. Rule 41 states that “ [a]ny
argument raised in the reply brief which was not raised in the appeal brief. .
. will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.” 37 C.F.R. § 41.41(b)(2) (2014). Appellant did
not present its argument regarding the ethoxylated butyne diol in Example 1
of CS ’564 in the Appeal Brief, and has not shown good cause as to why we
should consider the new argument presented in the Reply Brief. The
Examiner did not have an opportunity to address this argument due to the
failure to present it earlier. Ex parte Borden, 93 USPQ2d 1473, 1476 (BPAI
2010) (informative opinion) (“When new issues have been raised by the
Appellant but not addressed by the Examiner, the Board, unless good cause
is shown, will not consider those new issues”). As a result, we decline to
consider Appellant’s new argument raised for the first time in the Reply
Brief regarding CS ’564.
In sum, based on the totality of the appeal record, including due
consideration of Appellant’s arguments, we determine that the
preponderance of the evidence weighs most heavily in favor of obviousness
of the subject matter recited in claims 11—25, 27, and 28 within the meaning
of 35 U.S.C. § 103(a). Accordingly, we sustain the rejections under
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Appeal 2015-007357
Application 13/043,783
35 U.S.C. § 103(a) of claims 11—25, 27, and 28 over GB ’781 in view of
CS ’564 and over CS ’564 in view of GB ’781.
DECISION
For the above reasons, the Examiner’s rejections of claims 11—25 and
27—33 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
8
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. TREMMEL
Appeal 2015-007357
Application 13/043,783
Technology Center 1700
Nagumo, Administrative Patent Judge, dissenting.
I respectfully dissent. As Appellant points out (App. Br. 6,11. 16—24),
CS ’564 teaches nickel plating compositions in which an aldehyde is a
critical component (CS ’564 at 3,11. 17—23; Example 1 contains both
formaldehyde and trichloroacetaldehyde (id. at 6,11. 20-21)). The Examiner
has not, in my judgment, explained why the general teachings of CS ’564
regarding compositions containing aldehydes would have directed the
routineer to add a hexyne-diol to a butyne diol in a composition such as the
ones taught by GB ’761 without the aldehyde.
Put another way, CS ’564, at best, teaches no more than GB ’761,
over which no rejection is before us.
I would therefore, on the present record, reverse.