Ex parte Troup-Packman

Board of Patent Appeals and Interferences

Aug 31, 2000

08191137 (B.P.A.I. Aug. 31, 2000)

Page 1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SUE TROUP-PACKMAN
_____________
Appeal No. 1997-2097
Application No. 08/191,137
______________
ON BRIEF
_______________
Before OWENS, WALTZ, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 9-18 as amended after final rejection. No
other claims remain pending in this application.
BACKGROUND
Appellant's invention relates to a method for plating
Appeal No. 1997-2097
Application No. 08/191,137
Page 2
aluminum alloy parts with iron so as to allegedly obtain a
product that will satisfy adhesion, hardness and abrasion
requirements without the use of copper cyanide and iron
chloride in the process (specification, pages 1 and 2). An
understanding of the invention can be derived from a reading
of exemplary claim 9, which is reproduced below.
9. A process for plating aluminum alloy substrates with iron
consisting of the following steps, each step followed by a
water rinse:
(a) treating said aluminum substrate with a zincate bath
to deposit an immersion layer of zinc metal thereon;
(b) plating on said zincate-treated aluminum surface a
layer of nickel from an electroless nickel bath;
(c) electroplating on said nickel layer a layer of iron
from an iron sulfate bath; and
(d) electroplating on said iron layer a layer of tin from
an alkaline tin bath,
wherein said electroless nickel bath supersedes a copper
cyanide bath and said iron sulfate bath supersedes an iron
chloride bath, said electroless nickel bath and said iron
sulfate bath as a first combination being substantially less
toxic than said copper cyanide bath and said iron chloride
bath as a second combination.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ninagawa et al. (Ninagawa) 4,221,639 Sep. 09,
1980
Appeal No. 1997-2097
Application No. 08/191,137
filed on December 10, 1993.1
Page 3
Loch 4,346,128 Aug.
24, 1982
Shemenski et al. (Shemenski) 4,545,834 Oct.
08, 1985
Schultz et al. (Schultz) 4,567,066 Jan.
28, 1986 Ogata et al. (Ogata) 4,832,800
May 23, 1989
Herbert et al. (Herbert) 5,167,791 Dec.
01, 1992
Carey, II et al. (Carey, II) 5,397,652 Mar. 14,
19951
Yoshizaki 1,436,855 May
26, 1976
(Published UK Patent Application)
Klingenmaier, "Hard Iron Plating of Aluminum Pistons,"
Plating, p.741-746, August, 1974.
Claims 9, 10, 12, 14 and 16-18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Klingenmaier in
view of Loch and Shemenski and optionally further in view of
Herbert. In addition to the above, the examiner further relies
on Schultz with regard to claim 11, Ninagawa with regard to
claim 13, and Ogata, Carey, II or Yoshizaki with regard to
claim 15 in separately stated § 103 rejections of those
appealed claims.
OPINION
Appeal No. 1997-2097
Application No. 08/191,137
We note that it is the examiner who bears the initial2
burden of presenting a prima facie case of obviousness in
rejecting claims under 35 U.S.C. § 103. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
Page 4
Upon review of the opposing arguments and evidence
advanced by the examiner in the answer and appellant in the
brief in support of their respective positions, we conclude
that the examiner has not established a prima facie case of
obviousness for the claimed subject matter. Accordingly, we2
will not sustain the examiner's § 103 rejections for reasons
set forth in appellant's brief and as further discussed below.
Klingenmaier (pages 741 and 742) teaches that aluminum
engine pistons can be plated with iron in a manner such that
the deposited iron is optimally adhered with a desired degree
of hardness for wear resistance. Klingenmaier (page 745,
second column) discloses that high hardness is the most
important property of the deposited iron and may be obtained
using a ferrous chloride bath operated at specified
conditions. Klingenmaier teaches that the aluminum alloy is
first coated with zinc, followed by copper obtained from a
cyanide bath, then iron and finally tin with rinsing between
the coating steps (pages 743 and 744).
Appeal No. 1997-2097
Application No. 08/191,137
Page 5
Loch (column 5, lines 4-64) discloses the plating of
aluminum substrates using a zincate protective coating
followed by an electroless nickel coating (strike) and then an
outer conductive metal plating, with tin being the only
exemplified metal for that outer coating. Loch (column 7,
lines 28-30) discloses that an "[e]lectroless nickel plate was
found to be a superior barrier layer than was electrodeposited
copper" for the obtention of a blister free tin plating of
porous aluminum castings.
Shemenski (abstract) is directed to the formation of a
ternary brass alloy coated steel wire element that may be used
in reinforcing rubber articles. In making that coated steel
wire element, Shemenski teaches that copper, zinc and iron may
be deposited on the steel elements followed by heating to
promote diffusion of the deposited metals to form the brass
coating (column 3, line 58 through column 4, line 3).
Shemenski discloses that the iron layer used in making the
brass coated steel element may be deposited using
electroplating solutions selected from "iron chloride
solutions, iron sulfate solutions, iron fluoroborate
solutions, and ferrous ammonium sulfate solutions" (column 4,
Appeal No. 1997-2097
Application No. 08/191,137
Page 6
lines 43-46).
Herbert (abstract) evidences the formation of
electroformed and/or electroplated iron with good ferro-
magnetic properties using a titanium-palladium alloy as a
preferred electrode. Herbert teaches that various iron salts
may be used to obtain an iron plated substrate including
ferrous chloride, ferrous ammonium sulfate, ferrous
fluoroborate and ferrous sulfate (column 2, line 66 through
column 3, line 6). Aluminum plated with nickel is one of
several mandrel materials that is disclosed by Herbert as
being suitable for the iron electrodeposition (column 5, line
63 through column 6, line 5).
The examiner correctly recognizes that Klingenmaier does
not disclose the use of a nickel plating step using an
electroless nickel bath prior to electroplating the iron layer
and the use of an iron sulfate bath for depositing the iron as
called for by the appealed claims herein (answer, page 4).
However, according to the examiner (answer, pages 5-7):
[I]t would have been obvious to one of ordinary
skill in the art to substitute the Ni plating of
Lock for the Cu strike coating of Klingenmaier,
because of the advantages of superior interfacing
taught by Lock in his comparison of the two
Appeal No. 1997-2097
Application No. 08/191,137
Page 7
coatings, and Ni would have been expected to be a
suitable intermediate layer for Klingenmaier’s Fe
coating because Ni and Fe are well known for forming
alloys, hence they would have been expected to form
a compatible interface where no adhesion problems
would have been expected . . . . The relative
toxicity of a solution is an inherent property and
if the particular nickel, bath is less toxic than
Klingenmaier’s Cu cyanide, that is just an
additional reason for substituting Ni plating for
the Cu coating, as would be recognized by a
responsible and ordinary practitioner in the art.
While Klingenmaier taught that the FeCl bath2
proved optimum for deposition of hard Fe on Cu, one
of ordinary skill in the art would recognize that
for a different intermediate layer, i.e. Ni, routine
experimentation with known Fe plating solutions
would have been needed to re-optimize as one would
not expect different elements to behave identically
with respect to Klingenmaier’s previous
optimization. Shemenski et al. teach (abstract)
various Fe electroplating solutions . . . that can
be used equivalently for deposition on metal . . . .
It would have been obvious to one of ordinary skill
to consider such teaching of alternate and
equivalent Fe sources for electroplating, when
optimizing through routine experimentation as
discussed above. . . .
. . . Herbert illustrates electroplating iron,
using baths containing iron salts . . . onto
electrically conductive substrates, which include Al
plated with Ni . . . . Hence, it would have been
abundantly obvious to one of ordinary skill that
given Lock’s teachings as applied to Klingenmaier,
one would have expected the Fe to be electroplated
on the Ni undercoat with acceptable adhesion, as the
prior art explicitly shows that it is known to do
so. (emphasis in original).
The difficulty we have with the examiner's stated
Appeal No. 1997-2097
Application No. 08/191,137
Page 8
position stems, in part, from the fact that the examiner has
not pointed to any particularized teachings of the applied
references which would have supported the examiner's reasoning
and suggested that a skilled artisan would have been led
thereby to substitute a nickel layer obtained from an
electroless nickel bath for the copper layer of Klingenmaier
coupled with a substitution of an iron sulfate bath for the
iron chloride bath of Klingenmaier given Klingenmaier’s
particular interest in forming an iron plated aluminum alloy
that had the requisite properties, such as hardness, necessary
for an aluminum engine piston. We particularly note that the
examiner has not shown where Loch evidences any concern with a
process for forming an iron plated aluminum alloy, let alone
such a plated alloy that would have the requisite hardness
property of concern to Klingenmaier. Nor has the examiner
shown how Shemenski's teachings regarding the formation of a
ternary brass coated steel wire element for reinforcing rubber
articles or Herbert's concern with electrodepositing iron with
improved ferromagnetic properties would have been viewed by a
skilled artisan as suggesting an equivalence of iron baths for
the rather dissimilar process and product of Klingenmaier.
Appeal No. 1997-2097
Application No. 08/191,137
Page 9
While the examiner suggests that a desire to avoid toxicities
that would be associated with use of copper cyanide and iron
chloride may have furnished a motivation for the proposed
modification, we observe that the examiner has not shown where
the applied references evince such a concern with the relative
toxicity of copper cyanide and iron chloride that would have
suggested the particularly proposed modification especially
given the need for specific alloy properties as set forth in
Klingenmaier.
In order for a prima facie case of obviousness of the
claimed subject matter to be established, the prior art as
applied must be such that it would have provided one of
ordinary skill in the art with both a suggestion to carry out
appellant's claimed invention and a reasonable expectation of
success in doing so. See In re Dow Chemical Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). "Both the
suggestion and the expectation of success must be founded in
the prior art, not in the applicant's disclosure." Id. The
mere possibility that the prior art could be modified such
that appellant's invention would result, is not a sufficient
Appeal No. 1997-2097
Application No. 08/191,137
Page 10
basis for a prima facie case of obviousness. See In re
Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir.
1996); In re Ochiai, 71 F.3d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
From our perspective, the examiner has not convincingly
explained where the motivation may be found in the combined
teachings of the references to support the modifications of
Klingenmaier as proposed by the examiner. This motivation
appears to come solely from the description of the invention
at issue herein in appellant's specification. Thus, on this
record, we conclude that the examiner used impermissible
hindsight when rejecting the claims in the manner set forth in
the answer. See W.L. Gore & Associates v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). We note that the
additional references applied against claims 11, 13 and 15 do
not cure the above-noted deficiencies. Accordingly, on this
record, we will not sustain the examiner's stated rejections.
Appeal No. 1997-2097
Application No. 08/191,137
Page 11
CONCLUSION
The decision of the examiner to reject the appealed
claims under 35 U.S.C. § 103 as stated in the separate
rejections set forth in the answer is reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK:lmb
Appeal No. 1997-2097
Application No. 08/191,137
Page 12
HUGHES ELECTRONICS CORPORATION
PATENT DOCKET ADMINISTRATION
BLDG. CO1, MAIL STOP A 126
P.O. BOX 80028
LOS ANGELES, CA 90080-0028
APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ
APJ
DECISION: ED
Prepared By:
DRAFT TYPED: 22 Aug 01
FINAL TYPED: