Middeke, Hermann et al.

Patent Trials and Appeals Board

Aug 3, 2020

2019001285 (P.T.A.B. Aug. 3, 2020)

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.
14/379,502 08/19/2014 Hermann Middeke ATODP0156WOUS 8838
23908 7590 08/03/2020
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERMANN MIDDEKE, ENRICO KUHMEISER, and
STEVE SCHNEIDER
Appeal 2019-001285
Application 14/379,502
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 9, 11, 12, 14, 15, 17, 19, and 20.
Claims 4, 6–8, 10, 13, 16, and 18 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Atotech Deutschland
GmbH. Appeal Brief (“Appeal Br.”) filed October 9, 2017, 2.
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CLAIMED SUBJECT MATTER
The claims are directed to processes for metallizing an electrically
non-conductive plastic surface of an article comprising, prior to metallizing,
etching the surface with an acidic permanganate etching solution, treating
the etched surface with a reducing agent solution to remove MnO2, treating
the etched and treated surface with a Group I or VIII transition metal colloid
or compound solution. Claims 1 and 17.
Appellant discloses that prior art metallizing processes etched with
chromosulphuric acid or alkaline permanganate solutions. Specification
(“Spec.”) 1:19–32. However, Appellant notes that chromosulphuric acid is
toxic and metallizing acrylonitrile-butadiene-styrene (“ABS”) copolymer
after etching with alkaline permanganate solutions failed to provide
sufficient metal to plastic adhesion. Id. at 1:26 and 2:1–4. Appellant also
discloses that it was known to etch with acidic permanganates solutions that
use very low permanganate and very high acid concentrations, but notes that
these solutions are unstable, yield low adhesion strengths, form difficult to
remove colloidal Mn(IV) species, or require costly and inconvenient
Mn(VII) sources. Id. at 2:7–24. As such, Appellant teaches that toxic
chromosulphuric acid is still being used for etching plastic surfaces prior to
metallization. Id. at 2:26.
Therefore, the invention relates to plastic surface metallization
processes using an acidic permanganate etching solution having higher
permanganate and lower acid concentrations. Spec. 4:34–35. Moreover, in a
preferred embodiment, the invention includes treating the etched plastic
surface with a reducing agent solution to remove MnO2 prior to the Group I
or VIII transition metal colloid or compound treatment step. Id. at 12:6–9.
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Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. Process for metallizing an electrically nonconductive plastic
surface of an article, comprising the process steps of:
A) etching the plastic surface with an acidic etching
solution;
B) treating the etched plastic surface with a solution of a
metal colloid or of a compound of a metal, the metal being
selected from the metals of transition group I of the Periodic
Table of the Elements and transition group VIII of the Periodic
Table of the Elements, and
C) metallizing the treated plastic surface with a
metallizing solution;
characterized in that the etching solution comprises a
source for permanganate ions at a concentration in the range of
30 g/1 to 100 g/1, and an acid selected from sulphuric acid,
nitric acid and phosphoric acid in a concentration of 0.02–0.6
mol/1 based on a monobasic acid and the source for
permanganate ions is selected from alkali metal permanganates,
wherein the following further process step is performed
between process steps A) and B):
Ai) treating the plastic surface in a solution comprising a
reducing agent for manganese dioxide to remover manganese
dioxide.
Independent claim 17 recites a similar metallization process as
claim 1, but further requires aqueous acid treatment and electroless
metallizing steps after the Group I or VIII transition metal colloid or
compound treatment step and before the final metallizing step.
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Courduvelis et al. US 4,820,548 Apr. 11, 1989
Allardyce et al. US 6,265,020 B1 July 24, 2001
Bengston US 2005/0199587 A1 Sept. 15, 2005
Poole et al. US 2008/0038450 A1 Feb. 14, 2008

REJECTIONS
The Examiner maintains (Ans. 3) the following grounds of rejection:
1. Claims 15 and 19 under 35 U.S.C. § 112, second paragraph, as
indefinite;
2. Claims 1–3, 5, 9, 11, 12, 14, 15, 17, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Poole in view of Bengston, and as
evidenced by Allardyce; and
3. Claims 12, 14, 15, 17, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Poole in view of Bengston and Courduvelis.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections. We offer the following for
emphasis only.
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Rejection 1: Indefiniteness
The Examiner maintains the rejection of claims 15 and 19 under 35
U.S.C. § 112, second paragraph, as indefinite. Final Office Action (“Final
Act.”) dated May 26, 2017, 3; see Examiner’s Answer (“Ans.”) dated
October 1, 2018, 3 (“Every ground of rejection set forth in the [Final Office
Action] is being maintained by the [E]xaminer except for [withdrawn
rejections].”) The Examiner finds that each of claims 15 and 19 depend from
cancelled claims and, therefore, are unclear and indefinite. Final Act. 3.
Appellant does not dispute the basis of this rejection. Appeal Br. 17.
Moreover, the Examiner’s findings are facially correct, as Appellant
concedes. Id. Accordingly, we summarily affirm this rejection.
Rejections 2 and 3: Obviousness
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1–3, 5, 9, 11,
12, 14, 15, 17, 19, and 20 as unpatentable over Poole, Bengston, and
Allardyce and claims 12, 14, 15, 17, 19, and 20 as unpatentable over Poole,
Bengston, and Courduvelis. Final Act. 5–10.
Appellant argues all the pending claims as a group and does not
separately argue these two rejections.2 We have considered these arguments
to the extent applicable to each ground of rejection.
The Examiner finds that Poole discloses a process of metallizing a
non-conductive plastic surface, comprising sequentially etching the surface
with an etching solution, such as sulfuric acid, chromic acid, alkaline

2 With regard to Courduvelis, Appellant merely argues that this reference
fails to remedy deficiencies in the combination of Poole and Bengston, with
or without Allardyce. Appeal Br. 10, 15. Because we find no such deficiency
in the Poole and Bengston combination, we need not further discuss
Courduvelis in our Decision.
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permanganate, or plasma etching, treating the etched surface with a
neutralizer such as sulfuric acid and hydrogen peroxide, activating the
neutralized surface with a Group VIII transition metal colloid or compound
(Pd) solution, and metallizing the activated surface with a metallizing
solution. Final Act. 5. The Examiner acknowledges that Poole fails to teach
use of an acidic permanganate etching solution, but finds that Bengston
teaches an acidic permanganate etching solution, as an alternative to chromic
acid and sulfuric acid, for etching a plastic surface prior to metallization. Id.
at 5–6. The Examiner concludes that it would have been obvious to use an
acidic permanganate etching solution in Poole’s process because Bengston
teaches that such an etching solution is a known and successful substitute for
toxic chromic acid for use in a plastic metallization process. Id. at 6.
The Examiner further finds, without dispute, that Bengston teaches a
concentration of permanganate in the etching solution of 20–70 g/l, which
overlaps the claimed range of 30–250 g/l, and teaches a wide range of acid
concentration to render the solution either acidic or alkaline, with a
preference for acidic. Final Act. 6–7. The Examiner reasons, without
dispute, that the ordinary artisan would have recognized that acid
concentration is a result effective variable, wherein lower pH values
correspond to greater acid concentrations,3 and concludes that it would have
been obvious through routine optimization to arrive at the claimed acid
concentration. Id. at 7.
Appellant argues that Poole fails to teach both the steps of etching the
plastic surface with permanganate and removing manganese residues.

3 The Examiner takes Official Notice of this relationship, which Appellant
does not dispute.
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Appeal Br. 7–9. Instead, Appellant urges that Poole never uses the term
“etch” with respect to alkaline permanganate. Reply Br. 2. Appellant
contends that Poole teaches use of an alkaline permanganate for desmearing
and conditioning drilled holes, rather than for etching a plastic surface.
Appeal Br. 7. Appellant further asserts that Poole uses alkaline
permanganate as a promoter following a solvent swell desmear. Id.4
Appellant also contends that Poole only teaches use of a neutralizer after the
promoter “to neutralize any residues left by the promoter,” but does not
teach what these residues are. Appeal Br. 8–9.
These arguments are not persuasive of reversible error because the
Examiner establishes a reasonable basis that Poole’s promoter treatment is
inherently an etching process. In particular, the Examiner explains that
Poole’s promoters include known etchants including sulfuric acid and
chromic acid, which would necessarily etch the plastic surface, as evidenced
by Bengston. Ans. 3–4. We also note that Appellant discloses that alkaline
permanganate solutions were a known alternative to such acids for etching
plastic surfaces. Spec. 1:26–36. We are not persuaded that the promoter does
not etch merely because its use follows a desmearing step of Poole’s
process. Thus, the record before us includes sufficient evidence to evince
that, although not expressly teaching that the promoter etches the plastic
surface, Poole’s promoter nonetheless necessarily performs an etching
function.

4 Appellant also argues that although Poole teaches microetching the through
holes, this microetching is of the exposed metal in the holes and does not use
acidic permanganate. Appeal Br. 8. However, we need not address this
argument because the Examiner states that the rejection does not rely on
Poole’s microetching step as the recited etching of claim 1. Ans. 4.
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Nor are we persuaded of reversible error in the Examiner’s finding
that Poole’s neutralizer inherently would remove manganese dioxide residue
after the etching (promoter) treatment. The Examiner finds that, when
treating with promoters (etchants) such as chromic acid and permanganate,
the residues that Poole neutralizes would be chromium or permanganate
oxidant residues, as evidenced by Bengston. Ans. 6; Bengston ¶ 23
(“Regardless of whether the oxidant solution is a hexavalent chromium
solution or a permanganate solution, contact with the solution leaves an
oxidant residue on the surface of the plastic part that acts to poison the
catalytic surface, interfering with metal deposition.”). The Examiner also
finds that Appellant notes the same problem (formation of manganese
dioxide) caused by oxidants and uses the same solution of sulfuric acid and
hydrogen peroxide that Poole uses as a neutralizer. Spec. 11:32–33; see also
id. at 12:11–31; Poole ¶ 46. Because Poole uses the same or similar etchant
or oxidant and reducing or neutralizing agent as Appellant, the record
provides sufficient evidence to evince that, although not expressly described
as removing manganese dioxide from the etched plastic surface, Poole’s
neutralizer nonetheless necessarily performs this manganese dioxide
reducing and removing function.
Appellant next argues that Bengston teaches away from removal of
the manganese dioxide residue formed on the etched plastic surface. Appeal
Br. 9–10. Appellant asserts that Bengston teaches that the manganese oxide
residue should not be removed, and discloses an example resulting in no
metallization plating when it was removed. Id. at 9. Because the rejection
relies on Bengston’s acidic permanganate etching solution, Appellant
contends that an ordinary artisan would follow Bengston’s teaching not to
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remove the manganese residue, thus teaching away from Appellant’s recited
manganese residue removal step after the etching step. Id. at 9–10.
This argument is not persuasive because, as the Examiner finds (Ans.
6–7), although Bengston teaches that the manganese residue need not be
removed (or reduced), Bengston teaches that prior art processes using
potassium permanganate require removal (reduction) of these residues prior
to the activation treatment step. Id. at 7. In this regard, we note that
Bengston teaches that it was surprisingly found that traditional Pd/Sn colloid
activators should not be used because they tend to remove the manganese
oxide residue. Bengston ¶ 42. Rather, Bengston uses a non-Sn/Pd and an
amine complexor as the activator. Id. ¶ 43. Therefore, the Examiner finds
that removal of the manganese residues depends on the metallization process
used. Ans. 7. Appellant fails to dispute or otherwise address this finding.
The Examiner explains that the rejection relies on Bengston solely for its
teaching of acidic permanganate as an alternative to sulfuric acid and
chromic acid etching solutions, and not for Bengston’s metallization process,
including the non-Sn/Pd activators. Id. We note that Bengston’s Example 3,
resulting in no plating, uses both a manganese residue removal step and
Bengston’s non-Sn/Pd activator. Bengston ¶ 65. Bengston fails to
demonstrate that an ordinary artisan would not have reasonably expected
that a manganese residue removal step and Poole’s Pd activator would result
in acceptable plating, especially since Bengston teaches that the prior art
teaches that removal of manganese residue was required.
Next, Appellant argues that Poole’s adhesion is different from the
adhesion that is important to the present invention because Poole’s adhesion
is between inner metal layers of a printed circuit board, part of which are
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exposed within the through-holes, and the metallized sleeves. Appeal Br.
10–11. Appellant asserts that because the present invention does not provide
through-holes, adhesion is between a metallized layer and a plastic surface
having areas much larger than through-holes. Id. at 12.
This argument is not persuasive because claim 1 fails to specify any
structure or dimensions of the plastic surface being metallized, nor any
limitation with regard to adhesion between any two structures. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellants’
nonobviousness argument as based on a limitation not recited in the claim);
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s
arguments fail from the outset because, as the solicitor has pointed out, they
are not based on limitations appearing in the claims.”).
Appellant further argues that etching an ABS or ABS/PC surface with
an alkaline permanganate solution results in nearly no adhesion between the
metallized layer and the plastic surface, in contrast to etching these plastic
surfaces with an acidic permanganate solution. Appeal Br. 12. Appellant
contends that acidic and alkaline permanganate solutions work differently on
these polymers: 1) alkaline solutions remove smear material, whereas acidic
solutions do not remove significant amounts of material; and 2) acidic
solutions improve hydrophilicity and wettability, whereas alkaline solution
treated plastic surfaces do not show increased wettability. Id.
This argument is not persuasive of reversible error because claim 1 is
not limited to ABS or ABS/PC plastic surfaces. In re Van Geuns, 988 F.2d
at 1184.
Appellant’s remaining arguments (Appeal Br. 13–17) are also not
persuasive of reversible error for the reasons well-articulated by the
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Examiner (Ans. 9–11). Appellant does not separately argue the Examiner’s
rejection of claims 12, 14, 15, 17, 19, and 20 as unpatentable over Poole in
view of Bengston and Courduvelis. Accordingly, we sustain the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1, 2, 3, 5, 7, 9, 11, 12, 14, 15,
17, 19, and 20, as unpatentable over Poole in view of Bengston and as
evidenced by Allardyce, and of claims 12, 14, 15, 17, 19, and 20 as
unpatentable over Poole in view of Bengston and Courduvelis.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–3, 5, 7, 9, 11, 12, 14, 15, 17, 19, and 20 is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
15, 19 112, 2nd ¶ Indefiniteness 15, 19
1–3, 5, 9,
11, 12, 14,
15, 17, 19,
20
103(a) Poole, Bengston,
Allardyce
1–3, 5, 9, 11,
12, 14, 15,
17, 19, 20

12, 14, 15,
17, 19, 20
103(a) Poole, Bengston,
Courduvelis
12, 14, 15,
17, 19, 20

Overall
Outcome
1–3, 5, 9, 11,
12, 14, 15,
17, 19, 20

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED