
    426 F. 2d 409; 165 USPQ 702
    In re Frank Passal and Timothy P. Flynn
    (No. 8319)
    May 28, 1970
    
      Arnold B. Christen (Christen, Sabol & O’Brien), Letois C. Broion, attorneys of record, for appellant.
    
      S. Wm. Cochran for tbe Commissioner of Patents, Jere W. Sears, of counsel.
    [Oral argument May 5, 1970 by Mr. Sears ;
    Before Rich Almond, Baldwin, Lane, Associate Judges, and Fisher, Judge, sitting by designation.
   Almond, Judge,

delivered the opinion of the court:

This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-13, all of the claims in appellants’ application entitled “Novel Electroplating Process.” The invention relates to a process for high-speed bright nickel plating. Prior art nickel plate production rates are undesirably slow, the specification states, while attempts to speed them up through using high plating current densities and various primary and secondary brighteners or bath additives have resulted in inadequately leveled deposits. Appellants have allegedly solved these prior art problems by maintaining a cathode current density at a level of at least 10 asd (amperes per square decimeter) and a high, relative velocity between the nickel plating bath and the cathode representing the material to be plated. This velocity may be maintained by either impinging a stream of electrolyte onto the cathode or by various techniques such vibration, rotation of the cathode and pumping of the electrolyte past the cathode.

Claim 1 is illustrative:

1. The method of high speed electroplating a bright nickel deposit which comprises electroplating said nickel deposit from a nickel-bath containing a brightening and leveling amount of coumarin and a secondary brightener, maintaining the cathode current density during said plating at a level of at least about 10 asd, and maintaining a high relative velocity between said nickel-bath and said cathode thereby obtaining a highly lustrous, leveled nickel plate over a wide cathode current density range.

Claims 2-10 all depend from claim 1. Claims 2 and 3 specify the amount of coumarin as at least about 0.2 g/1 (grams per liter), and from 0.8 g/1 to 2.0 g/1, respectively. Claim 4 recites the amount of secondary brightener as from 1 g/1 to 10 g/1, and claim 5 defines the secondary brightener as saccharin. Claims 6 and 7 limit the cathode current density to values of 20-120 asd and 20-60 asd, respectively. Claim 8 recites maintaining the relative velocity between the nickel-bath and cathode at 60-320 cm/second, and claim 9 further limits the relative velocity to 150 cm/second. Claim 10 defines the embodiment wherein the nickel-bath is impinged on the cathode. Claim 11 is an independent claim describing a process similar to that of claim 1, further defining the process as one wherein the nickel-bath contains 0.2 g/1 to saturation of coumarin and 1-10 g/1 of secondary brightener and wherein the cathode current density during plating is maintained at a level of about 20-120 asd. Claim 12 depends from claim 11 and defines the secondary brightener as saccharin. Claim 13 also is dependent upon claim 11 and limits the cathode current density to 20-60 asd.

The references relied upon are:

Michael _ 3,245,886 Apr. 12, 1966
Du Rose et al. (Du Rose)_ 2,782,153 Feb. 19, 1957
Boelter, Jr. (Boelter)_ 2,870,709 Jan. 27, 1959
Wesley, W. A. et al. (Wesley), “Electrodeposition of Nickel at High Current
Density,” Proceedings of the 36th Annual Convention, American Electroplaters’ Society, pp. 79-91 (1949).

Du Eose discloses a process for producing nickel electrodeposits of greatly increased brightness and smoothness. The patent states:

This invention is primarily concerned with the fact that although electro-deposits taken from acid nickel plating solutions containing coumarin exhibit extraordinary smoothness they are only semi-bright, and attempts to increase their brightness by the use of addition agents of the type of saccharin or naphthalene sulfonic acids result in improved brightness with loss of smoothness when the surface being coated is quite smooth, and can result in decrease in both smoothness and brightness when the surface to be coated is quite rough. * * * If, instead of using naphthalene sulfonic 'acids, saccharin was used to improve the 'brightness, improved brightness was obtained and the gain in smoothness was about the same.

The reference discloses that the lost smoothing action can 'be largely restored 'by adding, in addition to the conmarin, not only an aromatic sulfonamide but also leveling agents such as quaternary nitrogen compounds and plating at a cathode current density which may be as high as 10.8 asd.

Boelter discloses high-speed deposition of copper from a conventional bath by a method of impinging the electrolyte onto the cathode at a flow rate of 500-1000 ft./min.

Michael discloses maintaining an electroplating bath near the saturation concentration of the additive component by adding the difficulty soluble component in solid excess beyond the saturation point.

Wesley discloses that increased agitation of simple nickel plating baths, i.e., not containing brightener additives, permits higher current densities and faster plating rates.

Claims 1, 2 and 4-18 were rejected under 35 USC 103 as unpatentable over Du Eose in view of Wesley and Boelter, and claim 3 was rejected under the same section of the statute on the same references with the addition of Michael. It was the examiner’s opinion that “if one wished to deposit nickel from the bath of Du Eose et al. at higher current densities one of the ordinary skill in the art would obviously apply the agitation means of Wesley et al. or Boelter, Jr. to the Du Eose et al. bath and electroplate as recited.”

Claims 1-7 and 10-13 were further rejected as indefinite under 35 USC 112, the examiner taking the position that it “is not clear what £a high relative velocity’ means.”

The board, in affirming the examiner, took the view that Du Eose used the same type of bath utilized by appellants with the further improvement of a quarternary nitrogen compound, the addition of which was not excluded by appellants’ claims. It concluded, therefore, that:

The changes, if any, over Du Rose et al. are in 'the cathode current density * * * and in the relative velocity between the bath and the cathode * * *. The cathode current density of claims 1 to 5, 8, 9, and 10 does not distinguish over the Du Rose et al. diseloure of 100 asf, equivalent to 10.8 asd and falling within the terms of these claims.
* « * * *. » *
In our opinion, it would be obvious to a knowledgeable person in this art, seeking to speed up the process of Du Rose et al., to adopt the expedient suggested by Wesley et al.

The board also sustained the rejection under 35 ITS'C 112, stating that “the terminology adopted by appellants cannot serve to point out wherein the prior art ends and appellants’ process begins.”

Appellants contend that the board erred in several respects. In their view, Du Eose discloses the disadvantage of coumarin and saccharin in that the gain in smoothness was only “about the same.” Du Eose, they point out, solved the problem by utilizing a third additive, while appellants use a cathode current density of at least 10 asd and a high relative velocity between the nickel-bath and cathode, expedients not suggested by Du Eose. Moreover, they argue, the maximum limit of Du Eose’s current density range corresponds to the minimum cathode current density of their invention. Wesley, appellants allege, lacks pertinence since the disclosure therein is limited to simple nickel plating baths without additives and is silent as to brightness and smoothness. Neither reference, it is argued, suggests that a combination of their teachings would permit attainment of any desired results nor that Wesley’s increased electrolyte flow process with simple 'baths would be adaptable to Du Eose’s baths. The references Boelter and Michael also lack pertinence to their invention in the opinion of appellants.

Appellants conclude their argument by citing this court’s decision in In re Sponnoble, 56 CCPA 823, 405 F. 2d 578, 160 USPQ, 237 (1969), for the view that:

A patentable invention, witbin tbe ambit of 35 U.S.C. 103 may result even if tbe inventor has, in effect, merely combined, features, old in tbe art, for tbeir known purpose, without producing anything beyond tbe results inherent in tbeir use.

We are not persuaded by appellants’ position. In Sponnoble, this court found that the appellant had done more than merely combine features old in the art. More important, however, is the fact that the above-quoted language from Sponnoble indicates merely that when considering t'he “subject matter” as a whole under 35 IIS'C 103, additional inquiry as to the reason for making the combination is proper and that “a patentable invention may lie in the discovery of the source of the problem even though the remedy may 'be obvious once the source of the problem is identified.”

The facts of record do not warrant the conclusion that appellants were the first to discover that increased rates of flow of electrolyte permit higher current densities with their attendant faster plating-rates. Nor do they contend to be the first to discover that such higher plating rates were desirable. Appellants’ discovery is, as we interpret it, that a nickel plating process using coumarin and. saccharin, as that of Du Nose, could be speeded up allegedly without loss of brightness and smoothness. However, in our view, Wesley clearly suggests that high speed could be obtained by increased electrolyte flow and high current density, and it would not be unobvious for one to adopt this suggestion and combine it with the process of Du Nose. No reference suggests that such increased electrolyte flow would result in decreased smoothness and brightness even in a bath containing primary and secondary brighteners. The mere possibility that such combination would result in decreased smoothness and brightness does not render its successful use unobvious. Obviousness does not require absolute predictability. In re Seyb, Jr. (No. 8277), decided May 7, 1970; In re Moreton, 48 CCPA 928, 288, F.2d 940, 129 USPQ 288 (1961). We are unable to perceive on these facts that the inherent result flowing from adaption of the electrolyte flow process of Wesley to the additive bath process of Du Nose is unexpected or unpredictable. Certainly, at least, that “clear and convincing evidence” of unexpected properties required by this court in In re Lohr, 50 CCPA 1274, 317 F.2d 388, 137 USPQ 548 (1963), is lacking.

We have considered appellants’ other arguments and authorities cited in support thereof; however, we are not convinced of error in the board’s decision with respect to the rejection under 35 USC 103. The view we take renders it unnecessary to consider the rejection under 35 USC 112.

The decision is, therefore, affirmed. 
      
       Serial No. 292,083 filed July 1, 1963.
     