DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. A Notice of Appeal was filed 27 December 2024 but an appeal brief was not submitted. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 28 July 2025 has been entered.
Response to Amendment
The amendment filed 28 July 2025 has been entered.
Claims 1-4, 8-11, 13 and 15-17 remain pending in the application, wherein claim 1 has been amended and claim 2 is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 3-4, 8-11, 13, and 15-17 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for either electrodeposition or being in monolithic form, does not reasonably provide enablement for being an electrodeposited monolithic form. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Claim 1 recites wherein “the nickel-gold alloy is in an electrodeposited monolithic form” in line 3. However, the instant specification defines a “monolithic” material as referring to a material free of additional material layers/regions, produced in monolithic form (p. 4, lines 12-17 of the instant specification, and electrodeposition by its very nature forms a layer or plating (i.e. at least a substrate is required) and is described in the instant specification as involving the deposition of a material (p. 6, lines 19-27 of the instant specification). These forms of the material appear to be exclusive of each other, as it is not clear how the instantly claimed alloy is both a deposition (i.e. electrodeposited) and also free of additional material layers/regions, and the instant specification provides no guidance as to how to obtain an electrodeposited monolithic form.
Claims 3-4, 8-11, 13, and 15-17 are rejected as they depend on a rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 3-4, 8-11, 13, and 15-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites wherein “the nickel-gold alloy is in an electrodeposited monolithic form” in line 3. However, the instant specification defines a “monolithic” material as referring to a material free of additional material layers/regions (p. 4, lines 12-17) of the instant specification, and electrodeposition by its very nature forms a layer or plating (i.e. at least a substrate is required) and is described in the instant specification as involving the deposition of a material (p. 6, lines 19-27). It is not clear how the instantly claimed alloy is both a deposition (i.e. electrodeposited) and also free of additional material layers/regions.
Claims 3-4, 8-11, 13, and 15-17 are rejected as they depend on a rejected claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-4, 8-11, 13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Dadvand et al. (US PGPub. No. 2012/0070688) in view of Maekawa et al. (US PGPub. No. 2015/0098858, previously cited).
Claim 1: Dadvand teaches electrodeposited metallic coatings for a coated article (i.e. an article with an electrodeposited metal or alloy; see above regarding indefiniteness) (paragraphs 0002-0004). The article may be used in a variety of applications such as electrical connectors with a low resistivity (paragraph 0058-0059). The electrodeposition system includes an electrodeposition bath that includes the metal sources to form the coating and one or more additives (paragraph 0019), wherein the metal sources are generally ionic species that are dissolved in fluid carrier (paragraph 0022). A power supply creates a voltage difference between an anode and a cathode which leads to reduction of metal ionic species in the bath which then deposit in the form of a coating on the cathode (paragraph 0019). Any suitable concentration of ionic species in the bath may be used, which can be determined by routine experimentation (paragraph 0022). Dadvand teaches that a layer may comprise an alloy that includes at least one precious metal and at least one other element such as Ni, Cr, etc., and may be an Au—Ni alloy (paragraph 0044). A coating may have any thickness suitable for a particular application, such as greater than about 1 microinch (i.e. greater than 0.0254 µm) (paragraph 0056). However, Dadvand does not teach the recited gold concentration.
In a related field of endeavor, Maekawa teaches a solid gold-nickel alloy nanoparticle (i.e. the gold-nickel alloy corresponds to the claimed nickel-gold alloy) (paragraph 0001), which is considered to be in monolithic form (i.e. consistent with Applicant’s definition for a monolithic material on p. 4 of the instant specification; see above regarding indefiniteness). The size of an individual nanoparticle is smaller than the recited thickness, but Maekawa teaches that the particle whose particle size is in the order of nanometer shows lowered sintering temperature (paragraph 0090). Sintering would be well known in the art to produce a monolithic form of larger size by fusing multiple particles together. The exact dimension of a sintered body is a matter of design choice within the level of ordinary skill in the art and the courts have held that a change in size or proportions is prima facie obvious. See MPEP § 2144.05(IV)(A). Furthermore, Maekawa teaches that the material (i.e. nanoparticles) can be used to form an electrically conductive paste for formation of an electronic circuit (i.e. electrical connections) such as by coating on a substrate (paragraph 0090). The gold-nickel alloy is formed by mixing a fluid which contains a gold ion and a nickel ion with a fluid which contains a reducing agent, where the concentrations depend on the compounds to be used (i.e. formed) (paragraph 0160). Specific examples 4 and 6 in Table 3 contain gold at a mole ratio (i.e. atomic percent) as measured by STEM-EDS of 2.7 and 7.7, respectively, which overlaps the claimed range and the courts have held that where claimed ranges overlap or lie inside of ranges disclosed in the prior art a prima facie case of obviousness exists. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
As Dadvand and Maekawa both teach a gold-nickel alloy formed by reducing metal ions from a bath solution, they are analogous. Furthermore, Dadvand teaches that the electrodeposition process is distinguishable from electroless process which use chemical reducing agents to deposit the coating instead of an applied voltage (i.e. Dadvand teaches these process to be related though distinguishable) (paragraph 0041). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the electrodeposited Au—Ni alloy coating of Dadvand to have the chemical composition taught by Maekawa because Maekawa teaches such composition to be useful for electrical connections and the composition can be determined by the concentration of ions in the bath and Dadvand teaches that suitable concentration of ions in the bath can be determined through routine experimentation, and one would have had a reasonable expectation of success.
Claim 3: Dadvand teaches that the (electrodeposited) coating may have a nanocrystalline structure (paragraph 0050). Maekawa teaches that the alloy nanoparticle is mainly a substitutional solid solution of gold and nickel, in which metal elements at the lattice point in the space lattice are substituted by other elements (paragraph 0025). Since the alloy has lattice points, it is considered to be crystalline. Maekawa also teaches that the gold-nickel alloy is homogeneous and has finely mixed gold and nickel in the level of nanometers (i.e. the grain size is in the level of nanometers) (paragraph 0078). Since the alloy is crystalline and has a grain size in the level of nanometers, the grain size is considered to be nanocrystalline (consistent with Applicant’s definition for a nanocrystalline structure on p. 3 of the instant specification).
Claim 4: Dadvand teaches that the (electrodeposited) coating may have a nanocrystalline microstructure and may have a number-average grain size of less than 100 nm (paragraph 0050). Maekawa teaches a specific example 4 in Table 3 that has a particle diameter of 70-90 nm. If the particle had just a single grain, the grain size would be substantially identical to the particle size (i.e. a grain size of about 70-90 nm), while multiple grains in the particle would result in even smaller grain size, and these sizes overlap the claimed range. See MPEP § 2144.05.
Claims 8-9: Dadvand teaches that a layer may include one or more precious metals such as Au and at least one other element such as Ni, Cr, etc. (paragraph 0044). The teaching of “at least one other” renders as obvious that more than one other element may be mixed with gold or precious metal. Maekawa teaches that the gold-nickel alloy nanoparticle may contain intentionally or unintentionally an element other than gold or nickel, such as chromium, etc. (i.e. the alloy may contain a third metal wherein the third metal is chromium) (paragraph 0091).
Claim 10: Maekawa teaches specific example 4 in Table 3 as having gold at a mole ratio (i.e. atomic percent) as measured by STEM-EDS of 2.7, which overlaps the claimed range. See MPEP § 2144.05.
Claim 11: Dadvand teaches a substantially identical method of depositing the Au—Ni alloy (i.e. nickel-gold alloy), and has a substantially identical composition as outlined above when modified in view of Maekawa. Therefore, the article having a nickel-gold alloy of Dadvand in view of Maekawa is considered to have substantially identical properties (i.e. position of gold atoms within the alloy) because substantially identical materials have substantially identical properties and functions absent an objective showing. See MPEP § 2112.01. Furthermore, Maekawa teaches that the gold-nickel alloy nanoparticle is mainly a substitutional solid solution in which a metal element at the lattice point in the space lattice are substituted by other elements and a lattice fringe can be clearly observed (paragraph 0025) (i.e. this fringe is considered to be grain boundaries). Since specific examples 4 and 6 in Table 3 contain only 2.7 and 7.7 mole ratio (i.e. atomic percent) gold as measured by STEM-EDS and > 90% nickel (i.e. is predominantly nickel), it would have been obvious to one of ordinary skill in the art that nickel constitutes the majority of the lattice and therefore gold atoms are substituted at lattice points forming the lattice fringe (i.e. gold is positioned proximate to the grain boundaries).
Claim 13: Dadvand teaches that a layer of the coating may have any suitable thickness but it may be advantageous for a layer to be thin, for example to save on material costs (paragraph 0046). Regarding the teachings of Maekawa, being a nanoparticle (paragraph 0001), the thickness is considered to be substantially identical to the particle diameter. Specific examples 4 and 6 in Table 3 have a particle diameter of 70-90 nm and about 480 nm, respectively. As outlined above, the size of an individual nanoparticle is smaller than the thickness recited in claim 1, but Maekawa teaches that the particle whose particle size is in the order of nanometer shows lowered sintering temperature (paragraph 0090). Sintering would be well known in the art to produce a monolithic form of larger size by fusing multiple particles together. The exact dimension of a sintered body is a matter of design choice within the level of ordinary skill in the art and the courts have held that a change in size or proportions is prima facie obvious. See MPEP § 2144.05(IV)(A).
Claim 15: Dadvand teaches that the (coated) article can be used in a variety of applications including electrical applications such as electrical connectors (paragraph 0058). Maekawa teaches that the gold-nickel alloy is homogeneous and has finely mixed gold and nickel in the level of nanometers which provides performance as a high-reliable electric contact material of electronic parts such as a connector, etc. (i.e. the article is an electrical connector) (paragraph 0078).
Claim 16: Maekawa teaches specific examples in Table 3 as having a composition mole ratio (i.e. atomic percent) as measured by STEM-EDS of 2.7 gold with 97.3 nickel (example 4) and 7.7 gold with 92.3 nickel (example 6). Since the sum of gold and nickel in both of these compositions sum to 100, the alloy is considered to have only gold and nickel present (i.e. the alloy is a binary alloy).
Claim 17: Dadvand teaches that the (electrodeposited) coating may be a solid solution where the metals comprising the coating are essentially dispersed as individual atoms (paragraph 0051). Maekawa teaches that the finely mixed state of gold and nickel in a nanometer level includes a solid solution (paragraph 0078).
Response to Arguments
Applicant’s arguments, filed 28 July 2025, regarding the prior art rejection have been fully considered and are persuasive in view of the amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Dadvand in view of Maekawa, as outlined above.
Conclusion
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/KIM S. HORGER/Examiner, Art Unit 1784