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. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/2/2025 has been entered.
Response to Amendment
The amendment filed on 10/2/2025 has been entered into the prosecution for the application. Currently claims 1 and 4-10 are pending with claim 5 withdrawn from consideration. Claims 1, 3-4 and 6-10 are pending examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites that the surfactant is selected from the group consisting of nonionic surfactants, amphoteric surfactants and a combination thereof.
Claim 4 recites the surfactant is selected from the group consisting of nonionic surfactants, anionic surfactants, cationic surfactants, amphoteric surfactants and combinations these.
Claim 4 broadens claim 1. Claim 4 also includes surfactants not included in the consisting of language of claim 1 (anionic and cationic surfactant).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites that the electroplating bath is free of brighteners. It is unclear the metes and bounds of what encompasses a brightener. Applicant’s specification does not give specific examples or support for what is and is not considered a brightener.
Applicant only has support for “a brightener does not have to added to the tin alloy electroplating bath.”
Additionally brighteners are subjective to the system to which they are used in, thus why the metes and bounds, in relation to the specific composition claimed, is not clear.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4, 6, 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0065558 of Herdman et al in view of US 2009/0188807 of Egli et al and US 2006/0096867 of Bokisa et al.
As to claims 1, 4 and 6, Herdman teaches of a tin binary alloy or a tin ternary alloy electroplating bath (Herdman, [0001]) comprising:
a soluble tin salt (Herdman, [0014] and [0021]);
at least one of a soluble nickel salt and a soluble cobalt salt (Herdman, [0020] and [0022]);
an open-chained saturated aliphatic oxycarboxylic acid or salt thereof including gluconic, citric and malic acids or salt thereof (Herdman, [0023] and [0025]);
a surfactant (Herdman, [0032]); and
a pH of the electroplating bath between 1.5 and 6 and including 3 (Herdman, [0037]).
Herdman additionally teaches the amount of amount of nickel, cobalt of both is present in a concentration between 10 g/L and 250 g/L, thus deeming obvious an amount between 0.05 to 20 g/L (Herdman, [0025]).
As to the claim limitation of the current density being utilized to control the alloy composition when deposited, these limitations do not further limit the electroplating bath (see MPEP 2112.01 I and II).
Regardless, it is noted that Herdman teaches a current density being between about 2 and about 5 A/dm2 such that the composition of the alloy can be controlled (Herdman, [0037] – [0039]). Herdman deems obvious the amount of the alloy composition comprising nickel and/or cobalt as Herdman discloses a range of between 1-25 % for the nickel and/or cobalt within the produced alloy composition (Herdman, [0011]), see MPEP 2144.05 I.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation, MPEP 2144.05 IIA.
Herdman does not teach the presence of a nitrogen containing unsaturated heterocyclic compound within the electrolyte. Herdman also does not specifically teach a nonionic or amphoteric surfactant composition.
Egli teaches of an electroplating solution for a bronze alloy composition (a base copper and tin alloy) such that the binary alloy of tin/copper can include additional ternary metals to improve the corrosion and wear resistance such metals including cobalt, but are not limited thereto (Egli, [0002], [0008], [0028] and [0029]).
Egli additionally teaches that within the electroplating solution to utilize complexing agents which chelate the metallic ions in solution such that the complexing agents include N-heterocyclic carboxylic acid compounds (pyrazine carboxylic acid) (Egli, [0020]).
Egli also teaches that known surfactants within an electroplating bath include non-ionic surfactants (Egli, [0019]).
It is noted that Egli does not specifically teach the use of an oxycarboxylic acid and nitrogen-containing unsaturated heterocyclic compound within the same electrolyte.
Bokisa teaches of a tin alloy and the electrolyte composition for forming them by electrodeposition (Bokisa, [0001] and [0006]).
Bokisa further teaches more than one complexing agent, including pyridine or pyrazine compounds and carboxylic acids, are added to the electrolyte to mitigate immersion plating by binding the metal ions in a complex while allowing them to be electrodeposited (Bokisa, Abstract, [0022] – [0025], [0035], [0037] and [0062]).
Bokisa teaches the amount of the one or more complexing agent is between 1 g/L to 300 g/L (Bokisa, [0037]), as such the claimed concentration range is deemed obvious, see MPEP 2144.05 I.
It is further noted that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. MPEP 2144.05 II.
As Bokisa teaches alloy compositions including copper, silver, zinc and indium (Bokisa, [0015]), one of ordinary skill in the art would expect a predictable result when using cobalt within the electrolyte in light of Egli as Egli teaches the alloy composition can include copper, silver, zinc, indium and additionally cobalt (Egli, [0029]).
Additionally Bokisa teaches that within alloy plating electrolyte various surfactants are used to contribute to the overall stability of the bath and improve various properties in the tin alloy formed. The surfactants include nonionic surfactants, amphoteric surfactants, cationic and anionic surfactants are known equivalence (Bokisa, [0043]).
Thus it would be obvious to one of ordinary skill in the art to substitute the anionic surfactant of Herdman with a nonionic or amphoteric surfactant as per Bokisa in providing overall stability to the bath and improve various properties in the tin alloy formed.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Herdman as per Egli and Bokisa so as to utilize the desired complexing agent compositions in order to facilitate the electrodeposition process by chelating the cations and allowing them to effectively be deposited by the electrodeposition process over immersion plating.
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Herdman as per Egli and Bokisa so substitute the anionic surfactant for a nonionic or amphoteric surfactant in producing a predictable result in forming the desired tin alloy layer while additionally providing overall stability to the bath and improve various properties in the tin alloy formed.
As to claim 7, Herdman in view of Egli and Bokisa teach to the composition of claim 1.
Herdman does not teach the specifics of the nonionic surfactant composition.
Egli teaches that known nonionic surfactants include condensation products of bisphenol and ethylene oxide (ethoxylated bisphenol A) where there are 8, 10 or 13 moles EO as well as naphthol and ethylene oxide (ethoxylated naphthol) with 8, 10 or 13 moles EO (Egli, [0019]).
As shown in Bokisa above (see claim 1) that nonionic surfactant operate in the same manner as other surfactants (i.e. known in the art to be equivalence), it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Herdman as per Egli so as to utilize the claimed surfactant composition in producing a predictable result in obtaining the desired tin alloy film while additionally providing overall stability to the bath and improve various properties in the tin alloy formed.
As to claim 10, Herdman in view of Egli and Bokisa teach to the composition of claim 1.
Herdman does not specifically state a brightener is present or absent from the electroplating composition.
Bokisa teaches that additives such as brighteners are optional to the electroplating bath (Bokisa, [0038]).
Therefore it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Herdman as per Bokisa so as to use or not use a brightener within the electroplating bath as an optional additive in producing a predictable result in the desired tin alloy film.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Herdman in view of Egli and Bokisa as applied to claim 1 above, and further in view of US 6,607,653 of Tsuji et al.
As to claim 8, Herdman in view of Egli and Bokisa teach to the composition of claim 1.
Herdman teaches that the composition of the surfactant is an anionic surfactant (Herdman, [0032]).
Egli teaches that the composition of the surfactant is a non-ionic surfactant (Egli, [0019]).
Bokisa teaches that known equivalence of surfactants include anionic surfactants, nonionic surfactants and amphoteric surfactants (Bokisa, [0043]).
Herdman in view of Egli and Bokisa do not teach the specific composition of amphoteric surfactant comprising carboxybetaine.
Tsuji teaches of tin alloy electroplating (Tsuji, Abstract).
Tsuji additionally teaches that within plating solution compositions to utilize surfactants to improve appearance, grain fineness, smoothness, adherence, throwing power, etc. of the plated coating such that examples of equivalent surfactants include anionic surfactants, nonionic surfactants and amphoteric surfactants such that amphoteric surfactant include carboxybetaine (Tsuji, col 21 lines 46-63 and col 23 lines 43-58).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Herdman in view of Egli and Bokisa as per Tsuji so as to utilize the desired amphoteric surfactant to improve appearance, grain fineness, smoothness, adherence, throwing power, etc. of the plated coating.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Herdman in view of Egli and Bokisa as applied to claim 1 above, and further in view of US 2014/0251818 of Okada et al.
As to claim 9, Herdman in view of Egli and Bokisa teach to the composition of claim 1.
Herdman teaches that the composition of the surfactant is an anionic surfactant (Herdman, [0032]).
Egli teaches that the composition of the surfactant is a non-ionic surfactant (Egli, [0019]).
Bokisa teaches that known equivalence of surfactants include anionic surfactants, nonionic surfactants and amphoteric surfactants (Bokisa, [0043]).
Herdman in view of Egli and Bokisa do not teach the specific composition of amphoteric surfactant comprising alklyamidobetaine.
Okada teaches of tin alloy plating solutions (Okada, Abstract).
Okada additionally teaches the plating solution contain surfactants including known equivalence of nonionic, anionic and amphoteric surfactants such that amphoteric surfactants include alklyamidobetaine (Okada, [0035] - [0036]).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Herdman in view of Egli and Bokisa as per Okada so as to utilize the desired surfactant in producing a predictable result in forming a desired tin alloy electroplating solution composition in order to be able to plate the desired tin alloy composition therefrom.
Response to Arguments
Applicant's arguments filed 10/2/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the combination of components of the solution composition produces a denser, better adherent and improved appearance film, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is noted that claim 1 is an electroplating bath. It is deemed obvious as per Herdman in view of Egli and Bokisa.
The use of that bath is not a part of the scope of the invention at hand. If Applicant desires a coating, then claim the coating. If Applicant desires a method of coating using the composition, then claim the method of using.
Both these options require a DIV application be filed as the composition has been examined under merits multiple times.
Conclusion
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/Primary Examiner, Art Unit 1759