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 .
Response to Amendment
The amendment filed on 4/7/2026 has been entered into the prosecution for the application. Currently claims 1 and 5-9 are pending with claim 5 withdrawn from consideration. Claims 1 and 6-9 are pending examination.
The 112(d) and 112(b) rejection to claims 4 and 10 are moot as the claims have been cancelled.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
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, and 7 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 at a concentration of between 20 to 200 g/L (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 of both complexes are deemed obvious, see MPEP 2144.05 I.
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.
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 4/7/2026 have been fully considered but they are not persuasive.
The declaration under 37 CFR 1.132 filed 4/7/2026 is insufficient to overcome the rejection of claim 1 based upon Herdman in view of Egli and Bokisa as set forth in the last Office action because:
Although Applicant has tried to show that the claimed ranges of the components within claim 1 provide a deposit with improved results, the declaration does nothing to refute the combination of references deeming obvious the claimed invention in view of the prior art of record. The concentrations of the chelating agents (open-chained saturated aliphatic oxycarboxylic acid and nitrogen-containing unsaturated heterocyclic compound) are deemed obvious in view of Herdman and Bokisa.
Applicant then argues that the combination of references fails to recognize any special effect of the plating bath and that one of ordinary skill in the art would lack a reasonable expectation of success. These arguments are actually statements which do not have any support as to why the combination of references would not deem obvious the claimed invention, thus are moot as they do not provide arguments.
As per the combination, Herdman discloses complexing agents such as citric acid in a concentration of 20 to 200 g/L to provide good results (Herdman, [0025]), while Bokisa teaches a mixture of complexing agents that includes citric acid and pyrazine and pyridine based complexing agents in a plating solution in total concentration of 1 g/L to 300 g/L which mitigate immersion plating. As such the claimed ranges are deemed obvious and the improvement and expectation of success of the plating solution is clear.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN W COHEN whose telephone number is (571)270-7961. The examiner can normally be reached M-F: 9 am to 5 pm EST.
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/ Primary Examiner, Art Unit 1759
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