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 .
This application is in response an Election/Restriction filed on 05/06/2026.
Claims 1-5 are pending. Applicant has elected without traverse Group I, claims 1-2, and claims 3-5 are withdrawn as non-elected group II claims. Claims 1-2 are under examination.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-2 in the reply filed on 05/06/2026 is acknowledged.
Claims 3-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/06/2026.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1-2 are 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 1 recite: “especially a sensitizing solution for sensitizing surfaces” and “especially for sensitizing non-conductive surfaces” renders the claim indefinite because one of the ordinary skill in the art is uncertain whether such limitation followed after “especially” a part of the claim or just simple example. Clarification is requested.
Regarding claim 2, these claims do not remedy the deficiencies of parent claim 1 noted above and are rejected for the same rationale.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
Clam 1-line 2 and claim 2-line 2, it is suggested to amend “SnCl2” to “(SnCl2)” to provide clarity in the claim.
Claim 1-line 3 and Claim 2-line 1, it is suggested to amend “it” to “the sensitizing solution” to provide clarity in the claims.
Claim 2-lines 1 and 2, it is suggested to amend “%o” to “%” in order to correct the typographical error in the claim.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1-2 are rejected under 35 U.S.C. 103 as obvious over Roger et al (GB-1174851, IDS cited reference by applicant) in view of Nagatani (JP 2014141712, machine translation).
Regarding claim 1, Roger discloses a sensitizing solution for electroless plating comprising precious metal salt, stannous salt (i.e., SnCl2) and water soluble hydroxyl group-containing organic compound (i.e., glycerol which is same as glycerine that has same compounds, see page 1 lines 36-40 thru page 3 lines 1-67).
Roger does not explicitly disclose sensitizing solution containing distilled water.
However, Nagatani discloses sensitizing solution for electroless plating comprising of palladium salt, tin salt (i.e., stannous chloride), and distilled water and water soluble organic solvent wherein tin salt concentration in the solution is in the range from 0.001-5.0 mol/L (see abstract, paragraphs 0010-0014, 0026).
Given, Roger and Nagatani both disclose sensitizing solution for electroless plating therefore, it would have been obvious to one of the ordinary skill in the art before effective filing date of applicant invention to modify a sensitizing solution of Roger with Nagatani to include distilled water which would provide superior plating accuracy, lower processing solution costs and provides good adhesion as taught by Nagatani (see paragraph 0003).
Regarding claim 2, Roger discloses preferred concentration of glycerine in amount of 30 to 50 g/l (page 2 lines 50-54) while Nagatani discloses stannous chloride in range from 0.001 to 5.0 mol/l (paragraph 0014). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SMITA S PATEL/Primary Examiner, Art Unit 1732
06/08/2026
Prosecution Insights