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 .
Status of Amendment
Applicant’s reply of 29 October 2025 to the non-final Office action dated 03 July 2025 has been received and entered. In the reply, applicant has amended claims 21 – 33 and has added new claim 34. These claims have been examined on the merits herein.
Response to Arguments
Applicant’s arguments, see page 8 of the reply, with respect to the rejections pursuant to 35 USC § 112(b) have been fully considered and are persuasive. These rejections have thus been withdrawn.
Applicant’s arguments with respect to the 35 USC § 102(a)(1) rejection of claims 21 – 24, 26, and 28 – 33 in view of Kolics; the 35 USC § 102(a)(1) rejection of claims 21, 26, 28, and 30 in view of Yu-NPL; and the 35 USC § 103 rejection of claim 27 in view of Kolics have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claims 22 – 23 are objected to because of the following informalities: in the second line of claim 22 and in the third line of claim 23, “ink” is recited instead of “composition”. Appropriate correction is required.
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 21 – 22, 25 – 28, and 30 – 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kienle, Marcel Patrik, et al., US 2020/0185224 A1 (hereinafter “Kienle”) in view of Norkus, Eugenijus, et al., US 2012/0152147 A1 (hereinafter “Norkus”).
Regarding claim 21, Kienle discloses a composition (see para. [0001], composition for metal plating) comprising:
an electroplating additive comprising an accelerator (see paras. [0091] – [0103], “Other Additives”, namely 3-mercapto-1-propanesulfonic acid and 2-mercaptoethanesulfonic acid), wherein the electroplating additive is present at a concentration range of 0.1 – 10 g/L (see para. [0104], 0.1 ppm to 3000 ppm, which falls within the claimed range);
a solvent (see paras. [0085] – [0086], the solvent being water) having a vapor pressure when at 25 °C that is equal to or less than 24 Torr, and a dielectric constant in a range of 40 – 90 (material properties that are consistent with water),
wherein the composition has a viscosity in a range of 0.7 – 20 cP at 20 °C (material properties that are consistent with an aqueous plating solution), and
wherein the electroplating additive is completely dissolved in the solvent (at the disclosed concentrations, the salts and additives are present at low enough levels to be completely dissolved (see, e.g., paras. [0082] – [0083] and [0104]).
Claim 21 differs from Kienle, however, in that the solvent is not an organic solvent with the same ranges of vapor pressure and dielectric constant. In a related art, however, Norkus discloses a non-aqueous electroless copper plating solution including an anhydrous copper salt component, an anhydrous cobalt salt component, a polyamine complexing agent, a halide source, and a non-aqueous solvent. (See para. [0009].) The non-aqueous solvent may be DMSO (see paras. [0040] – [0041]), ethylene glycol (see paras. [0043] – [0044]), or propylene glycol or alternative non-aqueous solvents (see para. [0053]).
Kienle and Norkus are similar in that both references disclose the use of copper and cobalt metal salts (see Kienle, paras. [0079] – [0080]), solvents within the claimed dielectric constant (as to Kienle, water; as to Norkus, DMSO, ethylene glycol, or propylene glycol, see supra), and electroless plating (see Kienle para. [0081]; Norkus para. [0009]) with an accelerator (as to Kienle, 3-mercapto-1-propansulfonic acid and 2-mercaptoethanesulfonic acid; as to Norkus, see para. [0026]) wherein the additives are completely dissolved (as to discussed above as to Kienle; see Norkus, para. [0038]).
It is prima facie obvious to make a simple substitution of one known element for another to obtain predictable results. (See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415 – 21 (2007); MPEP 2143(I)(B).) Given the similarity between the properties of the compositions of Kienle and Norkus (as set forth above) and their same intended use in electroless plating, a person having ordinary skill in the art would have been easily able to identify that the aqueous solvent of Kienle could be readily and predictably substituted for the method of Norkus, namely using one or more of its non-aqueous solvents. Accordingly, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the present application to have substituted the method using a non-aqueous solvent of Norkus in place of the method using an aqueous solvent of Kienle.
Moreover, regarding the “wherein” clause in claim 21 regarding intended use as “an ink for electrohydrodynamic ejection printing”, the intended function or use of a claimed structure is given patentable weight only so far as the composition is capable of performing that function or capable of the intended use. This capability is compared against the prior art, as opposed to prior teachings of the particular function or use. (See In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007); MPEP 2145, Example 2.) The claim language “wherein the composition is an ink for electrohydrodynamic ejection printing” has not been given full patentable weight because it is merely descriptive of an intended use or function, and without further evidence submitted, given that the material properties of the claimed composition and the prior art (as set forth above) are the same, there does not appear to be any clear reason why the prior art composition could not function as an ink for electrohydrodynamic ejection printing. The examiner would consider any rebuttal evidence submitted in an appropriate further reply from the applicant.
Regarding claim 22, Kienle in view of Norkus is relied on for the composition of claim 21 as above, and Norkus further discloses wherein a concentration of oxygen in the [composition] is 1 ppm or less (see Norkus, para. [0036], disclosing procedures to remove dissolved oxygen).
Regarding claim 25, Kienle in view of Norkus is relied on for the composition of claim 21 as above, and Kienle discloses wherein the accelerator comprises a thiol group (see Kienle, paras. [0091] – [0103], cited above in the rejection of claim 21).
Regarding claim 26, Kienle in view of Norkus is relied on for the composition of claim 21 as above, and Kienle discloses wherein the accelerator comprises a sulphonic or a carboxylic acid (see Kienle, paras. [0091] – [0103], cited above in the rejection of claim 21).
Regarding claim 27, Kienle in view of Norkus is relied on for the composition of claim 26 as above, and Kienle discloses wherein the accelerator is mercaptopropanesulfonic acid (see Kienle, paras. [0091] – [0103], cited above in the rejection of claim 21).
Regarding claim 28, Kienle in view of Norkus is relied on for the composition of claim 21 as above, and Norkus discloses wherein the organic solvent comprises at least one material selected from the group consisting of: terpineol, ethylene carbonate, propylene carbonate, dimethylsulfoxide (DMSO), ethylene glycol, and propylene glycol. (The non-aqueous solvent may be DMSO (see paras. [0040] – [0041]), ethylene glycol (see paras. [0043] – [0044]), or propylene glycol or alternative non-aqueous solvents (see para. [0053]).)
Regarding claim 30, Kienle in view of Norkus discloses the composition of claim 21 as above, and Norkus discloses that the organic solvent has a natural boiling point between 95 – 275 °C (this limitation is applicable to any of dimethylsulfoxide (DMSO), ethylene glycol, or propylene glycol, as disclosed in paras. [0040] – [0041], [0043] – [0044], and [0053] of Norkus).
Regarding claim 31, Kienle in view of Norkus is relied on for the composition of claim 21 as above, and Norkus discloses wherein the organic solvent comprises a first co-solvent and a second co-solvent (see Norkus para. [0041], referring to the further inclusion of ethylenediamine).
Regarding claim 32, Kienle in view of Norkus discloses the composition of claim 21 as above, and Kienle discloses further comprising a wetting agent (see para. [0086], disclosing the addition of surfactant(s), which, as in the previous non-final Office action, is interpreted herein as a “wetting agent”).
Regarding claim 33, Kienle in view of Norkus discloses the composition of claim 21 as above, and both Kienle and Norkus, as set forth above in connection with the rejection of claim 21, disclose further comprising a salt, namely salts of cobalt and/or copper (see Kienle, paras. [0079] – [0080]; Norkus para. [0009]).
Regarding claim 34, Kienle in view of Norkus discloses the composition of claim 21 as above, and Norkus discloses wherein the composition is non-aqueous (see, e,g., Norkus paras. [0009] – [0010]).
Claims 23 – 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kienle and Norkus as applied to claim 21, above, and further in view of Kolics (of record).
Regarding claim 23, Kienle in view of Norkus is relied on the for composition of claim 21 as above, but neither reference explicitly discloses further comprising a species that can react with and consume oxygen, wherein the species that can react with and consume oxygen is present at a concentration sufficient to maintain a concentration of oxygen in the [composition] at 1 ppm or less.
In a related art, Kolics discloses that, for the function of removing dissolved oxygen, sulfites are suitable compounds: “compounds [that] are suitable for use as oxygen scavengers for dissolved oxygen and other oxidizing species … include[s] … sulfites….” (See Kolics, paras. [0018] – [0020].) Given that Norkus (para. [0036]) also discloses that it is desirable to removed dissolved oxygen, it would therefore be prima facie obvious to add the sulfites to the composition of Kienle / Norkus, or substitute the oxygen removal procedure in Norkus with the inclusion of sulfites, with the predictable result that the concentration of dissolved oxygen is substantially minimized. (See KSR v. Teleflex, supra; MPEP 2143(I)(A)-(B) (combining prior art elements according to known methods to yield predictable results; substituting simply of one known element for another to obtain predictable results).) Accordingly, it would have been prima facie obvious to the person having ordinary skill in the art before the effective filing date of the present application to have combined / substituted the sulfites of Kolics for the dissolved oxygen removal procedure described in Norkus.
Regarding claim 24, Kienle in view of Norkus and Kolics is relied on for the method of claim 23 as above, and Kolics further discloses wherein the species that can react with an consume oxygen comprises a sulfite compound (see Kolics, para. [0019]).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Kienle and Norkus as applied to claim 28, above, and further in view of Shirakami, Jun, et al., US 2020/0373248 A1 (hereinafter “Shirakami”).
Regarding claim 29, Kienle in view of Norkus is relied on for the composition of claim 28 as above, but neither reference explicitly discloses wherein the organic solvent comprises terpineol. In a related art, Shirakami discloses the use of various organic solvents (see paras. [0045] – [0046]). Moreover, ethylene / propylene glycol are listed as suitable options equivalently with terpineol (see para. [0046]). Still further, Norkus, besides ethylene / propylene glycol, discloses the possible use of “alternative” non-aqueous solvents (see para. [0053]). Accordingly, a person having ordinary skilling the art would view terpineol predictably as one of these possible “alternative” non-aqueous solvents for use in the composition. (See KSR v. Teleflex, supra; MPEP 2143(I)(B) (substituting simply of one known element for another to obtain predictable results).) Accordingly, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the present application to have substituted one of the listed organic solvents or Norkus for an “alternative” organic solvent such as terpineol, as disclosed in Shirakami.
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 Ryan Fortin whose telephone number is 703-756-5649. The examiner can normally be reached on Monday – Friday from 8:30 AM to 12:30 PM and from 2:30 PM to 6:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fernando Toledo, can be reached at telephone number 571-272-1867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.T.F./
Examiner, Art Unit 2897
/FERNANDO L TOLEDO/Supervisory Patent Examiner, Art Unit 2897