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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2026 has been entered.
Response to Amendment
The amendment filed on 03/03/2026has been entered into the prosecution of the application.
Claim(s) 20 and 27 is/are canceled.
Currently, claim(s) 16-18, 21-25, and 28-30 is/are pending, with claims 16-18, 21-22, and 29-30 withdrawn from consideration. Accordingly, claims 23-25 and 28 are pending examination.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 23-25 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kazusane Mizukami of JP 2019-101002 A (hereinafter referred to as Mizukami) in view of Masato Komatsuki of JP 2002237436 A (hereinafter referred to as Komatsuki).
As to claim 23, Mizukami teaches to an electrolyte solution that extracts a precipitate and/or an inclusion in a metal material by electrolysis, the electrolyte solution comprising
an adsorbent (Mizukami, paragraph [0051], teaches to an adsorbent, as Mizukami teaches to Ag2S that is adsorbed to a surface of the precipitate and/or a surface of the inclusion; Mizukami, paragraphs [0017]-[0018], teaches that the surfaces of the precipitates and inclusions with a large solubility product will be covered by compounds with a small solubility product, making them less likely to dissolve) that is adsorbed to a surface of the precipitate and/or a surface of the inclusion (Mizukami, paragraph [0051], teaches that is adsorbed to a surface of the precipitate and/or a surface of the inclusion, as Mizukami teaches to the Ag ions are exchanged with Mg on the surface of the MgS particles, expelling the Mg ions into the electrolyte while remaining as Ag2S on the surface of the MgS particles),
wherein a content of the adsorbent is 0.1 g/L or more with respect to a base electrolyte solution containing an electrolyte and a solvent (Mizukami, paragraphs [0058] and [0075], teaches to wherein a content of the adsorbent is 0.1 g/L or more with respect to a base electrolyte solution containing an electrolyte and a solvent, as Mizukami teaches to a concentration of metal M’ may be between 2ppm to 2000 ppm in methanol; 1000 ppm equals to 1 g of M’ in 1000 g of methanol solution. In case of methanol, the well-known density at standard condition is 0.791 g/mL; 1000 ppm of M’ in methanol equals to about 0.791 g/L).
Mizukami does not explicitly teach wherein the adsorbent is a compound having at least one functional group selected from the group consisting of a thiol functional group, a sulfide functional group, and a disulfide functional group.
In an analogous art, Komatsuki teaches to wherein the adsorbent is a compound having at least one functional group selected from the group consisting of a thiol functional group, a sulfide functional group, and a disulfide functional group. (Komatsuki, paragraphs [0032] and [0037], to wherein the adsorbent is a compound having at least one functional group selected from the group consisting of a thiol functional group, a sulfide functional group, and a disulfide functional group, as Komatsuki teaches to a triazine thiol derivative being advantageous because it does not react with the organic electrolyte solution when in contact with electrodes under electrolytic or electrodeposition conditions). Komatsuki, paragraph [0038], teaches that the triazine thiol derivatives have excellent affinity with metals. Komatsuki, paragraph [0037], teaches examples of triazine thiol derivatives, such as 6-dibutylamino-1,3,5-triazine- 2,4-dithiol.
Both Mizukami and Komatsuki relate to an electrolyte solution (Komatsuki, paragraph [0003]). Mizukami does not explicitly teach a thiol functional group. Mizukami does teach using an adsorbent that is adsorbed to a surface of the precipitate and/or a surface of the inclusion and that is of a thiol group. Komatsuki teaches a functional thiol group in an organic electrolyte solution, wherein the triazine thiol derivatives have excellent affinity with metals.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified the composition of Mizukami with the functional thiol group of Komatsuki for providing strong affinity with metals for improved electrodeposition.
As to claim 24, Mizukami in view of Komatsuki teaches to an electrolyte solution of claim 23, wherein the adsorbent is adsorbed to a surface of a matrix metal of the metal material (Mizukami, paragraph [0028], teaches to wherein the adsorbent is adsorbed to a surface of a matrix metal of the metal material, as Mizukami teaches that Ag2S is used on the surface of a steel sample for etching using the electrolytic solution of Mizukami and the corresponding result is shown by a SEM image; paragraph [0028]).
As to claim 25, Mizukami in view of Komatsuki teaches to an electrolyte solution of claim 23, further comprising an agent that forms a complex with a matrix metal of the metal material (Mizukami, paragraphs [0033] and [0034], teaches to further comprising an agent that forms a complex with a matrix metal of the metal material, as Mizukami teaches that, as the complex-forming agent for Fe ions, one or more may be selected from acetylacetone, maleic anhydride, maleic acid, triethanolamine, salicylic acid, and methyl salicylate;).
As to claim 28, Mizukami in view of Komatsuki teaches to an electrolyte solution of claim 23, wherein the metal material is a steel material (Mizukami, paragraph [0030], teaches to wherein the metal material is a steel material, as Mizukami teaches to the iron matrix of a steel sample).
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive.
On pg. 5 of 6, the applicant asserts that “It has not been made clear how this Ag2S is ‘modified with the functional thiol group.’ As such, Applicant submits this modification is considered to be chemically difficult and not obvious to one of ordinary skill in the art.”
In response to applicant's argument that “it has not been made clear how this Ag2S is ‘modified with the functional thiol group,’” the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
On pg. 5 of 6, the applicant asserts that “However, this concentration pertains to the metal M’ (such as Ag) used for ion exchange, not to a thiol-containing adsorbent compound.”
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant is invited for an interview for advanced prosecution.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Eiichi Nanba of US 2009/0047537 A1 (hereinafter, Nanba) teaches to a method of making steel plate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN LEE whose telephone number is (703)756-1254. The examiner can normally be reached M-F, 7:00-16:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN LEE/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794