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
No amendment was filed with the response dated 7 October 2025.
Claims 1-4 and 6-13 are currently pending.
Status of Rejections
All other previous rejections are herein maintained.
Claim Rejections - 35 USC § 112
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.
Claims 1-4 and 6-13 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.
As to claim 1, the recitation “does not comprise a dispersant” is indefinite in light of the specification. The phrase “dispersant” is used a singular time in the specification as is not defined to provide a class or generic type of compound to be excluded based on the instant claim language. In other words, it is indefinite what compounds are excluded from the scope of the instant claim language when afforded the broadest reasonable interpretation in light of the specification.
In light of evidence presented by Applicant, surfactants are included as a specific type of dispersant (see pg. 7). The instant claim includes a specific type of surfactant, “…sulfonic acid salt…cumylphenol…”, thus contradicting the phrase “does not comprise a dispersant”.
Claims 2-4 and 6-13 are rejected as being dependent upon the claim 1 and do not correct the indefiniteness of claim 1.
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.
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.
Claims 1-3 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Diaddario, Jr. et al (US 2006/0283715 A1) in view of Shindou et al (US 4,985,311) and Takeuchi et al (US 4,804,587).
As to claims 1-3, Diaddario, Jr. discloses a zinc-nickel composite plating bath (Title) comprising a sulfonic acid salt obtained by adding ethylene oxide or propylene oxide or a block copolymer of ethylene oxide and propylene oxide to naphthol (generically [0032],[0038] disclosing using sulfonic acids, further using surfactants [0056]-[0059] “propylene oxide-ethylene oxide block copolymers (such as ethylene glycol-propylene glycol block copolymers); ethylene oxide condensation products… beta.-naphthol ethoxylates” [0057], [0059] “naphthalenesulfonic acids or condensation products… sulfated polyalkoxy naphthyl ether salt Nape 14-90” which is used specifically in Examples 16-20 in Table 2), wherein the plating bath comprises zinc ions ([0025]), nickel ions ([0026]), and chloride ions (claim 11, 13, [0032], [0065] [0090] and provided with zinc and nickel above), with pH of 5.6-6.8 ([0028]) which overlaps and falls within the instantly claimed range of 4.5 to 6.9 and thus prima facie obvious to use a particular value within the prior art ranges which overlaps the instantly claimed range. See MPEP 2144.05 I. Diaddario, Jr. disclosed wherein the coating increases the corrosion resistance of the substrate ([0003],[0017],)
Diaddario, Jr. fails to explicitly disclose the colloidal silica is a cationic colloidal silica having at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof.
Shindou discloses inclusion of silica into zinc nickel coating in order to increase the corrosion resistance of said coating (col. 2 lines 15-20) using colloidal silica (col. 8 lines 15() . Takeuchi discloses using a cationic colloidal alumina coated silica of Snowtex AK in electroplating baths because it promotes the transfer of colloidal silica to the cathode (col. 7 lines 29-34).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a silica such as Snowtex AK as taught by Shindou in the bath of Diaddario, Jr. in order to increase the corrosion resistance of the zinc nickel plating layer (shindou col. 2 lines 15-20) and further use the specific cationic colloidal silica of Takeuchi because it promotes the transfer of the colloidal silica to the cathode to enable deposition (Takeuchi col. 7 lines 29-34).
As to claim 4, Daddario, Jr. discloses the use of amines ([0005], [0019] “at most, only trace amounts of chelators “, claim 17).
As to claim 6, Daddario, Jr. discloses using an aromatic carboxylic acid ([0012]).
As to claim 7, Daddario, Jr. discloses using benzoic acids or a benzoate salt ([0050]).
As to claims 8 and 9, Daddario, Jr. discloses using an aromatic aldehyde or ketone such as o-chlorobenzaldehyde and benzyl acetone ([0054]).
As to claim 10, Daddario, Jr. discloses using an ammonium salt ([0019], [0066]), boric acid ([0013]), and borates ([0027], claim 6).
As to claim 11, Daddario, Jr. discloses baths without using sulfate ions (See Table 1).
As to claim 12, Daddario, Jr. discloses applying a zin nickel compsite plating to a plating target using zinc and nickel metal anodes ([0084]) and using a plating bath comprising: a zinc-nickel composite plating bath (Title) comprising a sulfonic acid salt obtained by adding ethylene oxide or propylene oxide or a block copolymer of ethylene oxide and propylene oxide to naphthol (generically [0032],[0038] disclosing using sulfonic acids, further using surfactants [0056]-[0059] “propylene oxide-ethylene oxide block copolymers (such as ethylene glycol-propylene glycol block copolymers); ethylene oxide condensation products… beta.-naphthol ethoxylates” [0057], [0059] “naphthalenesulfonic acids or condensation products… sulfated polyalkoxy naphthyl ether salt Nape 14-90” which is used specifically in Examples 16-20 in Table 2), wherein the plating bath comprises zinc ions ([0025]), nickel ions ([0026]), and chloride ions (claim 11, 13, [0032], [0065] [0090] and provided with zinc and nickel above), with pH of 5.6-6.8 ([0028]) which overlaps and falls within the instantly claimed range of 4.5 to 6.9 and thus prima facie obvious to use a particular value within the prior art ranges which overlaps the instantly claimed range. See MPEP 2144.05 I. Diaddario, Jr. disclosed wherein the coating increases the corrosion resistance of the substrate ([0003],[0017],)
Diaddario, Jr. fails to explicitly disclose the colloidal silica is a cationic colloidal silica having at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof.
Shindou discloses inclusion of silica into zinc nickel coating in order to increase the corrosion resistance of said coating (col. 2 lines 15-20) using colloidal silica (col. 8 lines 15() . Takeuchi discloses using a cationic colloidal alumina coated silica of Snowtex AK in electroplating baths because it promotes the transfer of colloidal silica to the cathode (col. 7 lines 29-34).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a silica such as Snowtex AK as taught by Shindou in the bath of Diaddario, Jr. in order to increase the corrosion resistance of the zinc nickel plating layer (shindou col. 2 lines 15-20) and further use the specific cationic colloidal silica of Takeuchi because it promotes the transfer of the colloidal silica to the cathode to enable deposition (Takeuchi col. 7 lines 29-34).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Capper (US 2005/0189231 A1) in view of Daddario, Jr. (US 2006/0283715 A1), Shindou (US 4,985,311), and Takeuchi (US 4,804,587.
As to claims 13, Capper discloses using soluble anodes of zinc or insoluble anodes of nickel ([0118]) and where the anode chamber is partitioned with an ion exchange membrane ([0118] and Fig. 1 #116 [0126]). Capper fails to explicitly disclose the electroplating solution of claim 1.
Daddario, Jr. discloses applying a zin nickel compsite plating to a plating target using zinc and nickel metal anodes ([0084]) and using a plating bath comprising: a zinc-nickel composite plating bath (Title) comprising a sulfonic acid salt obtained by adding ethylene oxide or propylene oxide or a block copolymer of ethylene oxide and propylene oxide to naphthol (generically [0032],[0038] disclosing using sulfonic acids, further using surfactants [0056]-[0059] “propylene oxide-ethylene oxide block copolymers (such as ethylene glycol-propylene glycol block copolymers); ethylene oxide condensation products… beta.-naphthol ethoxylates” [0057], [0059] “naphthalenesulfonic acids or condensation products… sulfated polyalkoxy naphthyl ether salt Nape 14-90” which is used specifically in Examples 16-20 in Table 2), wherein the plating bath comprises zinc ions ([0025]), nickel ions ([0026]), and chloride ions (claim 11, 13, [0032], [0065] [0090] and provided with zinc and nickel above), with pH of 5.6-6.8 ([0028]) which overlaps and falls within the instantly claimed range of 4.5 to 6.9 and thus prima facie obvious to use a particular value within the prior art ranges which overlaps the instantly claimed range. See MPEP 2144.05 I. Diaddario, Jr. disclosed wherein the coating increases the corrosion resistance of the substrate ([0003],[0017],)
Diaddario, Jr. fails to explicitly disclose the colloidal silica is a cationic colloidal silica having at least one selected from the group of trivalent to heptavalent metal cations on a surface thereof.
Shindou discloses inclusion of silica into zinc nickel coating in order to increase the corrosion resistance of said coating (col. 2 lines 15-20) using colloidal silica (col. 8 lines 15() . Takeuchi discloses using a cationic colloidal alumina coated silica of Snowtex AK in electroplating baths because it promotes the transfer of colloidal silica to the cathode (col. 7 lines 29-34).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used the plating bath of Diaddario, Jr. in the method of Capper because it is a recognized electroplating bath to prevent corrosion of the plated product, is highly versatile.and can be varied to provide preferred physical and chemical characteristics, including corrosion protection for the underlying substrate and pleasing aesthetics. (Diaddario, Jr. ([0017]).
Further, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a silica such as Snowtex AK as taught by Shindou in the bath of Diaddario, Jr. in order to increase the corrosion resistance of the zinc nickel plating layer (Shindou col. 2 lines 15-20) and further use the specific cationic colloidal silica of Takeuchi because it promotes the transfer of the colloidal silica to the cathode to enable deposition (Takeuchi col. 7 lines 29-34).
Response to Arguments
Applicant's arguments filed 7 October 2025 have been fully considered but they are not persuasive.
In response to Applicant’s evidence presented defining the term “dispersant”, by virtue of such a disclosure attributing a definition to the term and function used in the specification, the term is defined as such as presented. Therefore for examination on the merits, the broadest reasonable interpretation will be that the claim precludes compounds or chemicals which perform such a function. It is noted, however, that the evidenced presented by Applicant defines surfactants as a specific type of dispersant (See pg. 7), where the instant claims recite a specific surfactant, ala the sulfonic acid obtained by adding EO and/or PO to naphthol or cumylphenol. Thus, the claim is still indefinite with respect to the evidence presented and the components of the instant claim because the instant claim contains a surfactant, which affects the agglomeration and interface as provided in the NPL presented by Applicant.
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).
In response to Applicant’s arguments towards Shindou that the use of the anionic colloidal silica uses a Cr+3 ion to stably coprecipitate the silica within the plating, this argument is not persuasive because chromium +3 is a trivalent metal cation complexed to the surface thereof. In other words, the chromium in the plating bath provides the specific function that is claimed, i.e. complexed to the surface. The Examiner interpreted “cationic colloidal silica” to be essentially complex added in that fashion, instead of becoming complexed with a trivalent metal cation within the plating bath as provided in Shindou. Applicant does not contend the motivation to use silica in zinc nickel composite plating to improve the corrosion resistance of the plating as formed composites as provided in the rejection. Furthermore, it is noted that Shindou does not expressly address whether the colloidal silica is anionic or negatively charged as asserted by applicant via incorporation of “…[anionic]…” in the citation to Shindou.
In response to Applicant’s argument that Takeuchi discloses using cationic colloidal silica in an electrolytic chromate treatment bath, this argument is not persuasive because it does not address the underlying motivation for use of cationic colloidal silica in electroplating baths, not necessarily chromate baths. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, one of ordinary skill in that would readily appreciate the action in both the aqueous zinc/nickel baths and the chromate baths when used in an electroplating process would be the same. In both types of baths, silica is deposited upon the cathode upon the application of the desired potential/current. The cation which makes cationic colloidal silica Snowtex AK expressly has metal cation on a surface thereof.
In response to Applicant’s argument that one of ordinary skill in the art would have no expectation of success because Shindou discloses it is “necessary” to include trivalent chromium ions into the bath, this argument is not persuasive because one of ordinary skill in the art provided the teachings of Takeuchi would understand that the cationic colloidal silica already has in place the metal cations which act on the surface of the colloidal silica. In other words, if anything, one of ordinary skill in the art would recognize that a cationic silica be preferred based on the disclosure of Takeuchi since it is already positively charged thus attracted to the cathode during electroplating processes. Furthermore, there is nothing precluding the inclusion of chromium +3 ions into a plating bath to satisfy the limitation “…metal cations on a surface thereof.” because this specific action is provided in Shindou.\
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
No further arguments are presented outside the allegation the additional reference for claim 13 does not disclose teachings of claim 1 not asserted by the Examiner.
Conclusion
THIS ACTION IS MADE FINAL. 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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795