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 .
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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto (USP 5,364,460).
Regarding claims 1-2
Morimoto discloses a electroless gold plating bath comprising gold sulfite and a reducing agent comprising a hydrazine and/or ascorbic acid, and that the bath may further contain a thiosulfate (column 2, lines 3-12).
It would be obvious to use both a hydrazine and ascorbic acid reducing agent because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
Morimoto discloses that the hydrazine may be hydrazine hydrate or hydrazine sulfate (column 2, lines 42-51), as such it would be obvious to select these hydrazine compounds.
Morimoto discloses the use 2 to 8 g/L gold ion (column 2, lines 16-25) and 0.1 to 3 g/L thiosulfate (column 5, lines 7-15).
As the ranges of the reference overlap the claimed amounts and ratios the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 3
Morimoto discloses the hydrazine is used in an amount of 1 to 100g/L, and the other reducing agent (i.e., ascorbic acid) is used in an amount of 0.1 to 30 g/L (column 2, lines 58-68).
As the amounts of the reference overlap the claimed amounts the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 5
Morimoto discloses the use of benzotriazole (i.e., anti-corrosion agent in an amount of 0.01 to 1 g/L (column 5, lines 39-45).
Morimoto discloses the use of a nitrogenous compound, which may be an amie complexing agent such as ethylene diamine, in amounts of 0.05 to 50 g/L (column 4, line 39 to column 5, line 6).
As the ranges of the reference overlap the claimed amounts and ratios the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Morimoto does not disclose any of the claimed hydrazine compounds. This is not persuasive as Morimoto discloses the use of hydrazine hydrate, which is equivalent to the claimed hydrazine monohydrate.
Applicants argue that Morimoto does not disclose the claimed ratio of gold to thiosulfate. This is not persuasive as the reference discloses an overlapping range, and applicants have not shown any evidence of new or unexpected results. Further, applicants have not compared the closest prior art.
The remaining arguments have been fully considered, but are not persuasive for the same reasons given above.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734