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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 6, 2025 has been entered.
This is in response to the Amendment dated October 6, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Double Patenting
Claims 1-4, 6-12 and 17-20 stand provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-15 of copending Application No. 18/256,480 (Ozkaya et al.) (reference application).
The provisional rejection of claims 1-4, 6-12 and 17-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No.
18/256,480 (Ozkaya et al.) has been held in abeyance until allowable subject matter is indicated.
The species of:
“(D) thiocyanic acid, salts, esters, and/or isoforms thereof, in a total amount ranging from 130 mmol/L to 250 mmol/L, based on the total volume of the electroplating bath; and
(E) one or more than one compound of formula (1), salts, and/or sulfoxides thereof
R1-S-(CH2)n-CH(NH2)-R2 (1),
wherein
- R1 is a branched or unbranched C1 to C4 alkyl,
- R2 is selected from the group consisting of COOH, salts thereof, and (CH2)mOH,
- n is an integer ranging from 1 to 4, and
- m is an integer ranging from 1 to 4”
recited in present claim 1, lines 7-17, are structurally similar to the genera of:
“(D) one or more than one compound comprising at least one -SCN moiety, salts, esters,
and/or isoforms thereof, in a total amount ranging from 100 mmol/L to 750 mmol/L, based on the total volume of the electroplating bath; and
(E) one or more than one organic compound, including sulfoxides thereof, comprising at
least one -SH moiety and/or at least one -S-(CH2)k-CH3 moiety, wherein k is an integer ranging
from 0 to 4”
recited in claim 1, lines 8-16, of copending Application No. 18/256,480.
Claim Objections
Claim 18 has been objected to because of minor informalities.
The objection of claim 18 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
Bath
I. Claim(s) 1-4, 6-10 and 18-19 stand rejected under 35 U.S.C. 103 as being unpatentable
over Schulz et al. (US Patent Application Publication No. 2014/0042033 A1).
Regarding claim 1, Schulz teaches an electroplating bath for depositing a black chromium layer, the electroplating bath comprising:
(A) trivalent chromium ions (= trivalent chromium ions) [page 2, [0026]];
(B) one or more than one complexing agent for said trivalent chromium ions (= the electroplating bath further comprises carboxylate ions. The carboxylate ions act as a complexing agent for complexing the chromium ions present) [page 6, [0105]];
(C) optionally, one or more than one pH buffer compound for said electroplating bath (=
at least one pH buffer substance) [page 2, [0028]];
(D) thiocyanic acid, salts, esters, and/or isoforms thereof (= (15) thiocyanic acid) [page 4,
[0072]; and page 5, [0097]: most preferred is (15)], in a total amount ranging from 130 mmol/L to 250 mmol/L (= 7.67 g/L to 14.75 g/L of thiocyanic acid), based on the total volume of the electroplating bath (= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more preferably at most 25 g/L) [pages 4-5, [0086]];
(E) one or more than one compound of formula (I), salts, and/or sulfoxides thereof
R1-S-(CH2)n-CH(NH2)-R2 (I),
wherein
- R1 is a branched or unbranched C1 to C4 alkyl,
- R2 is selected from the group consisting of COOH, salts thereof, and (CH2)mOH,
- n is an integer ranging from 1 to 4, and
- m is an integer ranging from 1 to 4 (= Formula (Ia) wherein R11 represents -COOH, R12
and R13 represent -H, R14 represents -CH3 and n is 2 (page 3, [0052]); (8) 2-Amino-4-methylsulfanyl-butyric acid (page 4, [0065]); and page 5, [0097]: most preferred is (8)),
wherein said bath comprises (E) in a total amount ranging from 150 mmol/L to 950 mmol/L (= 22.38 g/L to 141.75 g/l of 2-Amino-4-methylsulfanyl-butyric acid), based on the total volume of the electroplating bath (= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more preferably at most 25 g/L) [pages 4-5, [0086]].
The bath of Schulz differs from the instant invention because Schulz does not disclose wherein the molar ratio of (E):(D) is ranging from 0.9 to 2.65.
Schulz teaches methods and plating baths for electrodepositing a dark chromium layer
(page 1, [0001]). Most preferred are mixtures of compounds (1) and/or (8) with (15) and/or (17) [page 5, [0097]].
The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at least 0.01 g/L, preferably at least 0.05 g/L, more preferably at least 0.1 g/L, even more preferably 0.5 g/L, and most preferably 1 g/L. The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths
is at most 100 g/L, preferably at most 50 g/L, more preferably at most 25 g/L, even more preferably at most 10 g/L, and most preferably at most 5 g/L (pages 4-5, [0086]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified (E) and (D) described by Schulz with wherein the molar ratio of (E):(D) is ranging from 0.9 to 2.65 because Schulz teaches that the
concentration of the at least one coloring agent according to Formulae (I) in the electroplating
baths is at least 0.01 g/L to more preferably at most 25 g/L, where the claimed concentrations of (D) is encompassed by the prior art range and the claimed concentration of (E) overlaps the prior art range, and thus, using the concentrations in the encompassed and overlapping ranges in the bath would have arrived at the molar ratio of (E):(D) as presently claimed.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists in 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).”
Regarding claim 2, Schulz teaches halogen anions (= among suitable conductivity salts are potassium and sodium sulphates and chlorides as well as ammonium chloride and ammonium sulphate) [page 7, [0118]].
Regarding claim 3, Schulz teaches wherein the bath comprises (D) in a total amount
ranging from 150 mmol/L to 245 mmol/L, based on the total volume of the electroplating bath (= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L) [pages 4-5, [0086]].
Regarding claim 4, Schulz teaches wherein said bath comprises (E) in a total amount
ranging from 200 mmol/L to 950 mmol/L, based on the total volume of the electroplating bath
(= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L) [pages 4-5, [0086]].
Regarding claim 6, the bath of Schulz differs from the instant invention because Schulz does not disclose wherein the molar ratio of (E):(D) is ranging from 1 to 2.3.
Schulz teaches methods and plating baths for electrodepositing a dark chromium layer
(page 1, [0001]). Most preferred are mixtures of compounds (1) and/or (8) with (15) and/or (17) [page 5, [0097]].
The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at least 0.01 g/L, preferably at least 0.05 g/L, more preferably at least 0.1 g/L, even more preferably 0.5 g/L, and most preferably 1 g/L. The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at most 100 g/L, preferably at most 50 g/L, more preferably at most 25 g/L, even more preferably at most 10 g/L, and most preferably at most 5 g/L (pages 4-5, [0086]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified (E) and (D) described by Schulz with wherein the molar ratio of (E):(D) is ranging from 1 to 2.3 because Schulz teaches that the
concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more preferably at most 100 g/L, where the claimed concentrations of (D) and (E) are encompassed by the prior art range, and thus, using concentrations in the encompassed range in the bath would have arrived at the molar ratio of (E):(D) as presently claimed.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists in 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)“.
Regarding claim 7, Schulz teaches wherein R1 is methyl, ethyl, n-propyl, or iso-propyl (= R14 represents -CH3) [page 3, [0052]].
Regarding claim 8, Schulz teaches wherein R2 is COOH and/or salts thereof (= R11
represents -COOH) [page 3, [0052]].
Regarding claim 9, Schulz teaches wherein n is 1 or 2 (= n, p, q are independently of each other integers from 0 to 4) [page 2, [0031]].
Regarding claim 10, Schulz teaches wherein in (E) the compound of formula (I) comprises methionine (= Formula (Ia) wherein R11 represents -COOH, R12 and R13 represent -H,
R14 represents -CH3 and n is 2 (page 3, [0052]); and (8) 2-Amino-4-methylsulfanyl-butyric acid (page 4, [0065])).
Regarding claim 18, Schulz teaches that wherein the trivalent chromium ions are from a
inorganic or organic trivalent chromium salt having anions selected from the group consisting of sulfate anions, formate, acetate, malate, and/or oxalate anions (= the trivalent chromium ions
can be introduced in the form of any bath soluble and compatible salt such as chromium chloride hexahydrate, chromium sulphate, chromium formate, chromium acetate, basic chromium sulphate (Cr2(SO4)3۰12(H2O)), chrome alum (KCr(SO4)2۰12(H2O)), and the like) [page
6, [0103]].
Regarding claim 19, Schulz teaches wherein the bath is an electroplating bath, wherein cobalt ions are present in a range from 1 mg/L to 500 mg/L or does not comprise cobalt ions (= the electroplating bath) [page 2, [0025] to page 3, [0046]].
Method
II. Claim(s) 11-12 and 21 stand rejected under 35 U.S.C. 103 as being unpatentable over
Schulz et al. (US Patent Application Publication No. 2014/0042033 A1) as applied to claims 1-4,
6-10 and 18-19 above, and further in view of Hotta et al. (US Patent Application Publication No. 2020/0094526 A1).
Schulz is as applied above and incorporated herein.
Regarding claim 11, Schulz teaches a method for electroplating a black chromium layer
on a substrate, the method comprising the steps:
(a) providing the substrate (= the workpiece may comprise different substrates, e.g.
electrically conductive substrates or non-conductive substrates) [page 8, [0143]],
(b) contacting the substrate with the electroplating bath (= the workpiece is contacted
with the electroplating baths by dipping the substrate into the electroplating bath) [page 8, [0144]] according to claim 1 (see I. above), and
(c) applying an electrical current such that the black chromium layer is electroplated onto the substrate (= cathode current densities during electrodepositing dark chromium layers can range from 5 to 25 amperes per square decimeter (A/dm2)) [page 9, [0147]].
The method of Schulz differs from the instant invention because Schulz does not
disclose (d) heat-treating the substrate obtained from step (c) at a temperature ranging from 30°C to 100°C.
Hotta teaches electroplating a black chromium plating layer (page 1, [0019]).
Immersing the resin substrate provided with the black chromium plating layer in warm water at 30° C. or higher for a predetermined time, wherein (page 1, [0020]).
[T]he amount of thiocyanic acid contained in the trivalent chromium plating bath, the
temperature of the warm water, and the time of immersion of the resin substrate in the warm water are adjusted so that the black chromium plating layer exhibits a b* value of −1.7 or less
based on the L*a*b* color system (page 1, [0021]).
The temperature of warm water is adjusted to 30° C. or higher as described above. The temperature is preferably 50° C. or higher, more preferably 60° C. or higher, most preferably 70° C. or higher, for the following reason. An increase in the temperature of warm water leads to promotion of the structural change of a chromium hydroxide precursor in the black chromium plating layer into chromium hydroxide (page 2, [0042]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method described by Schulz by heat-
treating the substrate obtained from step (c) at a temperature ranging from 30°C to 100°C because immersing a black chromium plating layer in warm water at 30° C. or higher promotes a structural change of a chromium hydroxide precursor in the black chromium plating layer into
chromium hydroxide.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 12, Hotta teaches wherein in step (d) the heat-treating is carried out in water (= the temperature of warm water is adjusted to 30° C. or higher) [page 2, [0042]].
Regarding claim 21, the method of Schulz differs from the instant invention because Schulz does not disclose wherein the black chromium layer has an a* value ranging from -1.5 to
+3, or a b* value ranging from -2.5 to +6, or both an a* value ranging from -1.5 to +3, and a b* value ranging from -2.5 to +6.
Schultz teaches that:
The b* values of the dark chromium deposits of the present invention are in the range of -7.0 to +7.0, preferably in the range of -5.0 to +5.0, and more preferably in the range of -3.0 to +3.0. Thus, the hue of the dark color of the dark chromium deposits of the present invention ranges from yellowish or brownish to bluish or greyish (page 5, [0091]).
The a* values of the dark chromium deposits of the present invention are in the range of -2.0 to +2.0. Thus, the hue of the dark color of the dark chromium deposits of the present invention is nearly unaffected by the a* value and the small deviations of a* within the color of the dark chromium deposits are not visible by the human eye. L*, a* and b* values for chromium deposits produced with an electroplating bath and by a method of the present invention are shown for a spectrum of single colouring agents in Table 1 (page 5, [0092]).
Hotta also teaches that:
A b* value of 3.0 or less based on the L*a*b* color system leads to development of a non-yellowish black color, and a b* value of -1.7 or less leads to development of a slightly bluish black color, which meets a commercial demand. No particular limitation is imposed on the lower limit of the b* value. However, the lower limit is preferably -10, since a b* value of less than -10 leads to development of a strongly bluish black color, resulting in limited application of the black plated resin part (page 2, [0036]).
No particular limitation is imposed on the a* value. However, the a* value is preferably
-3 to 3, since an a* value of less than −3 leads to development of a strongly greenish black color, whereas an a* value of more than 3 leads to development of a strongly reddish black color, resulting in limited application of the black plated resin part (page 2, [0037]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the black chromium layer described by Schulz with wherein the black chromium layer has an a* value ranging from -1.5 to +3, or a b* value ranging from -2.5 to +6, or both an a* value ranging from -1.5 to +3, and a b* value ranging from -2.5 to +6 because a* values of dark chromium deposits range from -2.0 to +2.0
and b* values of dark chromium deposits range from -7.0 to +7.0 which meets a commercial demand.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists in 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) “.
Furthermore, a b* value of 3.0 or less leads to development of a non-yellowish black color and an a* value of -3 to 3 leads to a greenish to reddish black color.
Bath
III. Claim(s) 17 stands rejected under 35 U.S.C. 103 as being unpatentable over Schulz et al. (US Patent Application Publication No. 2014/0042033 A1).
Regarding claim 17, Schulz teaches an electroplating bath for depositing a black
chromium layer, the electroplating bath comprising:
(A) trivalent chromium ions (= trivalent chromium ions) [page 2, [0026]];
(B) one or more than one complexing agent for said trivalent chromium ions (= the electroplating bath further comprises carboxylate ions. The carboxylate ions act as a
complexing agent for complexing the chromium ions present) [page 6, [0105]];
(C) one or more than one pH buffer compound for said electroplating bath (= at least one pH buffer substance) [page 2, [0028]];
(D) thiocyanic acid, salts, esters, and/or isoforms thereof (= (15) thiocyanic acid) [page 4,
[0072]; and page 5, [0097]: most preferred is (15)], in a total amount ranging from 130 mmol/L to 250 mmol/L (= 7.67 g/L to 14.75 g/L of thiocyanic acid), based on the total volume of the
electroplating bath (= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more preferably at most 25
g/L) [pages 4-5, [0086]];
(E) one or more than one compound of formula (I), salts, and/or sulfoxides thereof
R1-S-(CH2)n-CH(NH2)-R2 (I),
wherein
- R1 is a branched or unbranched C1 to C4 alkyl,
- R2 is COOH, and/or salts thereof,
- n is an integer ranging from 1 to 4, and
- m is an integer ranging from 1 to 4 (= Formula (Ia) wherein R11 represents -COOH, R12
and R13 represent -H, R14 represents -CH3 and n is 2 (page 3, [0052]); (8) 2-Amino-4-methylsulfanyl-butyric acid (page 4, [0065]); and page 5, [0097]: most preferred is (8)),
wherein said bath comprises (E) in a total amount ranging from 140 mmol/L to 950 mmol/L (= 20.89 g/L to 141.75 g/l of 2-Amino-4-methylsulfanyl-butyric acid), based on the total volume of the electroplating bath (= the concentration of the at least one coloring agent
according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more preferably at most 25 g/L) [pages 4-5, [0086]].
The bath of Schulz differs from the instant invention because Schulz does not disclose wherein the molar ratio of (E):(D) is ranging from 0.9 to 2.65.
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified (E) and (D) described by Schulz with
wherein the molar ratio of (E):(D) is ranging from 0.9 to 2.65 because Schulz teaches that the
concentration of the at least one coloring agent according to Formulae (I) in the electroplating
baths is at least 0.01 g/L to more preferably at most 25 g/L, where the claimed concentration of (D) overlaps with the prior art range, and thus, using the concentrations of (D) and (E) in the overlapping range in the bath would have arrived at the molar ratio of (E):(D) as presently claimed.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists in 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).”
Method
IV. Claim(s) 20 stands rejected under 35 U.S.C. 103 as being unpatentable over Schulz et al.
(US Patent Application Publication No. 2014/0042033 A1) as applied to claims 1-4, 6-10 and 18-
19 above, and further in view of Hotta et al. (US Patent Application Publication No.
2020/0094526 A1) as applied to claims 11-12 and 21 above, and further in view of CN 107557829 (‘829).
Schulz and Hotta are as applied above and incorporated herein.
Regarding claim 20, the method of Schulz differs from the instant invention because
Schulz does not disclose wherein in step (d) the heat-treating is a hot water rinse.
CN ‘829 teaches hot water washing: Wash the product obtained in step n at 40-60°C for
140-160s (ρ [0025]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the method described by the Schulz
combination with wherein in step (d) the heat-treating is a hot water rinse because hot water washing at 40-60°C for 140-160s washes a chromium electroplated product.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Continued Response
Declaration
The declaration under 37 CFR 1.132 filed October 6, 2025 is insufficient to overcome the
rejection of claims 1-4, 6-12 and 17-21 based upon specific references applied under 35 U.S.C. 103 as set forth in the last Office action because a specific electroplating bath was tested (declaration, pages 3-4, bridging paragraph). The testing of the electroplating bath described for its ability that only within a certain range of (E):(D) ratio, the L* values could be sufficiently
decreased while maintain a broad ASD range is not commensurate in scope with the present
claims. The present claims are more generic than what was tested and what was tested was not
representative of the overall broadness of what is presently claimed, i.e., that only within a
certain range of (E):(D) ratio, the L* values could be sufficiently decreased while maintain a broad ASD range only works for what was specifically tested. Such evidence is insufficient because Applicants’ possession of what is shown carries with it a possession of variations and adaptations which would have been obvious, at the same time, to one of ordinary skill in the art.
Schulz teaches that the most preferred are mixtures of compounds (1) and/or (8) with (15) and/or (17) [page 5, [0097]].
The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at least 0.01 g/L, preferably at least 0.05 g/L, more preferably at least 0.1 g/L, even more preferably 0.5 g/L, and most preferably 1 g/L. The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at most 100 g/L, preferably at most 50 g/L, more preferably at most 25 g/L, even more preferably at most 10 g/L, and most preferably at most 5 g/L (pages 4-5, [0086]).
Because the concentrations of the compounds of (8) 2-Amino-4-methylsulfanyl-butyric acid (page 4, [0065]) and (15) thiocyanic acid (page 4, [0072]) are either encompassed by or overlapping with the presently claimed concentrations of (E) an (D), the bath as presently claimed can be made.
Although Applicant has found that only within a certain range of (E):(D) ratio, the L* values could be sufficiently decreased while maintain a broad ASD range, the inoperativeness of a reference is not established by merely showing that a particular disclosed embodiment is
lacking in perfection does not establish nonobviousness. Ex parte Allen 2 USPQ 2d 1425 (BPAI
19870; Decca Ltd. V. United States 191 USPQ 439 (Ct. Cl. 1976); Bennett v. Halahan 128 USPQ 398, 401 (CCPA 1961). A prior art reference must be considered in its entirety, i.e., as a whole,
including portions that would lead away from the claimed invention (MPEP § 2141.02). In addition, a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) [MPEP § 2145].
For the composition claims, MPEP § 2112(I) states that “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer in Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).”
For the method claim, MPEP § 2144(IV) states that "One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings in In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).”
Claim Rejections - 35 USC § 103
Bath
V. Claim(s) 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schulz et al. (US Patent Application Publication No. 2014/0042033 A1) as applied to claims 1-4, 6-10 and 18-19 above.
Schulz is as applied above and incorporated herein.
Regarding claim 22, Schulz teaches wherein the bath comprises (D) in a total amount
ranging from 150 mmol/L to 245 mmol/L (= 12.15 g/L to 19.84 g/L of thiocyanic acid), based on
the total volume of the electroplating bath (= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more
preferably at most 25 g/L] (pages 4-5, [0086]), wherein said bath comprises (E) in a total amount ranging from 200 mmol/L to 950 mmol/L (= 29.44 g/L to 139.85 g/L of 2-Amino-4-methylsulfanyl-butyric acid), based on the total volume of the electroplating bath [= the concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to at most 100 g/L] (pages 4-5, [0086]).
The bath of Schulz differs from the instant invention because Schulz does not disclose wherein the molar ratio of (E):(D) is ranging from 1 to 2.3.
Schulz teaches methods and plating baths for electrodepositing a dark chromium layer
(page 1, [0001]). Most preferred are mixtures of compounds (1) and/or (8) with (15) and/or (17) [page 5, [0097]].
The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at least 0.01 g/L, preferably at least 0.05 g/L, more preferably at least 0.1 g/L, even more preferably 0.5 g/L, and most preferably 1 g/L. The concentration of the at least one coloring agent according to Formulae (I) or (II) in the inventive electroplating baths is at most 100 g/L, preferably at most 50 g/L, more preferably at most 25 g/L, even more preferably at most 10 g/L, and most preferably at most 5 g/L (pages 4-5, [0086]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified (E) and (D) described by Schulz with wherein the molar ratio of (E):(D) is ranging from 1 to 2.3 because Schulz teaches that the
concentration of the at least one coloring agent according to Formulae (I) in the electroplating baths is at least 0.01 g/L to more preferably at most 100 g/L, where the claimed concentrations
of (D) and (E) are encompassed by the prior art range, and thus, using concentrations in the encompassed range in the bath would have arrived at the molar ratio of (E):(D) as presently claimed.
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists in 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)“.
Regarding claim 23, Schulz teaches wherein (E) is methionine (= (8) 2-Amino-4-methylsulfanyl-butyric acid) [page 4, [0065]].
Response to Arguments
Applicant’s arguments filed October 6, 2025 have been fully considered but they are not persuasive. The standing prior art rejections have been maintained for the following reasons:
• Applicant states that also in Paragraph 6, Dr. Wachter notes that the Schulz reference, even with the plethora of examples and wide range of concentrations of (E) and (D), fails to obtain any L* value below 59. Thus, not only did Schulz fail to understand that both the concentrations of each of (E) and (D), and the ratio of (E) to (D), were critical to obtain a desirable black chromium deposit,, but across all of the examples in Schulz, not a single one comes close to the L* values obtained by the present invention.
• Applicant states that since Schulz fails to disclose or suggest any benefit from a selection of the relative amounts of (E) and (D), it would not be “routine experimentation” to “optimize” by
selecting any particular ratio (E):(D), and Applicant’s claims would not have been obvious over Schulz.
In response, the Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. MPEP § 2144(IV) states that “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”
For the composition claims, MPEP § 2112(I) states that “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer in Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).”
For the method claim, MPEP § 2144(IV) states that "One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings in In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).”
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/EDNA WONG/Primary Examiner, Art Unit 1795 November 9, 2025