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
The amendment filed on 4 December 2025 fails to place the application in condition for allowance.
Claims 1-15 are currently pending and under examination.
Status of Rejections
All previous rejections are herein maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, the phrase “single step” is not found within the instant specification and thus deemed new matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6-11, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masao (JP 2016-164820 A with citations drawn to the translation provided via Espacenet from EPO for convenience).
As to claim 1, Masao discloses a plating method (Title “manufacturing method for a suspension substrate, Figs 14a-g) including:
preparing a laminate (Figs. 14a-d) made of stainless steel (layer #11 [0053] “The metal support layer 11 is made of stainless steel.”), and copper or a copper alloy (#12/16 which comprise wirings 13a-c [0035] “a wiring layer 12 provided on the other surface of the insulating layer 10 (the surface opposite the piezoelectric element 44) and having a plurality of wirings 13a, 13b, and 13c” , [0052] “Each of the wirings 13a, 13b, and 13c is configured as a conductor for transmitting an electrical signal, and the material of each of the wirings 13a, 13b, and 13c is not particularly limited as long as it has the desired conductivity, but it is preferable to use copper (Cu).”); and
forming plating underlayers made of nickel on a first plated portion provided at the stainless steel and a second plated portion provided at the copper or the copper alloy at a same time using a hydrochloric acid electrolytic solution (Fig. 14 d layers 33 and 83, [0081] “That is, it is preferable that the corresponding portion of the surface of the metal support layer 11 is first subjected to nickel strike plating using a hydrochloric acid-based plating solution to remove the passive film” [0077] “When the bonding nickel plating layer 83 is formed, the bonding nickel plating layer 33 is formed on the wiring connection portion 16 .” thus discloses the formation of layers 83 and 33 at the same time).
As to the limitation “wherein the forming plating underlayers on the first plated portion and the second plated potion using the hydrochloric acid electrolytic solution is performed in a single step”, Masao discloses the following relevant passages (emphasis added):
[0077] “When the bonding nickel plating layer 83 is formed, the wiring connection portion a connecting nickel plating layer 33 is formed on the surface 16”
[0081] “In order to further improve the adhesion between the metal supporting layer 11 and the gold-plating bonding layer 84, the nickel-plating bonding layer 83 may be formed as follows. That is, it is preferable that nickel strike plating using a hydrochloric acid-based plating solution is first performed on the corresponding portion of the surface of the metal supporting layer 11 in order to remove the passive film, and then nickel plating is performed by an electrolytic plating method to form the bonding nickel plating layer 83.”
In other words, Masao discloses that layers 33 and 83 are formed at the same time and Masao further goes on to discuss how layer 83 is formed. Therefore, Masao discloses that layer 83 is formed via a nickel strike plating using a hydrochloric acid plating solution followed by a different electrolytic plating method. Based on the combined disclosure, the prior art discloses forming a nickel strike layer as a part of the process of forming layer 83 and that layer 33 is formed at the same time as forming layer 83, thus the nickel strike layer would necessarily be performed when forming the two layers.
As to the limitation “in a single step”, this recitation does not add meaningful weight to the process as claimed in light of the broadest reasonable interpretation due to the transitional phrase “including” where the “Single step” does not preclude additional steps. The “plating underlayers” (emphasis added) are interpreted to be the under layer on the first portion and the second portion thus providing the plural of the underlayer in a single step, i.e. on each portion.
As to claims 2 and 3, Masao discloses wherein the nickel plating is an electrolytic nickel strike plating via application of a current value ([0081]) thus they are formed under the same plating conditions because they are formed at the same time at the same current density.
As to claim 6, Masao further discloses forming plating underlayers made of nickel on plating underlayers formed on the first plated portion and the second plated portion. ([0081] “…first subjected to nickel strike plating using a hydrochloric acid-based plating solution to remove the passive film, and then nickel plating is applied by an electrolytic plating method to form a bonding nickel plating layer 83.).
As to claim 7, Masao further discloses forming plating layers made of gold (Au) on plating underlayers formed on the first plated portion and the second plated portion. (Fig. 14f layers 84 and 24 [0078] “When the bonding gold plating layer 84 is formed, the bonding gold plating layer 34 is formed on the bonding nickel plating layer 33 At this time, the head terminal 5 and the tail terminal 6 (both see FIG. 1) are also gold plated, and the connection nickel plating layer 33 on the wiring connection portion 16 is also gold plated (i.e., an inspection gold plating layer 24 is formed).”).
As to claim 8, Masao further discloses wherein the laminate is a printed circuit board in which the stainless steel and a conductor layer made of copper or a copper alloy are laminated [0029] “preparing a laminate…” [0065]), the first plate portion is a first terminal portion provided at the stainless steel (#31 at #17 [0039]), and the second plated portion is a second terminal portion provided at the conductor layer (#16) [0038]).
As to claim 9, Masao further discloses a method of manufacturing a printed circuit board (Title “manufacturing method for a suspension substrate, Figs 14a-g) including:
preparing a laminate (Figs. 14a-d) including stainless steel (layer #11 [0053] “The metal support layer 11 is made of stainless steel.”) and a conductor layer made of copper or a copper alloy (#12/16 which comprise wirings 13a-c [0035] “a wiring layer 12 provided on the other surface of the insulating layer 10 (the surface opposite the piezoelectric element 44) and having a plurality of wirings 13a, 13b, and 13c” , [0052] “Each of the wirings 13a, 13b, and 13c is configured as a conductor for transmitting an electrical signal, and the material of each of the wirings 13a, 13b, and 13c is not particularly limited as long as it has the desired conductivity, but it is preferable to use copper (Cu).”);
forming a first connection terminal and a second connection terminal at the laminate at a same time (Fig. 14d [0077]);
forming the first connection terminal includes forming a plating underlayer made of nickel on a first terminal portion provided at the stainless steel using a hydrochloric acid electrolytic solution (Fig. 14 d layers 33 and 83, [0081] “That is, it is preferable that the corresponding portion of the surface of the metal support layer 11 is first subjected to nickel strike plating using a hydrochloric acid-based plating solution to remove the passive film”); and
forming the second connection terminal includes forming a plating underlayer made of nickel on a second terminal portion provided at the conductor layer using a hydrochloric acid electrolytic solution. ([0077] “When the bonding nickel plating layer 83 is formed, the bonding nickel plating layer 33 is formed on the wiring connection portion 16 .” thus discloses the formation of layers 83 and 33 at the same time using the hydrochloric acid solution).
As to the limitation “wherein the forming plating underlayers on the first plated portion and the second plated potion using the hydrochloric acid electrolytic solution is performed in a single step”, Masao discloses the following relevant passages (emphasis added):
[0077] “When the bonding nickel plating layer 83 is formed, the wiring connection portion a connecting nickel plating layer 33 is formed on the surface 16”
[0081] “In order to further improve the adhesion between the metal supporting layer 11 and the gold-plating bonding layer 84, the nickel-plating bonding layer 83 may be formed as follows. That is, it is preferable that nickel strike plating using a hydrochloric acid-based plating solution is first performed on the corresponding portion of the surface of the metal supporting layer 11 in order to remove the passive film, and then nickel plating is performed by an electrolytic plating method to form the bonding nickel plating layer 83.”
In other words, Masao discloses that layers 33 and 83 are formed at the same time and Masao further goes on to discuss how layer 83 is formed. Therefore, Masao discloses that layer 83 is formed via a nickel strike plating using a hydrochloric acid plating solution followed by a different electrolytic plating method. Based on the combined disclosure, the prior art discloses forming a nickel strike layer as a part of the process of forming layer 83 and that layer 33 is formed at the same time as forming layer 83, thus the nickel strike layer would necessarily be performed when forming the two layers.
As to the limitation “in a single step”, this recitation does not add meaningful weight to the process as claimed in light of the broadest reasonable interpretation due to the transitional phrase “including” where the “Single step” does not preclude additional steps. The “plating underlayers” (emphasis added) are interpreted to be the under layer on the first portion and the second portion thus providing the plural of the underlayer in a single step, i.e. on each portion.
As to claims 10 and 11, Masao discloses wherein the nickel plating is an electrolytic nickel strike plating via application of a current value ([0081]) thus they are formed under the same plating conditions because they are formed at the same time at the same current density.
As to claim 14, Masao further discloses wherein the forming the first connection terminal further includes forming a plating underlayer made of nickel on a plating underlayer formed on the first terminal portion, and the forming the second connection terminal further includes forming a plating underlayer made of nickel on a plating underlayer formed on the second terminal portion. ([0081] “…first subjected to nickel strike plating using a hydrochloric acid-based plating solution to remove the passive film, and then nickel plating is applied by an electrolytic plating method to form a bonding nickel plating layer 83.).
As to claim 15, Masao further discloses wherein the forming the first connection terminal includes forming a plating layer made of gold (Au) on a plating underlayer formed on the first terminal portion, and the forming the second connection terminal further includes forming a plating layer made of gold (Au) on a plating underlayer formed on the second terminal portion. (Fig. 14f layers 84 and 24 [0078] “When the bonding gold plating layer 84 is formed, the bonding gold plating layer 34 is formed on the bonding nickel plating layer 33 At this time, the head terminal 5 and the tail terminal 6 (both see FIG. 1) are also gold plated, and the connection nickel plating layer 33 on the wiring connection portion 16 is also gold plated (i.e., an inspection gold plating layer 24 is formed).”).
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 4 and 12, are rejected under 35 U.S.C. 103 as being unpatentable over Masao, as applied to claims 1 and 9, respectively, in view of Takakura (US 2014/0311776 A1).
As to claim 4, Masao fails to explicitly disclose wherein the forming plating underlayers includes applying a voltage to each of the first plated portion and the second plated portion using a common electrode.
Takakura discloses a plating apparatus (title) comprising common electrode (Fig. 1 and 2 #s 105), applying a voltage to plural sections of a plated portion ([0061], [0066], [0072]) to simultaneous plate portions of a stainless steel substrate with a copper conductor layer ([0078]) to plate nickel underlayers ([0060]). Takakura further discloses using a hydrochloric acid based plating solution ([0091]).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was files to have used a common electrode and plating apparatus as disclosed in Takakura to plating the nickel underlayers because it enables a well formed plating layer at both the stainless steel support and the wiring trace made of copper (Takakura [0029]).
As to claim 12, Masao fails to explicitly disclose wherein the forming plating underlayers includes applying a voltage to each of the first plated portion and the second plated portion using a common electrode.
Takakura discloses a plating apparatus (title) comprising common electrode (Fig. 1 and 2 #s 105), applying a voltage to plural sections of a plated portion ([0061], [0066], [0072]) to simultaneous plate portions of a stainless steel substrate with a copper conductor layer ([0078]) to plate nickel underlayers ([0060]). Takakura further discloses using a hydrochloric acid based plating solution ([0091]).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was files to have used a common electrode and plating apparatus as disclosed in Takakura to plating the nickel underlayers because it enables a well formed plating layer at both the stainless steel support and the wiring trace made of copper (Takakura [0029]).
Claims 5 and 13, are rejected under 35 U.S.C. 103 as being unpatentable over Masao, as applied to claims 1 and 9, respectively, in view of Chung et al (US 2022/0372644 A1).
As to claim 5, Masao fails to explicitly disclose wherein a concentration of hydrochloric acid in an electrolytic solution is not less than 60 ml/L.
Chung discloses an appropriate amount of HCl for a nickel strike plating bath of 40-300 ml/L which overlaps the instantly claimed ranges ([0014]-[0015]), with a specific example of 80 ml/L (See Table 1).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was files to have used the appropriate amount of HCl with a nickel strike plating bath as taught by Chung in the method of Masao because the concentrations are suitable to both remove the passivation system of the steel base and prevent undesirable effects of the plating layer and prevention of equipment corrosion (Chung [0068] wherein the amount overlaps the instantly claimed range thus prima facie obvious. See MPEP 2144.05 I).
As to claim 13, Masao fails to explicitly disclose wherein a concentration of hydrochloric acid in an electrolytic solution is not less than 60 ml/L.
Chung discloses an appropriate amount of HCl for a nickel strike plating bath of 40-300 ml/L which overlaps the instantly claimed ranges ([0014]-[0015]), with a specific example of 80 ml/L (See Table 1).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was files to have used the appropriate amount of HCl with a nickel strike plating bath as taught by Chung in the method of Masao because the concentrations are suitable to both remove the passivation system of the steel base and prevent undesirable effects of the plating layer and prevention of equipment corrosion (Chung [0068] wherein the amount overlaps the instantly claimed range thus prima facie obvious. See MPEP 2144.05 I).
Response to Arguments
Applicant's arguments filed 4 December 2025 have been fully considered but they are not persuasive.
In response to Applicant’s arguments that Masao discloses using a nickel strike followed by a nickel bonding layer and therefore does not disclose the amended limitation of “performed in a single step”. This argument is not persuasive because the initial nickel strike using an hydrochloric acid electrolytic solution at the same time, thus forming plating underlayers on each first and second plated portion. Furthermore, the recitation “is performed in a single step” does not impart further methodical distinction since the “single step” does is not equated with “one” step as method steps may be arbitrarily defined or recited in any such manner so as to include either substeps or redundant steps. In other words, the “single step” as recited merely restates the forming of the underlayers merely using the hydrochloric acid electrolytic solution. The recitation does not preclude any additional steps or the like. The Examiner suggest perhaps tying specific method parameters of performing the particular step, i.e. time period of plating, or specific properties of the as formed underlayer, i.e. thickness, which impart an actual structural distinction to the method steps as claimed.
In response to Applicant’s argument that Takakura uses a hydrochloric acid electrolytic solution in a comparative example and thus one of ordinary skill in the art would not use Takakura’s disclosure to choose to use a hydrochloric acid electrolytic solution, this argument is not persuasive because Takakura is not relied upon as motivation to use said solution in the method of forming underlayers because Masao already discloses it’s use. Furthermore, areference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). See MPEP 2123 I.
In response to Applicant’s further arguments towards differences between Takakura’s process and Masao’s process, this argument is not persuasive because Takakura is not relied upon for the processes as claimed, but rather in providing a particular apparatus which achieves the same goal of plating nickel underlayers upon a substrate. The RG2 region with common electrode 105 is provided to explicitly allow for the plating upon nickel into the substrate traveling therethrough – [0060]-[0063] “A plurality of portions on which the plating underlayers are to be formed (hereinafter referred to as a portion to be plated) are provided at the one surface of the stainless steel plate 150”, “Further, a voltage is applied between the stainless steel plate 150 that comes into contact with the power feed roller 103, and the electrode 105 by the rectifier 111. In this case, the stainless steel plate 150 is a cathode, and the electrode 105 is an anode” “he current density in the electrolyte solution applied by the rectifier 111 is not less than 1 A/dm.sup.2, so that nickel can be efficiently deposited on the surface of the stainless steel plate 150.” Takakura explicitly has wiring traces 21-24 made of copper ([0120]) and stainless steel terminal portions 41/42 [0111] made of stainless steel [0117]. Takakura explicitly states the underlayers are formed simultaneously on 51 and 61 ([0130]).
No further arguments are presented.
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.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795