DETAILED ACTION
Claim(s) 1-5 was/were rejected in Office Action mailed on 12/05/2025.
Applicant filed a response, amended claim(s) 4, on 03/03/2026.
Claim(s) 1-5 are pending.
Claim(s) 1-5 are rejected.
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
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Masayuki et al., KR 20080052478A (Masayuki) in view of Shigeki et al., JP 2002309400A (Shigeki) and Green et al., EP 0343816A1 (Green) ( both provided in IDS received on 08/10/2023).
The examiner has provided a machine translation of Masayuki et al., KR 20080052478A and Shigeki et al., JP 2002309400A. The citation of the prior art set forth below refers to the machine translation.
Regarding claims 1 and 3-5, Masayuki teaches an electroless gold plating bath comprising a water-soluble gold compound, a complex agent, an aldehyde compound, and an amine compound, represented by the general formula (1) of R1-NH-C2H4-NH-R2 or the general formula (2) of R3-(CH2-NH-C2H4-NH-CH2)n-R4, where R1, R2, R3 and R4 represent -OH, -CH3, -CH2OH, -C2H4OH, -CH2N(CH3)2, -CH2NH(CH2OH), -CH2NH(C2H4OH), -C2H4NH(CH2OH), -C2H4NH(C2H4OH), -CH2N(CH2OH)2, -CH2N(C2H4OH)2, -C2H4N(CH2OH)2 or -C2H4N(C2H4OH)2 and may be identical to one another or different from one another, and n is an integer of 1 to 4; the water-soluble gold compound is a gold cyanide salt (Masayuki, Abstract).
Masayuki further teaches the aldehyde compound as a reducing agent (Masayuki, page 3, bottom paragraph); examples of the aldehyde compound such as formaldehyde and the like (Masayuki, page 6, 7th paragraph).
Given that Masayuki discloses the electroless gold plating bath that overlaps the presently claimed a regeneration method for a gold plating solution, including the aldehyde compound such as formaldehyde, it therefore would be obvious to one of ordinary skill in the art, to use the electroless gold plating bath, which is both disclosed by Masayuki and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Furthermore, given that Masayuki does not require the use of a chelate compound having two or more iminodiacetic acid groups or aminomethylenephosphonic acid groups, therefore Masayuki would necessarily meet the claimed limitation of not containing a chelate compound having two or more iminodiacetic acid groups or aminomethylenephosphonic acid groups.
Masayuki does not explicitly disclose (a) the gold plating bath further comprising an iron cyanide compound; wherein the iron cyanide compound is at least one kind selected from the group consisting of pentacyanonitrosyl iron(III) acid or its salt (i.e., pentacyanonitrosylferrate(III)):pentacyanoammine iron(II) acid or its salt (i.e., pentacyanoammineferrate(II)): hexacyanido iron(II) acid or its salt (i.e., hexacyanidoferrate(II)): and hexacyanido iron(III) acid or its salt (i.e., hexacyanidoferrate(III)); or wherein the iron cyanide compound is at least one of potassium ferrocyanide or potassium ferricyanide;
or (b) regenerating the gold plating bath by bring the gold plating solution into contact with a chelating resin having an iminodiacetic acid group or an aminomethylenephosphonic acid group, thereby removing iron ions from the gold plating solution.
With respect to the difference (a), Green teaches an electroless gold deposition bath which comprises a source of gold, such as an alkali metal gold cyanide (Green, Abstract). Green specifically teaches the gold deposition bath is stabilized by the incorporation of a mixture of an alkali metal or ammonium ferrocyanide and an alkali metal or ammonium ferricyanide (Green, Abstract); for this purpose, the aqueous liquor in certain preferred embodiments may contain in solution an alkali metal or ammonium ferricyanide and an alkali metal or ammonium ferrocyanide; the potassium compounds, K₃FeIII(CN)₆ (i.e., potassium ferricyanide) and K₄FeII(CN)₆ (i.e., potassium ferrocyanide), are preferred (Green, page 3, bottom paragraph).
As Green expressly teaches, the stabilizing agent that is intended to stabilize the reaction(s) whereby the gold is reduced in order to reduce or inhibit the tendency to random deposition varying from the very slow to the very sudden or even to the spontaneous precipitation of the gold (Green, page 3, 2nd paragraph from bottom); the electroless deposition can deposit an even thickness of metal over a component (Green, page 2, 2nd paragraph).
Green is analogous art as Green is drawn to an electroless gold deposition bath which comprises a source of gold.
In light of the motivation of incorporation of a mixture of an alkali metal or ammonium ferrocyanide and an alkali metal or ammonium ferricyanide, such as the potassium compounds, K₃FeIII(CN)₆ (i.e., potassium ferricyanide) and K₄FeII(CN)₆ (i.e., potassium ferrocyanide), in an electroless gold plating bath, as taught by Green, it therefore would have been obvious to a person of ordinary skill in the art to incorporation K₃FeIII(CN)₆ (i.e., potassium ferricyanide) and K₄FeII(CN)₆ (i.e., potassium ferrocyanide), in the electroless gold plating bath of Masayuki, in order to reduce or inhibit the tendency to random deposition varying from the very slow to the very sudden or even to the spontaneous precipitation of the gold, deposit an even thickness of metal over a component, and thereby arrive at the claimed limitations.
With respect to the difference (b), Shigeki teaches a recycling method for a gold plating solution (Shigeki, Abstract). Shigeki specifically teaches in the recycling method for a gold plating solution, the gold plating solution used for plating is kept in contact with a chelate resin (preferably, the one having an iminodiacetic acid coordination group)
As Shigeki expressly teaches, components gradually accumulate with long-term operation; Representative metal ions (i.e., accumulating components) include iron ions (Shigeki, [0007]); this recycling method removes inorganic interfering components from a used gold plating solution (Shigeki, page 2, bottom paragraph).
Shigeki is analogous art as Shigeki is drawn to a recycling method for a gold plating solution.
In light of the motivation of applying a recycling method for a gold plating solution, by contacting with a chelate resin having an iminodiacetic acid coordination group, as taught by Shigeki, it therefore would have been obvious to a person of ordinary skill in the art, to apply the recycling method by contacting with a chelate resin having an iminodiacetic acid coordination group, for the gold plating bath of Masayuki in view of Green upon long-term operation, in order to remove inorganic interfering components, such as iron ions, and thereby arrive at the claimed invention.
Regarding claim 2, as applied to claim 1, Masayuki in view of Green and Shigeki further teaches the resin having a structure in which a styrene-based (i.e., polystyrene) is used as a base (Shigeki, page 5, 2nd paragraph from bottom).
Given that Masayuki in view of Green and Shigeki discloses the regeneration method that overlaps the presently claimed regeneration method, including resin containing polystyrene as a base, it therefore would be obvious to one of ordinary skill in the art, to use the regeneration method, which is both disclosed by Masayuki in view of Green and Shigeki and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Response to Arguments
Applicant primarily argues:
“(i) Here, Shigeki corresponds to the document cited in the Specification of the present application, namely, Japanese Patent No. 3842063. In the first place, the Examples disclosed in Shigeki are directed only to the "removal of copper ions," and Shigeki does not examine at all the "removal of iron ions from a gold plating solution," the "gold plating solution containing ...formaldehyde or its precursor" as a "reducing agent," as claim 1 recites, thereby to prevent a decrease in plating performance.
In other words, in any of the Examples disclosed in Shigeki, no "iron cyanide compound" is used in the gold plating solutions, and no "iron-containing substrate" is used.
(ii) Furthermore, Shigeki describes, in paragraphs [0006] to [0009], that the impurities to be removed are components that are not present in the plating solution when the plating bath is initially prepared, but that gradually accumulate with prolonged operation (i.e., components released from the substrate being plated during the plating process. As described above, in the Examples of Shigeki, copper substrates are gold plated, and Shigeki discloses only the Examples related to the "removal of copper ions, which are components released from the substrates being plated during the plating process."
Accordingly, it can be said that the regeneration method for a gold plating solution disclosed in Shigeki is completely different from the invention of the present application, in which, as claim 1 recites, "a gold plating solution" that initially contains "an iron cyanide compound" (i.e., iron ions) (as a component that is present in the plating solution when the plating bath is initially prepared) is brought "into contact with [the] chelating resin having an iminodiacetic acid group or an aminomethylenephosphonic acid group, thereby removing iron ions from the gold plating solution." Thus, Shigeki fails to disclose or suggest the regeneration method for a gold plating solution as defined in the invention of the present application.
Given the above, it would not have been obvious to a skilled person to arrive at the regeneration method for a gold plating solution as recited in claim 1 of the present application, even if Masayuki and Shigeki and Green are combined.”
Remarks, p. 5-6
The Examiner respectfully traverses as follows:
Shigeki broadly teaches components gradually accumulate with long-term operation; Representative metal ions (i.e., accumulating components) include iron ions (Shigeki, [0007]) gold plating solution thus reprocessed removes interfering components such as copper ions and iron ions (Shigeki, page 7, 1st paragraph).
“applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright,
377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant further argues:
“(iii) Furthermore, according to the present invention, as described in the Specification and Table 1, and recited in claim 1, since "[the] reducing agent that is formaldehyde or its precursor, and an iron cyanide compound" are contained, cyanohydrin is generated by a reaction between "formaldehyde or its precursor" and cyanide ions released from the "iron cyanide compound," and this cyanohydrin improves the bath stability of the gold plating solution, leading to excellent plating performance.
Consequently, at least these features of claim 1 would not have been obvious in view of Masayuki, Shigeki, and Green.”
Remarks, p. 6
The Examiner respectfully traverses as follows:
It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Given Masayuki in view of Shigeki and Green teaches a method is substantially identical to the method used in the present invention, as set forth on pages 4-7 of Office Action mailed 03/03/2026, it is clear that Masayuki in view of Shigeki and Green would intrinsically have the substantially identical advantages as the present invention.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights