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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 3, 2025 has been entered.
This is in response to the Amendment dated November 3, 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
Claim Rejections - 35 USC § 103
Bath
I. Claim(s) 1-13 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) one or more than one compound comprising at least one -SCN moiety, 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 100 mmol/L to 750 mmol/L (= 5.9 g/L to 44.25 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 preferably at most 50 g/L) [pages 4-5, [0086]]; 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 (= Formula (Ia) wherein R11 represents -COOH, R12 and R13 represent -H, and R14 represents -CH3 (page 3, [0052]); (8) 2-Amino-4-methylsulfanyl-butyric acid (page 4, [0065]); and page 5, [0097]: most preferred is (8)),
characterized in that the electroplating bath does not contain any nickel ions (page 2, [0025] to [0046]).
The bath of Schulz differs from the instant invention because Schulz does not disclose characterized in that (E) and (D) are present in a molar ratio ranging from 0.9 to 2.65, based
on (E):(D).
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 preferably at most 50 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 2, Schulz teaches wherein the electroplating bath further comprises
sulfate ions (= 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 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 4, Schulz teaches Fe(II) ions (= in a further preferred embodiment the electroplating baths further comprise ferrous ions) [page 6, [0109]].
Regarding claim 5, Schulz teaches wherein (C) comprises boric acid (= the at least one pH buffer substance used in the electroplating baths may be any substance exhibiting pH buffering properties, such as boric acid) [page 6, [0106]].
Regarding claim 6, Schulz teaches wherein said bath comprises (D) in a total amount ranging from 100 mmol/L to 600 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 to preferably at most 50 g/L) [pages 4-5, [0086]].
Regarding claim 7, Schulz teaches wherein said bath comprises (E) in a total amount ranging from 1 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 to at most 100 g/L) [pages 4-5, [0086]].
Regarding claim 8, Schulz teaches wherein (E) comprises at least a 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)m-OH,
- 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)).
Regarding claim 9, Schulz teaches wherein R1 is methyl, ethyl, n-propyl, or iso-propyl (= R14 represents -CH3) [page 3, [0052]].
Regarding claim 10, Schulz teaches wherein R2 is COOH and/or salts thereof (= R11 represents -COOH) [page 3, [0052]].
Regarding claim 11, 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 12, Schulz teaches wherein (E) comprises at least methionine (= 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)).
Regarding claim 13, the method of Schulz differs from the instant invention because
Schulz does not disclose wherein the molar ratio of (E):(D) is ranging from 0.95 to 2.6.
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 0.95 to 2.6 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 preferably at most 50 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
II Claim(s) 14-17 stand rejected under 35 U.S.C. 103 as being unpatentable over Schulz et
al. (US Patent Application Publication No. 2014/0042033 A1) in view of Hotta et al. (US Patent
Application Publication No. 2020/0094526 A1).
Regarding claim 14, 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 an 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) one or more than one compound comprising at least one -SCN moiety, 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 100 mmol/L to 750 mmol/L (= 5.9 g/L to 44.25 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 preferably at most 50 g/L) [pages 4-5, [0086]]; 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 (= Formula (Ia) wherein R11 represents -COOH, R12 and R13 represent -H, and R14 represents -CH3 (page 3, [0052]); (8) 2-Amino-4- methylsulfanyl-butyric acid (page 4, [0065]); and page 5, [0097]: most preferred is (8)), characterized in that the electroplating bath does not contain any nickel ions (page 2, [0025] to [0046]), 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 the following:
a. Characterized in that (E) and (D) are present in a molar ratio ranging from 0.9 to 2.65, based on (E):(D).
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
characterized in that (E) and (D) are present in a molar ratio ranging from 0.9 to 2.65, based on (E):(D) 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 preferably at most 50 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).”
b. (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 15, 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 16, Schulz teaches wherein the black chromium layer exhibits an L*a*b* color in which L* ranges from 40 to 50 (= the L* values of most preferably from 60 to 50) [page 5, [0090]], a* ranges from 0.3 to 1.6 (= the a* values in the range of -2.0 to +2.0) [page 5, [0092]], and b* ranges from -1.4 to 5.6 (= the b* values more preferably in the range of -3.0 to +3.0) [page 5, [0091]].
Regarding claim 17, Schulz teaches wherein the black chromium layer exhibits an L*a*b* color in which a* ranges from 1.0 to 1.6 (= the a* values in the range of -2.0 to +2.0) [page 5, [0092]], and b* ranges from -1.4 to 5.2 (= the b* values of more preferably in the range of -3.0 to +3.0) [page 5, [0091]].
The method of Schulz differs from the instant invention because Schulz does not disclose in which L* ranges from 40 to 44.
Schultz teaches that:
The L* values of the dark chromium deposits of the present invention range from <78 to 50, preferably from 75 to 55, more preferably from 70 to 60, even more preferably from 65 to
55, and most preferably from 60 to 50. Thus, the dark color of the dark chromium deposits of the present invention ranges from greyish black to dark grey (page 5, [0090]).
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because the black chromium layer is a product produced by performing the method. Schulz teaches a method in a similar manner as presently claimed. Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference.
MPEP § 2116.01 states that “[a] process yielding a novel and nonobvious product may nonetheless be obvious; conversely, a process yielding a well-known product may yet be nonobvious."
Continued Response
Declaration
The declaration under 37 CFR 1.132 filed November 3, 2025 is insufficient to overcome the rejection of claims 1-17 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., it only works for what was specifically tested.
Such evidence is also 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.
Also, present claim 1, lines 1-2, recite “An electroplating bath for depositing a black chromium layer, the electroplating bath comprising”. The transitional term “comprising” leaves the claim open for the inclusion of unspecified ingredients even in major amounts (MPEP § 2111.03).
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]) encompasses the presently claimed concentrations of (E) and (D), the bath as presently claimed can be made.
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious.”
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 "[o]ne 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
III. Claim(s) 18 and 19 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 1-13 above.
Schulz is as applied above and incorporated herein.
Regarding claim 18, Schulz teaches wherein the bath comprises (D) in a total amount
ranging from 100 mmol/L to 300 mmol/L (= 5.9 g/L to 17.7 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 100 mmol/L to 450 mmol/L (= 14.92 g/L to 67.14 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 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 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 19, Schulz teaches wherein (E) is methionine (= (8) 2-Amino-4-methylsulfanyl-butyric acid) [page 4, [0065]].
Method
IV. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schulz et
al. (US Patent Application Publication No. 2014/0042033 A1) in view of Hotta et al. (US Patent Application Publication No. 2020/0094526 A1) as applied to claims 14-17 above.
Schulz and Hotta are as applied above and incorporated herein.
Schulz teaches wherein the bath comprises (D) in a total amount ranging from 100 mmol/L to 300 mmol/L (= 5.9 g/L to 17.7 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 100 mmol/L to 450 mmol/L (= 14.92 g/L to 67.14 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 method 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 25 g/L, where the claimed concentrations of (D) and (E) overlap the prior art range, and thus, using the concentrations 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).”
Response to Arguments
Applicant’s arguments filed November 3, 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 hence, the inventive examples show an unexpected technical effect that is in no way suggested as possibly or reasonably expected to be attainable in Schulz.
In response, electroplating baths with specific compositions were tested (page 21, line 11 to page 22, line 1). The testing of the electroplating baths 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., it only works for what was specifically tested.
Such evidence is also 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.
Also, present claim 1, lines 1-2, recite “An electroplating bath for depositing a black chromium layer, the electroplating bath comprising”. The transitional term “comprising” leaves the claim open for the inclusion of unspecified ingredients even in major amounts (MPEP § 2111.03).
• 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.
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. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness.
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 "[o]ne 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).”
• 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, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
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. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness.
MPEP § 2144(IV) states that "[o]ne 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).”
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred and alternative embodiments. Non-preferred and alternative embodiments constitute prior art (MPEP § 2123). The disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention (MPEP § 2143.01).
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/EDNA WONG/Primary Examiner, Art Unit 1795 November 11, 2025