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 10 June 2026 fails to place the application in condition for allowance.
Claims 1-20 are currently pending.
Claims 1-10 are currently under examination.
Claims 11-20 are currently withdrawn.
Status of Rejections
All previous rejections are herein withdrawn due to Applicant’s Amendment filed 10 June 2026.
New rejections are provided below.
Election/Restrictions
Newly submitted claims 15-20 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Claims 1-10 and 15-20 lack unity of invention because even though the inventions of these groups require the technical feature of a method for electroplating an article with metal, comprising the step of applying current in a plating bath comprising ions of the metal and an organic compound additive, wherein the plating bath comprises the article as a cathode and a conductive substrate having a layer comprising nickel oxide and iron oxide formed on a surface thereof as an anode, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of previously cited Wolfarth. Wolfarth discloses a method for electroplating an article with metal, comprising the step of applying current in a plating bath comprising ions of the metal and an organic compound additive, wherein the plating bath comprises the article as a cathode and a conductive substrate having a layer comprising nickel oxide and iron oxide formed on a surface thereof as an anode ([0051] “iron oxides and/or nickel oxides” thus disclosing the specific species with both iron and nickel).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 15-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicants’ arguments with respect to claim(s) 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Opaskar et al (US2005/0133376) in view of Asano et al (US 4,251,329), Pellegri (US 4,511,442) and Tomaszewski et al (US 4,466,865).
As to claim 1, Opaskar discloses a method for electroplating an article with metal (Title), comprising
the step of applying current ([0090] in a plating bath comprising ions of the metal ([0012],[0015]) and an organic compound additive ([0018] complexing agents, [0030] polyoxyalkylene compound, [0063] auxiliary brightening agents)
wherein the plating bath comprises
the article as a cathode ([0006] “substrate”) and
a conductive substrate iron comprising nickel and iron ([0091]).
Opaskar fails to explicitly disclose an organic compound additive, wherein the nickel oxide and iron oxide are formed as a layer on a conductive substrate, and 30 to 40 at% iron in the layer.
Pellegri discloses coating a substrate with a layer of iron and nickel oxides (col. 2 lines 45-47).
Asano disclose the use of ferrite, a mixture of iron oxide and nickel oxide, for use with zinc electroplating (col. 4 lines 48-49).
Tomaszewski discloses using an atomic ratio of 30-40% of iron in a ferrite anode (col. 3 lines 30-36 calculated from the mol % which thusly overlaps the instantly claimed range and thus prima facie obvious. See MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a ferrite anode as taught by Asano with the method of Opaskar because such materials are recognized for their intended use in order to enable electroplating within the bath. Such a modification amounts to an obvious substitution of materials to provide an expected result of enabling electroplating during a zinc plating process. See MPEP 2144.07 and 2143 A.
It would have been obvious to have provided the iron in an atomic % as taught by Tomaszewski in the anode of Opaskar, as modified by Asano, because such amounts are recognized for the intended use of a ferrite anode for use in electroplating processes. See MPEP 2144.07. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, starting from a mixture of 50/50 iron oxide to nickel oxide, optimization of that range would provide an expected result of more or less iron to nickel ratio.
It further would have been obvious to one of ordinary skill in the art to provide the electrode as a substrate with a coating layer as taught by Pellegri in the method of Opaskar because it is resistant to anodic corrosion, less expensive (Pellegri col. 2 lines 15-21), and dimensionally stable (Pelligri col. 2 lines 29-31).
As to claim 2, Opaskar disclose wherein the metal comprises zinc (Title).
As to claim 3, Opaskar discloses wherein the plating bath is an alkaline plating bath (Title).
As to claim 5, Opaskar discloses wherein a zinc alloy film is formed on a surface of the article (title “zinc-nickel alloy plating”).
As to claims 6 and 7, Opaskar discloses wherein the additives comprise amine-based chelating agents and brightening agents ([0018], specifically [0021],[0024]).
As to claims 8 and 9, Opaskar, as modified by Pellegri, Asano, and Tomaszewski, further discloses wherein the layer comprising the oxide or nitride is formed by a conductive substrate comprising iron and having a plating film containing nickel (via formation of the iron oxide and nickel oxide layer on the conductive substrate as combined above with Pellegri).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Opaskar, as modified by Pellegri, Asano, and Tomaszewski, as applied to claim 1 above, and further in view of Wohlfarth et al (US 2019/0376200 A1).
As to claim 4, Opaskar, as modified by Pellegri, Asano, and Tomaszewski, fails to explicitly disclose wherein the conductive substrate comprises at least one of nickel and iron.
Wohlfarth discloses wherein the conductive substrate is iron, nickel, or graphite ([0040]).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used an iron substrate as taught by Wohlfarth as the conductive substrate in Opaskar, as modified by Pellegri, Asano, and Tomaszewski, because steel and nickel are recognized materials suitable for the use of a conducting substrate for alkaline zinc plating with a catalyst layer disposed thereon, where the exchange amount to an obvious substitution of specific materials to provide the expected result of a substrate capable of conduction to apply an electrocatalytic layer for use as an anode in a plating system. See MPEP 2144.07 and 2143 B.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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