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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, in the reply filed on December 11, 2025 is acknowledged.
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 11, 2025.
Therefore, after the election, claim 9 is withdrawn, and claims 1-8 are pending for examination as filed with the preliminary amendment of July 12, 2023.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6, line 2, “high-alkaline” aqueous solution is vague and indefinite as to what is “high-alkaline” other than sodium hydroxide or TMAH (as in 0040 of the specification as filed). Therefore, for the purpose of examination, sodium hydroxide or TMAH is understood to meet the claim requirements, but applicant should clarify what is intended, without adding new matter.
Claim Interpretation
Claim 1, line 5, “main component” as to the pH adjuster is understood to mean “containing the pH adjustor in an amount of 80 vol% or more” (note paragraph 0039 of the specification as filed). Furthermore, it is understood that pH adjustor can be in the form of the “high-alkaline aqueous solution” (note paragraph 0040 of the specification as filed).
Claim Rejections - 35 USC § 102
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 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 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oyamada et al (US 2005/0227074).
Claim 1: Oyamada provides preparing a substrate (core particles/substrate prepared, such as by catalyzing) (note 0073), and generating a plating liquid by mixing a first chemical liquid containing a metal ion from nickel sulfate (note 0032 as to ion formation), a reducing agent sodium hypophosphite (note 0028, 0032 as this material as reducing agent), and a complexing agent of sodium malate (note 0033, alkali metal salt of malic acid as complexing agent) (note initial electroless plating solution at 0073) and a second chemical liquid containing pH adjustor as a main component (note 0073, the adding of the aqueous sodium hydroxide solution, where it is understood that the second chemical liquid would be more than 80 wt% pH adjustor, since as described in the specification as filed, the pH adjustor can be a “high-alkaline aqueous solution” such as sodium hydroxide (note 0040 of the specification as filed), and Oyamada describes the material as “aqueous sodium hydroxide solution”, so simply the material described as pH adjustor by applicant, that is 100 wt% pH adjustor), and an electroless plating processing is performed on the substrate by using the generated plating liquid immediately after the generating of the plating liquid (note since the reducing deposition continues during/after the adding of the sodium hydroxide solution, plating occurs immediately after new plating solution formed, 0073).
Claim 5: it is understood that the second chemical liquid (sodium hydroxide solution) is configured to adjust a pH of the first chemical liquid such that the pH of the first chemical liquid is increased (as alkaline sodium hydroxide, understood to raise the pH from around 5, and since the desire is to maintain the pH, understood to be added to raise the pH, when falling, note 0046 as to adjusting pH with sodium hydroxide) (note 0073).
Claim 6: it is understood that the second chemical liquid is composed of high alkaline aqueous solution and inevitable impurities, as the only liquid requirements are sodium hydroxide and water (aqueous) (note 0073, where sodium hydroxide solution described by applicant as high alkaline aqueous solution) (note the specification as filed at 0040).
Claim 7: the generating of the plating liquid by the mixing is performed after increasing the temperature of the first chemical liquid to a temperature higher than room temperature (note initial bath heated to 75 degrees C to make the plating bath), which would occur before the second chemical liquid added during plating (note 0073).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Oyamada et al (US 2005/0227074).
Claim 8: Oyamada teaches the features of claim 1 as discussed for the 35 USC 102(a)(1) rejection of claim 1 using Oyamada et al above. As to before generating the plating liquid, generating the first chemical liquid by mixing a third chemical liquid containing the metal ion and a fourth chemical liquid containing the reducing agent, Oyamada describes providing a solution containing nickel sulfate (giving metal ions) and sodium hypophosphite reducing agent in a solution to provide the first initial solution/first chemical solution before adding the second chemical solution/sodium hydroxide solution (note 0073), but does not indicate how this solution formed.
However, as indicated in MPEP 2144.04(IV)(C), it is taught that selection of any order of mixing ingredients is prima facie obvious, noting In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Oyamada to provide a third chemical liquid with the metal ion (and solution material) and a fourth chemical liquid with reducing agent (and solution material) and combine these for generating the first chemical liquid with an expectation of predicably acceptable results, since such solutions would contain material that needs to be combined to form the first chemical liquid/initial plating solution and In re Gibson indicates that any order of mixing ingredients is prima facie obviousness.
Claims 1, 5 and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kanehiro (US 4935305).
Claim 1: Kanehiro provides preparing a substrate (ceramic chip) (note column 1, lines 5-20, column 3, lines 10-15), and generating a plating liquid by mixing a first chemical liquid containing a metal ion from nickel sulfide (Ni ions would be formed for coating, note column 1, lines 5-20, column 2, lines 50-60), a reducing agent sodium hypophosphite (note column 2, lines 50-60), and a complexing agent (note column 2, lines 50-60) (note initial electroless plating solution at column 2, lines 50-60) and a second chemical liquid containing pH adjustor as a main component (note column 3, lines 1-10, 35-40, claim 4, where it is understood that (1) under 35 USC 102 the pH adjustor in the form of “sodium hydroxide solution” can be more than 80% of the second chemical liquid as the only required materials are the sodium hydroxide and solution material—giving a sodium hydroxide solution, where applicant indicates the pH adjustor can be a sodium hydroxide containing solution, noting 0040 of the specification as filed, or alternatively (2) under 35 USC 103, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide that the pH adjustor to the extent claimed is the “sodium hydroxide” solution of Kanehiro, because Kanehiro describes such a solution as “a pH regulating liquid” (note column 3, lines 5-10) which can be considered a “pH adjustor” and so the second chemical liquid can be considered 100 wt% the sodium hydroxide solution/pH adjustor used by Kanehiro as the pH regulating liquid, since Kanehiro only indicates using this pH regulating liquid, so no other materials would be needed in the second chemical liquid, with an expectation of predictably acceptable results), and an electroless plating processing is performed on the substrate by using the generated plating liquid immediately after the generating of the plating liquid (note since the reducing deposition continues during/after the adding of the sodium hydroxide solution, plating occurs immediately after new plating solution formed, note column 3, lines 35-40).
Claim 5: it is understood that the second chemical liquid (sodium hydroxide solution) is configured to adjust a pH of the first chemical liquid such that the pH of the first chemical liquid is increased (as alkaline sodium hydroxide, understood to raise the pH to around 3.5-4.8, and since the desire is to provide the pH, understood to be added to raise the pH, when falling, note column 3, lines 35-40 as to adjusting pH with sodium hydroxide).
Claim 7: the generating of the plating liquid by the mixing is performed after increasing the temperature of the first chemical liquid to a temperature higher than room temperature (note initial bath heated to 80-93 degrees C to make the plating bath), and continual adjustment of pH of the bath with the second chemical solution/sodium hydroxide solution which therefore indicate heating before at least some second chemical liquid added during plating (note claim 4, column 2, lines 60-65, column 3, lines 1-10).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kanehiro (US 4935305).
Claim 8: Kanehiro provides the features of claim 1 as discussed for the 35 USC 102/103 rejection of claim 1 using Kanehiro above. As to before generating the plating liquid, generating the first chemical liquid by mixing a third chemical liquid containing the metal ion and a fourth chemical liquid containing the reducing agent, Kanehiro describes providing a solution containing nickel sulfide (giving metal ions) and sodium hypophosphite reducing agent in a solution to provide the first initial solution/first chemical solution before adding the second chemical solution/sodium hydroxide solution (note column 2, line 50 to column 3,lines 45, claim 4, but does not indicate how this solution formed.
However, as indicated in MPEP 2144.04(IV)(C), it is taught that selection of any order of mixing ingredients is prima facie obvious, noting In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kanehiro to provide a third chemical liquid with the metal ion (and solution material) and a fourth chemical liquid with reducing agent (and solution material) and combine these for generating the first chemical liquid with an expectation of predicably acceptable results, since such solutions would contain material that needs to be combined to form the first chemical liquid/initial plating solution and In re Gibson indicates that any order of mixing ingredients is prima facie obviousness.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kanehiro as applied to claims 1, 5 and 7 above, and further in view of Utsumi et al (US 2015/0024215).
Claims 2-4: as to (a) generating the plating liquid by mixing the first and second chemical liquids on the substrate while discharging the first chemical liquid through a first nozzle to the substrate and the second chemical liquid through a second nozzle to the substrate as in claim 2, (b) generating the plating liquid by discharging the first chemical liquid to the substrate on which a liquid film of the second chemical liquid is formed as in claim 3 or (c) generating the plating liquid is performed by mixing the first chemical liquid and the second chemical liquid in mixing nozzle as in claim 4, Kanehiro describes forming a plating solution and immersing the ceramic chip/ substrate in the plating solution (note column 3, lines 10-15), and how the process combines two solutions (here the plating solution and sodium hydroxide solution, note claim 4).
Utsumi describes how electroless plating (here silver) can be provided onto a substrate (note 0059), where there are two solutions to be combined for the application (note 0064). Utsumi describes how there are different methods for combining the two solutions to be in a mixed state on the substrate surface, including (1) providing a previously prepared mixture and applying to the substrate by spraying, (2) spraying the two different solutions with a concentric sprayer allowing the solutions to be mixed in the head of the spray gun and immediately then discharged, (3) spraying two different solutions with a double head spray gun with two spray nozzles separately discharging the solutions, and (4) simultaneously spray the two different solutions with two different spray guns (note 0067).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kanehiro to also provide the electroless plating by (a) generating the plating liquid by mixing the first and second chemical liquids on the substrate while discharging the first chemical liquid through a first nozzle to the substrate and the second chemical liquid through a second nozzle to the substrate as in claim 2, (b) generating the plating liquid by discharging the first chemical liquid to the substrate on which a liquid film of the second chemical liquid is formed as in claim 3 or (c) generating the plating liquid is performed by mixing the first chemical liquid and the second chemical liquid in mixing nozzle as in claim 4 as suggested by Utsumi with an expectation of predictably acceptable results, since Kanehiro indicates to combine two chemical liquids to form a solution used to electroless plate a substrate and Utsumi indicates that when combining chemical liquids to form a solution used to electroless plate a substrate it is conventionally known to provide such combination by (a) generating the plating liquid by mixing the first and second chemical liquids on the substrate while discharging the first chemical liquid through a first nozzle to the substrate and the second chemical liquid through a second nozzle to the substrate as in claim 2, noting options 3 and 4 above taught by Utsumi, (b) generating the plating liquid by discharging the first chemical liquid to the substrate on which a liquid film of the second chemical liquid is formed as in claim 3, which would be suggested by options 3 and 4 of Utsumi as spraying by separate guns is provided, which would allow for forming a first layer of the second chemical liquid on the substrate followed by overspray of the first coating material to mix on the substrate, or (c) generating the plating liquid is performed by mixing the first chemical liquid and the second chemical liquid in mixing nozzle as in claim 4, which would be suggested by option 2 of Utsumi.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kanehiro as applied to claims 1, 5 and 7 above, and further in view of Oyamada et al (US 2005/0227074).
Claim 6: it as to the composition of the second chemical liquid, in Kanehiro the only liquid requirements are sodium hydroxide and liquid material to form solution (note column 3, lines 5-10, where sodium hydroxide solution described by applicant as high alkaline aqueous solution) (note the specification as filed at 0040).
Furthermore,
Oyamada provides preparing a substrate (core particles/substrate prepared, such as by catalyzing) (note 0073), and generating a plating liquid by mixing a first chemical liquid containing a metal ion from nickel sulfate (note 0032 as to ion formation), a reducing agent sodium hypophosphite (note 0028, 0032 as this material as reducing agent), and a complexing agent of sodium malate (note 0033, alkali metal salt of malic acid as complexing agent) (note initial electroless plating solution at 0073) and a second chemical liquid containing pH adjustor as a main component (note 0073, the adding of the sodium hydroxide solution), and an electroless plating processing is performed on the substrate by using the generated plating liquid immediately after the generating of the plating liquid (note since the reducing deposition continues during/after the adding of the sodium hydroxide solution, plating occurs immediately after new plating solution formed, 0073). It is further understood that the second chemical liquid is composed of high alkaline aqueous solution and inevitable impurities, as the only liquid requirements are sodium hydroxide and water (aqueous) (note 0073, where sodium hydroxide solution described by applicant as high alkaline aqueous solution) (note the specification as filed at 0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kanehiro to provide that the second chemical liquid is composed of sodium hydroxide (high alkaline) aqueous solution with inevitable impurities as suggested by Oyamada with an expectation of predictably acceptable results, since Kanehiro indicates using a pH adjusting solution of sodium hydroxide, and Oyamada indicates that such solutions can be conventionally aqueous, and no other materials are indicated as required, so simply inevitable impurities can be present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/ Primary Examiner, Art Unit 1718