DETAILED ACTION
Status of Claims
Claims 1-14 are pending.
Claims 10-14 are withdrawn from consideration.
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 Objections
Applicant is advised that should claim 5 be found allowable, claim 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim(s) 1-3, 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egli et al. (US 2009/0188807) in view of Katsuno et al. (US 9,980,371).
Regarding claim 1, Egli discloses electroplating bronze to produce an electronic component including a printed wiring board (title, [0005], [0035]) (= a method for depositing a bronze alloy on a printed circuit), comprising:
Providing a plastic substrate [0035] (= providing a dielectric substrate comprising a first and a second main sides; a first and second main sides are intrinsic to a substrate such as a printed wiring board);
Electroplating a ternary alloy (= at least one operation of electrolytically depositing at least one layer of at least one second electrically conductive material onto at least one zone; a zone may be any portion of the surface);
Wherein the ternary alloy includes:
30-65 wt % Cu
10-30 wt % Sn
5 to 60 wt % a third metal including Zn [0029]-[0030]
(= characterized in that said at least one operation of electrolytically depositing at least one layer of at least one second electrically conductive material comprises an operation of electrolytically depositing a bronze layer comprising, after deposition 45-50% by weight Cu, 31-45 % by weight of tin and 6 to 11 % by weight zinc).
The weight ratios of Egli including copper and zinc overlap the claimed ranges therefore a prima facie case of obviousness exists. The tin range of Egli (10 to 30 wt %) is close enough to the claimed range of tin (31-45 % weight) that one of ordinary skill in the art would expect the same or similar predictable result. Generally differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discovery the optimum or workable ranges by routine experimentation (MPEP § 2144.04 II A).
Egli differs from the instant claim in that Egli does not disclose with at least one first sheet of a first electrically conductive material at least on the first main side.
In the same or similar field of electroplating printed wiring boards (title, Col. 4 lines 27-33) Katsuno discloses using a metal foil (13) or electroless plating (= sheet) as a seed layer and subsequently forming an electrolytic plating method (Col. 13 lines 41-48, Col. 14 lines 13-18).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a method comprising an electrically conductive material because Katsuno discloses using a metal foil as a seed layer for a subsequent electroplating process. It would have been obvious to render the plastic substrate of Egli conductive using the seed layer of Katsuno to perform an electrolytic process.
Regarding claims 2-3, 5 and 7, Katsuno discloses forming a protective film for preventing oxidation of an electrode using for example OSP (= organic solderability preservative, as to claim 3) (Col. 15 line 66 – Col. 16 line 3). Forming a protective film reads on the claimed finishing operation (as to claim 2). Katsuno discloses forming the protective layer on the electrode (Figure 2A) which would be forming the OSP (21) over the electroplated material (17) as applied to claims 5 and 7.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egli et al. (US 2009/0188807), in view of Katsuno et al. (US 9,980,371) and in further view of Nelias et al. (EP 3705607).
Regarding claim 4, Katsuno discloses forming a protective film, however, Katsuno fails to disclose the protective film as a self-assembled monolayer.
In the same or similar field of electroplating, Nelias discloses forming a protective organic layer including a self-assembled monolayer (SAM) on metal surfaces to protect surfaces for example from tarnishing [0003], [0014]. Although Nelias indicates the protective layer for example with leather goods industry [0002], Nelias also recognizes that the protective layer is applicable to electronic devices [0011].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a method comprising a self-assembled monolayer protecting film because Nelias discloses that a self-assembled monolayer provides a protecting layer to metal surfaces to prevent tarnish for example.
Claim(s) 6 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egli et al. (US 2009/0188807), in view of Katsuno et al. (US 9,980,371) and in further view of Nsalambi et al. (WO 2019/106284).
Nsalambi et al. (US 2020/0283924) herein cited as the English equivalent to WO 2019/106284.
Regarding claims 6 and 8-9, Egli in view of Katsuno fail to disclose electrolytically depositing at least one element including gold, silver, palladium, ruthenium, rhodium.
In the same or similar field of producing electric circuits (title), Nsalambi discloses forming multiple layers including gold, palladium, silver to produce conductive tracks [0009] and forming the layers as primer layers with a thickness of less than or equal to 15 nm [0013]-[0014] (as applied to claim 8). Nsalambi discloses producing multiple layers to adjust the color patterns for purposes of graphical personalization or copy protection [0054]. Nsalambi also discloses the forming of rhodium through electrodeposition [0048]. Nsalambi is silent in regards to the deposition method of gold, palladium, silver layers, however, Nsalambi discloses that the primer layer has a thickness of 15 nm, which is a thickness that is capable of being produced by electroplating [0015]. Moreover, Katsuno discloses forming metal films using electrolytic plating (Col. 10 lines 62-64).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a method comprising forming additional surface layers including prior to electroplating bronze because Nsalambi discloses forming primer layers prior to forming an alloy through electrodeposition to produce various patterns of conductive tracks. The use of multiple metallic layers is described by Nsalambi including producing one or more layers of nickel (nickel layer 11 [0034]), nickel-phosphorous [0034], gold, silver, etc. [0009] as applied to claim 9. It would have been obvious to produce any one of the metal layers of Nsalambi by electrolytic deposition given the overlapping subject matter of electroplating metals and multiple metal layers forming the conductive tracks for electric circuits.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bronder et al. (US 2016/0348259) in view of Katsuno et al. (US 9,980,371).
Regarding claim 1, Bronder discloses a method of depositing bronze [0017] layer comprising (= a method for depositing a bronze alloy):
Providing a substrate [0081] (= providing a substrate comprising first and second main sides);
Electrolytically depositing bronze [0015] (= at least on operation of electrolytically depositing at least one layer of at least one second electrically conductive material onto at least one zone of the first sheet);
Including 20 to 80 % wt copper
10 to 60 %wt tin
1 to 30 % wt zinc [0082]
(= characterized in that said at least one operation of electrolytically depositing at least one layer of at least one second electrically conductive material comprises an operation of electrolytically depositing a bronze layer comprising after deposition, 45 to 50 wt copper, 31-45 % wt of tin and 6 to 11 % wt zinc). The ranges of Bronder overlap the claimed ranges therefore a prima facie case of obviousness exists.
Broder differs from the instant claim in that Bronder does not disclose the claimed printed circuit board with a dielectric substrate and the first electrically conductive material.
In the same or similar field of electroplating (title, Col. 4 lines 27-33) Katsuno discloses using a metal foil (13) or electroless plating (= sheet) as a seed layer and subsequently forming an electrolytic plating method to produce a printed wiring board which comprises an insulating layer and insulating substrate (Col. 13 lines 30-31, 41-48, Col. 14 lines 13-18).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a method comprising an electrically conductive material because Katsuno discloses using a metal foil as a seed layer for a subsequent electroplating process. It would have been obvious to render the substrate of Bronder conductive using the seed layer of Katsuno to perform an electrolytic process.
Response to Arguments
Applicant's arguments filed 1 April 2026 have been fully considered but they are not persuasive. On page 7 the remarks are directed towards the amount of zinc in the bronze layer and states that the amended claim range of 6 to 11 % wt zinc provides advantageous results including corrosion protection. On pages 7-8 the argument states that considering the broad range of Egli, Egli does not provide any information on the corrosion caused by salt spray, and therefore one of ordinary skill in the art would not find any relevant information from Egli and would also not look to Egli as a reference. The Examiner respectfully disagrees with this analysis. The range of Egli for weight percent zinc is acknowledged as 5 to 60 wt % [0029]-[0030]. The range is overlapping the claimed range. Although the Applicant has provided an advantage of a particular range, there appears to be no unexpected results from the claimed range since Egli is also forming the same or similar white bronze coating [0012].
On page 8 the remarks are directed towards the amount of tin present stating that the amended range includes 31 to 45 weight percent tin and Egli’s range (10 to 30 weight percent tin) does not overlap the claimed range and therefore does not disclose the claimed invention. The Examiner respectfully disagrees with this analysis. The tin range of Egli (10 to 30 wt %) is close enough to the claimed range of tin (31-45 % weight) that one of ordinary skill in the art would expect the same or similar predictable result. Generally differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discovery the optimum or workable ranges by routine experimentation (MPEP § 2144.04 II A). There appears to be no unexpected results from the claimed range of tin. The instant specification does not appear to demonstrate any unexpected results from a narrow range of tin, copper or zinc.
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 STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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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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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795
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