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Claims 10-14 are withdrawn from consideration.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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 5 November 2025 is acknowledged. The traversal is on the ground(s) that unity of invention exists because the linking technical feature is a special technical feature that provides a contribution over the cited prior art. This is not found persuasive because the bronze alloy composition of Egli (US 2009/0188807) has overlapping weight percentages of the same three components (Cu, Sn, Zn) of a ternary alloy. Groups I-II lack unity of invention because even though the inventions of these groups require the bronze composition as claimed, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Egli.
The requirement is still deemed proper and is therefore made FINAL.
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 7 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 7 recites the limitation "said surface layer" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear what surface or layer is being referred to.
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 45-65% by weight Cu, 30-45 % by weight of tin and 2 to 11 % by weight zine).
The weight ratios of Egli overlap the claimed ranges therefore a prima facie case of obviousness exists.
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. It is noted that it is unclear what surface layer is being referred to of claim 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 electrolytica deposition given the overlapping subject matter of electroplating metals and multiple metal layers forming the conductive tracks for electric circuits.
Conclusion
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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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795