DETAILED ACTION
Status of Claims
Claims 1-14 are pending.
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 Objections and Rejections
The previous objection to the specification is withdrawn in view of Applicant’s amendment.
The previous objections to claims 3-5 are withdrawn in view of Applicant’s amendment.
The previous rejection of claims 7 and 12 under 35 U.S.C. 112(b) are withdrawn in view of Applicant’s amendment.
All other grounds of rejection stand.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim needs a period at the end of the claim. Appropriate correction is required.
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.
Claims 1-14 are 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.
Regarding claim 1, the formulas ((1), (2)) and associated definitions or lack of definitions renders the claim indefinite. The term “Iconv” is not sufficiently described and the claim does not clearly define what the term is describing. The term “Iavg” is provided but does not appear to be clearly utilized in a formula. The phrasing of “Iavg indicates, as represented by the following formula (2), converted current (A)” is indefinite because it is unclear how the phrasing is related to formula (2).
Regarding claim 10, the phrase “wherein the metallic iron is in a form of particles are at least one of particles…” is indefinite because it is unclear how the subsequent statement of particles is further describing particles. Deletion of the phrase “in a form of particles are” may more clearly state the claimed options.
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, 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (JPS5964800).
Regarding claim 1, Tsuda discloses reducing Fe3+ in an iron, sulfate plating solution (page 4 lines 9-12, page 7 lines 1-2) (= a method for removing ferric ions from a sulfate-based iron electroplating solution), the method comprising:
A regeneration step that reduces Fe3+ in an iron, sulfate plating solution and replenishes the plating metal by adding and dissolving the metal to be replenished into the plating bath using Fe powder/particles (page 4 lines 9-13, page 7 lines 7-9) (= a regeneration step of reducing ferric ions by circulating a sulfate-based iron electroplating solution containing ferric ions in a solution bath containing metallic iron charged therein).
Regarding the claimed formulas, the formulas are indefinite as described above. Tsuda does not explicitly disclose the claimed formulas however the following disclosure of Tsuda addresses the same or similar concepts represented by the formulas. Tsuda discloses the method for controlling the plating bath concentration by adjusting the amount of metal supplied to the plating bath and the amount of plating solution discarded, while measuring parameters such as the rate of generation in the plating solution, plating current efficiency (e.g. addressing formula 2) and the Fe3+ reduction efficiency in the dissolution reaction (page 3 lines 7-11). Tsuda further teaches that the required amount of processing solution is determined from the Fe3+ concentration in the plating solution (e.g. addressing Cmax) and the amount of metal powder dissolved in the tank necessary for adjusting the bath components (page 6 lines 7-9). Tsuda discloses that the reaction area of the metal powder or particles in the dissolution reaction vessel is determined by the amount added, the particle size of the metal powder or particles (e.g. addressing claimed S), and the subsequent reaction due to the reaction (page 3 lines 15-18). The teachings of Tsuda therefore recognize the claimed total surface of metallic iron, the concentration of ferric ions in solution, the plating time and the regeneration time, the plating efficiency, and the applied current. One of ordinary skill in the art would therefore arrive at the same or similar claimed relationships to produce the same or similar predictable result of reducing ferric ions.
Regarding claim 10, Tsuda discloses iron powder and particles (page 6, line 13).
Regarding claim 13, Tsuda discloses a temperature of 50℃ and pH 2.0 (page 7 line 2).
Claim(s) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (JPS5964800) in view of Gengo et al. (US 2019/0249327).
Regarding claims 2-7, Tsuda does not explicitly disclose the timing of the regeneration step.
Gengo discloses a method of regenerating a metal including a continuous and/or discontinuous flow (abstract, [0021]). Gengo discloses that the process can be advantageously performed in a continuous manner such that a plating process continues [0020]. Gengo teaches that the process may be continuous such that no interruptions to production occur [0011], [0022]. Gengo discloses that the regeneration step may be stopped or interrupted while plating continues and that the regeneration method may be performed independently of whether a metal is being deposited [0021].
Claims 2-7 include claim language that is directed towards the regeneration step being performed during plating, during a pause of plating, being performed discontinuously, continuously, etc. and is therefore related to the timing of performing the plating and the regeneration step(s). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform the regenerating step during plating, during a pause of plating, continuous and/or discontinuous in order to produce the most efficient method to maintain the desired about of components within the plating solution. Since the regeneration step is provided to replenish the plating solution, selection of the timing of performing the regeneration step and plating steps would have been an obvious engineering design choice in order to maintain the desired content of plating solution. Moreover, Gengo discloses that a regeneration process may be continuous and/or discontinuous to maintain the components of the plating solution and provide increased production time.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (JPS5964800) in view of Lee et al. (KR 930007927).
Regarding claims 8-9, Tsuda fails to disclose wherein the metallic iron is ferroalloy containing at least one alloying element selected from a group consisting of Mn, Al, Mg, Li, Na and K.
Lee discloses electroplating iron alloys including an iron-zinc-manganese alloy (abstract). Lee discloses that the manganese may be present in an amount of 0.1 to 10 wt % (abstract). Lee discloses the inclusion of manganese for improving the electroplating deposit such as improvements in adhesion, phosphate treatment resistance and water resistance (page 5 “In addition, the limit”).
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 ferroalloy because Lee discloses improved benefits such as adhesion, phosphate treatment resistance and water resistance when utilizing an iron alloying with manganese.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (JPS5964800) in view of Murakami et al. (US 2012/0103229).
Regarding claims 11-12, Tsuda fails to disclose wherein the sulfate based iron electroplating solution further comprises a complexing agent.
Murakami discloses an iron aqueous electroplating solution comprising divalent iron ions having improved storage stability such that oxidation over time of divalent iron ions in the aqueous solution containing divalent irons ions to trivalent iron ions is suppressed and occurrence of the precipitation of iron (III) hydroxide is prevented for long periods (abstract). Murakami discloses the inclusion of a complexing agent such as gluconic acid [0023]. Murakami discloses the presence of a complexing agent for stabilizing trivalent irons ions and suppressing occurrence of precipitation [0003]-[0004].
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 complexing agent because Murakami discloses the inclusion of a complexing agent for suppressing occurrent of a precipitation and stabilizing trivalent iron ions.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (JPS5964800) in view of Killian et al. (US 9,249,510).
Regarding claim 14, Tsuda discloses a plating tank (1) comprising a soluble anode (2), plating surface (3), buffer supply (4), metal iron supply dissolution tank (6), solid-liquid separation device (9) and plating solution drain-off receiving tank (10). Tsuda discloses applying a current (page 3 line 10).
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Figures 1 of JPS5964800.
Tsuda fails to disclose the claimed pump and filter.
Killian discloses an electroplating method including regeneration a plating composition (title). Killian discloses the use of pumps and filters to remove impurities from a composition (Col. 17 lines 46-53).
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 pump and a filter because Killian discloses in the similar field of regenerating a plating composition, provided a pump and filter to remove impurities from a composition.
Response to Arguments
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive. On page 8, the argument states that Tsuda neither teaches nor suggests the limitations recited in Claim 1 requiring that the amount of metallic iron satisfy formulas (1) and (2) and contains no disclosure of the claimed mathematical relationships, no recognition of the criticality of those relationships, and no guidance that would have led a person of ordinary skill in the art to select the claimed numerical ranges. The Examiner respectfully disagrees with this analysis. As stated above, Tsuda discloses the method for controlling the plating bath concentration by adjusting the amount of metal supplied to the plating bath and the amount of plating solution discarded, while measuring parameters such as the rate of generation in the plating solution, plating current efficiency (e.g. addressing formula 2) and the Fe3+ reduction efficiency in the dissolution reaction (page 3 lines 7-11). Tsuda further teaches that the required amount of processing solution is determined from the Fe3+ concentration in the plating solution (e.g. addressing Cmax) and the amount of metal powder dissolved in the tank necessary for adjusting the bath components (page 6 lines 7-9). Tsuda discloses that the reaction area of the metal powder or particles in the dissolution reaction vessel is determined by the amount added, the particle size of the metal powder or particles (e.g. addressing claimed S), and the subsequent reaction due to the reaction (page 3 lines 15-18). The teachings of Tsuda therefore recognize the claimed total surface of metallic iron, the concentration of ferric ions in solution, the plating time and the regeneration time, the plating efficiency, and the applied current. One of ordinary skill in the art would therefore arrive at the same or similar claimed relationships to produce the same or similar predictable result of reducing ferric ions. Although Tsuda does not explicitly disclose the specified formulas (1) and (2), the parameters, concepts and relationship among the elements is present in Tsuda.
On pages 8-9 the argument states that the claimed numerical limitations produced unexpected results. The Examiner respectfully disagrees with this analysis. There is no evidence present to indicate any unexpected results. It is initially noted that the “SC/I” in Table 5 is not appropriately labeled. It is unclear how the values listed in the table equate to the claimed formulas. Regarding Table 5, there appears to be multiple examples and comparative examples that do not result in sludge. Moreover, there does not appear to be any unexpected results in view of the teachings of Tsuda which explicitly refers to the particle size of iron being controlled.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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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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