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 .
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.
Claim(s) 1-4 and 9-11, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata et al. (EP 3626857) in view of Creech et al. (DE 69838341) and Kato et al. (TW 2017-13798) and Butz er al. (WO 0228528).
Regarding claims 1-3, 9, 15 Shibata discloses electroless plating solution that can be subjected to plating processing with high deposition efficiency, does not self-decompose even when it does not contain sulfur or heavy metals, and has excellent bath stability, and an electroless platinum plating solution that can suppresses out-of-pattern deposition of platinum and perform platinum plating only on a necessary portion (abstract). The platinum plating film of the present invention is industrially useful because when formed on the surface of a ceramic such as alumina, silicon nitride and aluminum nitride, there are few defective parts such as cracks and pinholes, and the yield on products using the platinum plating film can be improved (para 0029).
With respect to the limitation of 0-25.5 wt% of Au, Rh, Pd and Ag, 0-5 wt% of Al and 0-15 wt% of other metal elements, the claim limitation is met when these metals are absent from the platinum solution (i.e. 0 wt% which falls in the claimed range).
However, the recitation in the claims that the platinum solution is “for silver decoration of a ceramic substrate” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Shibata disclose platinum solution as presently claimed, it is clear that the platinum solution of Shibata would be capable of performing the intended use, i.e. for silver decoration of a ceramic substrate, presently claimed as required in the above cited portion of the MPEP.
However, Shibata fails to disclose that platinum solution has a composition that includes 50-99 wt% of Pt and less than 11 wt% of Si and 0.4-10 wt% of Bi.
Whereas, Creech discloses method of controlling the thickness the Pt-Si enriched layer and finally the microstructure of the Pt-Si modified aluminide coating on the superalloys, based on nickel and cobalt (page 3). The composition of the platinum-silicon alloy powder (preferably 90 weight percent Pt - 10 Weight percent Si) selected so that delivered an optimal transition liquid phase is for the diffusion of platinum and silicon into the substrate in Course of the first diffusion heat treatment (page 6-7).
Whereas, Kato discloses electroless platinum plating solution with which excellent solution stability can be obtained without using heavy metal ions or thiol compounds and with which generation of ammonia gas can be prevented. (abstract). Kato discloses a heavy metal ion or a thiol compound such as lead or bismuth is added to the above electroless platinum plating solution as a stability. The agent enhances the stability of the solution (page 2).
Whereas, Butz discloses supported platinum metal catalyst which can be obtained by controlled electroless plating of at least one platinum metal from a plating solution which i) at least one homogeneously dissolved platinum metal compound, ii) a reducing agent (page 3). In addition to platinum metals, the catalytically active component of the catalysts according to the invention can contain further elements as promoters or doping which influence the activity and / or selectivity of the catalyst. These preferably include metals such as bismuth. The additional components used as promoters or dopings generally make up 0.01 to 20% by weight, preferably 0.1 to 15% by weight and in particular 0.5 to 10% by weight, based on the platinum metal content (page 4).
It would have been obvious to one of ordinary skill in the art at the time the application to include platinum in an amount of 90 wt% and Si in an amount of 10 wt% as taught by Creech in the platinum solution of Shibata motivated by the desire to have improved corrosion and oxidation resistance properties and to include bismuth in an amount of 0.5-9 wt% as taught by Kato in view of Butz in the platinum solution of Shibata motivated by the desire to have improved stability of the solution.
Regarding claims 4 and 10-11 Shibata discloses the method for producing a platinum plating film according to claim 13, wherein the object to be plated is a ceramic (claims).
Although Shibata does not disclose sintered body of the platinum solution, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Shibata meets the requirements of the claimed product, Shibata clearly meet the requirements of present claims of platinum solution.
Claim(s) 5-8 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata et al. (EP 3626857) in view of Creech et al. (DE 69838341), Kiyohara et al. (JP 2016-089190) and Butz er al. (WO 0228528).
Regarding claim 5, Shibata discloses electroless platinum plating solution that can be subjected to plating processing with high deposition efficiency, does not self-decompose even when it does not contain sulfur or heavy metals, and has excellent bath stability, and an electroless platinum plating solution that can suppresses out-of-pattern deposition of platinum and perform platinum plating only on a necessary portion (abstract). The platinum plating film of the present invention is industrially useful because when formed on the surface of a ceramic such as alumina, silicon nitride and aluminum nitride, there are few defective parts such as cracks and pinholes, and the yield on products using the platinum plating film can be improved (para 0029). Shibata discloses the method for producing a platinum plating film according to claim 13, wherein the object to be plated is a ceramic (claims), where the ceramic would encompass decorative portion.
With respect to the limitation of 0-30 wt% of Au, Rh, Pd and Ag, the claim limitation is met when these metals are absent from the platinum solution (i.e. 0 wt% which falls in the claimed range).
However, Shibata fails to disclose that decorative portion includes metal such as platinum solution that includes 70-100 wt% of Pt and 0-12 wt% of Ag.
Whereas, Creech discloses method of controlling the thickness the Pt-Si enriched layer and finally the microstructure of the Pt-Si modified aluminide coating on the superalloys, based on nickel and cobalt (page 3). The composition of the platinum-silicon alloy powder (preferably 90 weight percent Pt - 10 Weight percent Si) selected so that delivered an optimal transition liquid phase is for the diffusion of platinum and silicon into the substrate in Course of the first diffusion heat treatment (page 6-7).
Whereas, Kiyohara discloses electroless platinum plating solution having a specific composition, a platinum film obtained using the electroless platinum plating solution, and particularly a platinum film formed on a ceramic substrate (page 1). Kiyohara discloses electroless platinum plating solution for forming a platinum film on a ceramic substrate, activated with one or more metals selected from the group consisting of platinum, palladium, tin, gold and silver The electroless platinum plating solution according to claim 1, wherein the electroless platinum plating treatment is performed on the ceramic substrate (page 13).
Whereas, Butz discloses supported platinum metal catalyst which can be obtained by controlled electroless plating of at least one platinum metal from a plating solution which i) at least one homogeneously dissolved platinum metal compound, ii) a reducing agent (page 3). In addition to platinum metals, the catalytically active component of the catalysts according to the invention can contain further elements as promoters or doping which influence the activity and / or selectivity of the catalyst. These preferably include metals such as silver. The additional components used as promoters or dopings generally make up 0.01 to 20% by weight, preferably 0.1 to 15% by weight and in particular 0.5 to 10% by weight, based on the platinum metal content (page 4).
It would have been obvious to one of ordinary skill in the art at the time the application to include platinum in an amount of 90 wt% as taught by Creech in the platinum solution of Shibata motivated by the desire to have improved corrosion and oxidation resistance properties and to include silver in an amount of 0.5-9 wt% as taught by Kiyohara in view of Butz in the platinum solution of Shibata motivated by the desire to have improved stability of the solution and excellent productivity.
As Shibata in view of Creech, Kiyohara and Butz discloses ceramic product comprising metal component as presently claimed, it therefore would be obvious that sheet resistance of the decorative portion would intrinsically be in the claimed range.
Regarding claim 6, with respect to the film like shape and thickness, Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04[R-1].
Regarding claims 7 and 12, As Shibata in view of Creech, Kiyohara and Butz discloses ceramic product comprising decorative portion comprising metal component as presently claimed, it therefore would be obvious that 8 degree gloss value of the decorative portion would intrinsically be 560 or more.
Regarding claims 8, 13-14 However, the recitation in the claims that the ceramic product serves as tableware is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Shibata disclose ceramic product as presently claimed, it is clear that the ceramic product of Shibata would be capable of performing the intended use, i.e. for tableware, presently claimed as required in the above cited portion of the MPEP.
Response to Arguments
Applicant’s arguments filed on 04/27/2026 have been fully considered, but they are not persuasive.
Applicant argues that heavy metal in a "pure platinum plating film" to be at most only a trace amount. Therefore, the "electroless platinum plating solution" of Shibata is characterized by not containing heavy metals. Therefore, even if, arguendo, a person skilled in the art were to refer to Kato and Butz, he or she would not be motivated to add bismuth (a heavy metal) to the "electroless platinum plating solution" disclosed by Shibata. For at least this reason, Applicant respectfully submits that claim 1 is not obvious over Shibata in view of Creech, Kato, and Butz.
However, it should be noted that Shibata does not explicitly disclose against adding bismuth, but it generally mentions heavy metals, Shibata does not explicitly disclose what can be considered as heavy metals, Bismuth may or may not include as generally heavy metals are reserve for metals with environmental toxicity, in which case bismuth is often excluded.
Applicant argues that Butz discloses that the solution preferably contains palladium and platinum as platinum group metals. More specifically, "palladium preferably constitutes the main component," and its content is "preferably more than 40% by weight, preferably more than 60% by weight and more preferably more than 80% by weight" (emphasis added) of the total amount of platinum group metal. See para. [0016] of U.S. Patent Publication No. 2004/0013601 to Butz et al., which is an English-language equivalent of Butz. Moreover, Butz fails to provide any motivation to modify the Pd content to reach anywhere near the claimed range (i.e., "a content of Pd is 0 wt. % to 10 wt. %"). To even consider such a modification, one of ordinary skill in the art would have to ignore the explicit preference for Pd as the main component. In teaching of palladium as the "main component" and at least "preferably more than 40% by weight" and "more preferably more than 80% by weight," Butz clearly teaches away from the platinum solution according to the instant application, whose upper limit of palladium amount is limited (i.e., "a content of Pd is 0 wt. % to 10 wt. %").
However, Butz discloses is only used as teaching reference in order to teach to include silver in an amount of 0.5-9 wt%. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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