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 .
Summary
This is the initial Office action based on application 18291044 filed 1/22/24.
Claims 1-7 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 1/22/24 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
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 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 of this title, 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over KATAYAMA ET AL. (WO2009093499; 7/30/2009) in view of KONIGSHOFEN ET AL. (JP2018528327; 9/27/2018; on IDS filed 1/22/24) in their entirety. Hereby referred to as KATAYAMA and KONIGSHOFEN.
Regarding claims 1-7:
KATAYAMA teaches in the abstract a trivalent chromium plating bath which is characterized by being composed of an aqueous solution containing a water-soluble trivalent chromium compound, a conductive salt and a pH buffering agent. The trivalent chromium plating bath is also characterized in that the aqueous solution has a trivalent chromium ion concentration of 0.003-0.12 mol/L. Also disclosed are a chromium plating method comprising a step of forming a chromium plating film on an object to be plated by using the object as a cathode in the trivalent chromium plating bath and then washing the plated object with a washing water containing a complexing agent for trivalent chromium ions, and an article having a chromium plating film formed by using the trivalent chromium plating bath. The chromium plating bath of the present invention is a commercially effective novel trivalent chromium plating bath which has solved various problems of conventional trivalent chromium plating baths.
KATAYAMA teaches in para [0014]-The water-soluble aliphatic carboxylic acids are water-soluble aliphatic carboxylic acids or salts thereof, for example, aliphatic monocarboxylic acids such as formic acid and acetic acid; aliphatic dicarboxylic acids such as oxalic acid, malonic acid, and succinic acid. Acid; Aliphatic hydroxy monocarboxylic acid such as gluconic acid: Aliphatic hydroxy dicarboxylic acid such as malic acid; Carboxylic acid such as aliphatic hydroxy tricarboxylic acid such as citric acid, Water-soluble salt of these carboxylic acids, for example, sodium salt Examples thereof include alkali metal salts such as potassium salts, alkaline earth metal salts such as calcium salts and magnesium salts, ammonium salts and the like.
KATAYAMA teaches in para [0009] – [0010] The trivalent chromium plating bath of the present invention contains a water-soluble trivalent chromium compound, a conductive salt, and a pH buffer as essential components. Among the above-described components, the trivalent chromium compound may be a water-soluble compound containing trivalent chromium, and for example, chromium sulfate, chromium nitrate, chromium acetate, basic chromium sulfate and the like can be used. These trivalent chromium compounds can be used alone or in combination of two or more.
KATAYAMA teaches in para [0016] In the trivalent chromium plating bath of the present invention, as the conductive salt, for example, sulfates such as potassium sulfate, sodium sulfate and ammonium sulfate, alkali metal chlorides such as potassium chloride and sodium chloride can be used. These conductive salts can be used singly or in combination of two or more.
KATAYAMA teaches in para [0019] – [0020] The trivalent chromium plating bath of the present invention may further contain at least one sulfur-containing compound selected from the group consisting of a compound having an SO2 group and a compound having an SO3 group, if necessary. These sulfur-containing compounds are effective components for providing a dense and good appearance to the formed chromium film. Of these, examples of the compound having an SO2 group include saccharin and sodium saccharin, and examples of the compound having an SO3 group include sulfobenzaldehyde, benzenesulfonic acid, toluene sulfonic acid, and salts thereof. These sulfur-containing compounds can be used singly or in combination of two or more.
KATAYAMA teaches a trivalent chromium plating bath comprising sulfur-containing compounds as described above however, KONIGSHOFEN further teaches a plating bathe containing chromium (III) ions and a sulfur-containing organic compound (claim 1).
KONIGSHOFEN teaches in claims 5-9 - wherein the sulfur containing organic compounds are selected from the group consisting of substituted or unsubstituted C2-C30 alkyl- or aryl-sulfur containing organic compounds. Wherein the sulfur containing organic compounds comprise at least one N-heteroatom. Wherein the sulfur containing organic compounds are selected from the group consisting of substituted or unsubstituted C2-C30 alkyl- or aryl-thiocyanates, thiazoles, thiohydantoin, aminothiourea, rhodanine and mixtures thereof. Wherein the sulfur containing organic compounds are selected from the group consisting of substituted or unsubstituted aminobenzothiazole, 2-methyl-thiohydantoin, 2-mercapto-2-thiazoline, 2-phenylamino-5-mercapto-1,3,4-thiadiazole, benzothiazole and mixtures thereof. Wherein the sulfur containing organic compound is 2-mercapto-2-thiazoline. Which further comprises any of the said components to compose the compound of the claimed invention
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use KATAYAMA trivalent chromium plating bath comprising sulfur-containing compounds as described above, with KONIGSHOFEN plating bath containing chromium (III) ions and a sulfur-containing organic compound; since KATAYAMA and KONIGSHOFEN are from the same field of endeavor teaching overlapping components for the composition.
Therefore, from the teachings of the references it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
Furthermore, "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417.
In addition, one of ordinary skilled in the art would recognize that the final product obtained according to the claim limitations would merely have been expected to have the same functional properties as the prior art product.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
Moreover, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
If it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771