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 .
Status of the Claims
The Amendment filed March 2nd, 2026 has been entered. Claims 1 and 10-11 have been amended. Claims 8-9 have been canceled, with Claims 2-3 and 13 having been previously canceled. Claims 1, 4-7, 10-12, and 14 are currently examined herein.
Status of the Rejection
Applicant’s amendments to the claims have overcome the 35 U.S.C. § 103 rejections from the previous office action.
New grounds under 35 U.S.C. § 103 are necessitated by Applicant’s amendments as outlined below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-5, 7, 10-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable by Parekh (US 2019/0345626 A1, provided in IDS submitted on 07/25/2024) in view of Fu (CN 114137150 A, provided in IDS submitted on 04/14/2023, machine translation of description provided), Dimitrijevic (Non-Cyanide Electrolytes for Gold Plating – A Review. Int. J. Electrochem. Sci., 2013; 8, 6620-6646), and Chemistry (EDTA Titration for Determination of Calcium and Magnesium, 2015, page 1-6).
Regarding Claim 1, Parekh teaches a titration-based analytical method (a method using a titration technique for measuring metal ions [para. 0030]), comprising:
adding a complexing agent (a precipitating agent [X-] in Fig. 1 [para. 0034]) having a predetermined concentration to the processing solution (precipitating agent [X-] has a predetermined concentration in Fig. 1 to the electrodeposition solution [para. 0034]);
adding a metallic salt (adding a metallic salt [Me+] in Fig. 1 [para. 0034]) having a predetermined concentration to the processing solutions (metallic salt [Me+] has a predetermined concentration in Fig. 1 to the electrodeposition solution [para. 0034]);
Parekh is silent on for measuring Gold (Au) in a Au-sulfite processing solutions; a. adding a pH adjustment reagent to the processing solution b. adding Au-sulfite solution to the processing solution; d. determining the concentration of Au by measuring the endpoint of a back titration by comparing an endpoint volume of a blank analysis and an endpoint of an analyte analysis, wherein the complexing agent reacts with the complexing agent in a first reaction where the Au-sulfite compound is broken, and the metallic salt reacts with the remaining complexing agent in a second reaction, a first product of the first reaction has a larger stability constant than Au-sulfite, and second product of the second reaction has a lower stability constant than the first product of the first reaction.
Although Parekh does not measure gold in Au-sulfite processing solutions, Parekh does teach measuring precious metals in processing solutions (Ag concentrations are measured in electrodeposition processing solutions [para. 0014]). The titration method includes determining the concentration of silver precious metal by measuring the endpoint of a back titration (metal ion concentration, in this case Ag+, is measured using back titration [para. 0034]), wherein the complexing agent reacts with the complexing agent in a first reaction (a complexing agent is added causing a to cause a reaction between the metal ions and complexing agent in Fig. 1 [para. 0034]), and the metallic salt reacts with the remaining complexing agent in a second reaction (metallic salt is further added to cause a reaction between at least a portion of the metallic salt and substantially all of the complexing agent remaining in solution in a second reaction [para. 0034]).
Fu teaches a titration method for measuring free sulfite in an Au-sulfite processing solution (determination method of free sulfite in cyanide-free gold plating solution [first para. page 1]; total sulfite concentration was measured by an iodometric method [sixth para. page 1]), and although Fu does not explicitly teach adding Au-sulfite solution to the processing solution, Fu teaches mixing a set amount of sample containing Au-sulfite for titration [tenth para. page 2].
Parekh and Fu are considered analogous in the art to the claimed inventions because they are in the same field of titration methods of precious metal processing solutions. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the processing solution of Parekh with an Au-sulfite electrodeposition solution for measuring Gold (Au) in Au-sulfite processing solutions; and further modify the method by adding Au-sulfite solution to the processing solution, and determining the concentration of Au by measuring the endpoint of a back titration, wherein the complexing agent reacts with the complexing agent in a first reaction and the metallic salt reacts with the remaining complexing agent in a second reaction, as taught by combined Fu and Parekh, as monitoring the concentration of gold and gold-sulfite complexes would be important for the electroplating of gold for items such as jewelry and electronic components (Fu, [second and third paras. on page 1]).
Modified Parekh is silent on a. adding a pH adjustment reagent to the processing solution, d. comparing an endpoint volume of a blank analysis and an endpoint of an analyte analysis, wherein the complexing agent reacts with the complexing agent in a first reaction where the Au-sulfite compound is broken, and the metallic salt reacts with the remaining complexing agent in a second reaction, a first product of the first reaction has a larger stability constant than Au-sulfite, and second product of the second reaction has a lower stability constant than the first product of the first reaction.
Dimitrijevic teaches non-cyanide electrolytes for gold plating (title), and teaches a. adding a pH adjustment reagent to the processing solution (gold sulfite complexes are used for gold plating [first para. page 6628]; as many commercial sulfite baths are operated at neutral or acidic pH [third para., page 6629]; stabilizing additives are added to control pH of electrolyte bath [second and third paras. page 6629]), wherein the complexing agent reacts with the complexing agent in a first reaction where the Au-sulfite compound is broken (a complexing agent, such as thiosulfate, can be added to form gold thiosulfate or mixed sulfite-thiosulfate complexes with large stability constants [fourth para. page 6632]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of modified Parekh by a. adding a pH adjustment reagent to the processing solution, wherein the complexing agent reacts with the complexing agent in a first reaction where the Au-sulfite compound is broken, as taught by Dimitrijevic, as using a complexing agent such as thiosulfate for a gold plating solution is well known in the art and allows for improvements in the mixed ligand system (Dimitrijevic, [second and third paras. page 6633]).
Modified Parekh is silent on d. comparing an endpoint volume of a blank analysis and an endpoint of an analyte analysis, a first product of the first reaction has a larger stability constant than Au-sulfite, and second product of the second reaction has a lower stability constant than the first product of the first reaction.
Chemistry teaches an experimental method of metal titrations (first para. page 1), and teaches the back titration comprises determining the metal concentration based on a difference between an amount of endpoint volume from a blank analysis and endpoint of an analyte analysis (titration concentration of a metal ion, such as calcium, is determined by subtracting the difference for the sample in which the metal ion is present to a blank [last para., page 4 to first para., page 5]).
Modified Parekh and Chemistry are considered analogous in the art to the claimed inventions because they are in the same field of metal ion titration. It would be obvious to one of ordinary skill in the art to modify the back titration method of modified Parekh to use a back titration comprising determining the metal concentration (i.e., the Au concentration) based on a difference between an amount of endpoint volume from a blank analysis and endpoint of an analyte analysis, as taught by Chemistry, as this method of using a blank has been used for accurate determination the concentration of metals (Chemistry, [second para. page 5]); the limitation “a first product of the first reaction has a larger stability constant than Au-sulfite, and second product of the second reaction has a lower stability constant than the first product of the first reaction” is found to be an inherent characteristic of the titration method for measuring gold, which comprises all the claimed elements. Since the prior art does disclose a titration based analytical method comprising substantially the same elements or components as that of the applicant, it is contended that the titration method for measuring gold of the prior art is capable of having the first product of the first reaction has a larger stability constant than Au-sulfite and a second product of the second reaction has a lower stability constant than the first product of the first reaction. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. first product of the first reaction has a larger stability constant than Au-sulfite, and a second product of the second reaction has a lower stability constant than the first product of the first reaction), is necessarily present in the prior art material. The courts have held that “[p]roducts 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 structure, 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). See MPEP 2112.01 (II).
Regarding Claim 4, modified Parekh teaches the method of claim 1.
Parekh teaches wherein the first reaction generates a first precipitation product (precipitating agent X- and silver precious metal ions Ag+ are precipitated out of solution as AgX [para. 0034]), and the second reaction generates a second precipitation product (metallic salt Me+ is added until all the complexing agent is reacted [para. 0046]; the metallic salt Me+ can be Ag [para. 0019], which forms a precipitate with the complexing agent to for AgX [para. 0034]). Furthermore, the limitation “wherein the first reaction generates a first precipitation product, and the second reaction generates a second precipitation product” is an intended result of a positively recited step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). MPEP 2111.04(I).
Regarding Claim 5, modified Parekh teaches the method of claim 1.
Parekh teaches wherein the processing solution is an electrodeposition solution (processing solution is an electrodeposition solution [para. 0014]).
Regarding Claim 7, modified Parekh teaches the method of claim 1, and Parekh teaches wherein the complexing agent is selected from the group consisting of thiourea (in example 1, thiourea is used as the complexing agent [para. 0065]).
Regarding Claim 10, modified Parekh teaches the method of claim 1.
Parekh teaches wherein the pH adjustment reagent decreases a pH value of the processing solution (nitric acid [HNO3], which contains H+ ions to lower pH, can be added to processing solution [para. 0034])). Furthermore, the limitation “wherein the pH adjustment reagent decreases a pH value of the processing solution” is an intended result of a positively recited step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). MPEP 2111.04(I).
Regarding Claim 11, modified Parekh teaches the method of claim 1.
Parekh teaches wherein the pH adjustment reagent is selected from the group consisting of nitric acid (nitric acid [HNO3] can be added to processing solution [para. 0034]).
Regarding Claim 12, modified Parekh teaches the method of claim 1.
Parekh teaches wherein the metallic salt is selected from the group consisting of Ag, Cu, Fe, and Al (metallic salt can be Ag, Cu, Fe, Al [para. 0019]).
Regarding Claim 14, modified Parekh teaches the method of claim 1.
Parekh teaches further comprises tracking the titration using a Ag-billet electrode (first and second endpoints of the titration can be measured, for example, using a silver ion-selective electrode [para. 0049]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable by Parekh in view of Fu, Dimitrijevic, and Chemistry, as applied to claim 1 above, and in further view of Gold Plating (The Common Gold Plating Process for PCBs, May 2019, pages 1-4).
Regarding Claim 6, modified Parekh teaches the method of claim 1.
Fu teaches wherein the processing solution comprises a plating metal (electrodeposition can be used for electroplating [fourth para. page 1]).
Fu is silent on comprises a plating metal selected from the group consisting of nickel, cobalt, iron, and combinations thereof.
Gold Plating teaches electrodeposition of metals, such as gold (abstract), and teaches electroplating of nickel and gold (for applications such as creation of PCB, nickel is electroplated, followed by gold [fifth para., page 5]).
Modified Parekh and Gold Plating are considered analogous in the art to the claimed inventions because they are in the same field of electrodeposition. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the processing solution of modified Parekh to include a plating metal selected from the group consisting of nickel, as nickel is a metal commonly used in numerous electroplating applications, such as for PCB (Gold Plating, [fifth para., page 5]).
Response to Arguments
Applicant's arguments, see Remarks pgs. 4-7, filed 03/02/2026, with respect to the 35 U.S.C 103 rejections and amended claims have been fully considered.
Applicant’s Argument #1:
Applicant argues on pages 4-5 that the primary reference of Parekh does not teach or suggest “adding a pH adjustment reagent to the processing solution” before the Au-sulfite solution, as the pH adjustment step of the instant application performs a chemically purposeful transformation/modulation, as decreasing pH intentionally destabilizes the Au-sulfite complex. In addition, although Parekh does teach optionally adding nitric acid (a pH adjuster), Parekh does not disclose or suggest adding nitric acid to manipulating the equilibrium chemistry of the sulfite complex.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection above.
Applicant’s Argument #2:
Applicant argues on pages 5-6 that primary reference of Parekh does not teach or suggest “the Au-sulfite compound is broken”, as Parekh operates on free metal ions and does not address chemical dissociation of stable metal complexes, nor does Parekh disclose or suggest any multi-stage displacement reaction sequence.
Examiner’s Response #2:
Applicant’s arguments have been considered, but are moot in view of the new grounds of rejection above.
Applicant’s Argument #3:
Applicant argues on pages 6 that Parekh does not disclose or suggest “by comparing an endpoint volume of a blank analysis and an endpoint of an analyte analysis”, as this differential back titration is different from the single back titration taught by Parekh. In addition, second reference of Chemistry does not teach titrations using gold-sulfite. Thus, Chemistry is not properly combinable with Parekh and Fu.
Examiner’s Response #3:
Applicant’s arguments have been considered, but are not persuasive. As Chemistry teaches titration concentration of a metal ion is determined by subtracting the difference for the sample in which the metal ion is present to a blank [last para., page 4 to first para., page 5]), this would also apply to titration-based methods such as Parekh and modified Parekh in the rejection of independent claim 1.
Conclusion
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/R.L.G./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795