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 June 10th, 2026 has been entered. Claim 1 has been amended. Claims 2-3, 8-9, and 13 have been previously canceled. Claims 1, 4-7, 10-12, and 14 are currently examined herein.
Status of the Rejection
All 35 U.S.C. § 103 rejections from the previous office action are essentially maintained and modified only in response to Applicant’s amendments.
New grounds of rejection under 35 U.S.C. § 112(b) are necessitated by the Applicant’s amendments as outlined below.
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, 4-7, 10-12, and 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 limitation “the first reaction” in line 12 lacks antecedent basis. In addition, the limitation “the endpoint volume of the analyte analysis” in line 13 lacks antecedent basis since line 9 recites “an endpoint of an analyte analysis”. In addition, the term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 4-7, 10-12, and 14 are further rejected by virtue of their dependence upon and because they fail to cure the deficiencies of indefinite claim 1.
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 Au is substantially removed from the processing solution as a precipitate in the first reaction, and the difference between the endpoint volume of the blank analysis and the endpoint volume of the analyte analysis corresponds to an amount of complexing agent consumed in the first reaction to determine the concentration of Au; and
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 precious metal is substantially removed from the processing solution as a precipitate in the first reaction (a complexing agent is added to precipitate out substantially all of the silver ions in step 101 of Fig. 1 [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 volume of a back titration, wherein the Au is substantially removed from the processing solution as a precipitate in the first reaction, and 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, the difference between the endpoint volume of the blank analysis and the endpoint volume of the analyte analysis corresponds to an amount of complexing agent consumed in the first reaction to determine the concentration of Au, 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, the difference between the endpoint volume of the blank analysis and the endpoint volume of the analyte analysis corresponds to an amount of complexing agent consumed in the first reaction to determine the concentration of Au, 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 volume 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 volume 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]).
In addition, as the concentration of Au is determined using an endpoint of a back titration by comparing an endpoint value of a blank analysis and an endpoint of an analyte analysis, and Parekh teaches that the first reaction of a precious metal using a complexing agent precipitates substantially all of the precious metal ions from solution using a precipitating agent (see step 101 of Fig. 1 of Parekh), the difference between the endpoint volume of the blank analysis and the endpoint volume of the analyte corresponds to an amount of complexing agent consumed in the first reaction to determine the concentration of Au;
the limitation “a 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 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. 4-5, filed 06/10/2026, 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 cited reference, including the newly cited reference Dimitrijevic does not teach the feature “adding a pH adjustment reagent”, as although Dimitrijevic discloses pH conditions and stability of gold complexes in electroplating baths, it does not disclose or suggest the feature Au is substantially removed from the processing solution as a precipitate in the first reaction. A person of ordinary skill in the art would recognize that amended claim 1 performs a controlled chemical reaction in a solution-phase analytical system to break an Au-sulfite complex, which is different from Dimitrijevic where the Au-sulfite occurs as a consequence of electrochemical deposition during plating.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are not persuasive. Parekh teaches that precious metals, such as silver, can be substantially removed from the solution as a precipitate in a first reaction (see step 101 in Fig. 1). This can be extended to gold as both silver and gold are precious metals used for electrodeposition solutions. Regarding pH, while Dimitrijevic discloses altering pH in regards to electroplating of gold (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]), Parekh also teaches that pH adjuster may be used in conjunction with titration (nitric acid can be used to aid the reaction [para. 0038]. Thus, it would be obvious to one of ordinary skill in the art to adjust the pH of the processing solution.
Applicant’s Argument #2:
Applicant argues on page 5 that the feature “the difference between the endpoint volume of the blank analysis and the endpoint volume of the analyte analysis corresponds to an amount of complexing agent consumed in the first reaction to determine the concentration of Au” is not disclosed or suggested by the cited references. In addition, Chemistry discloses a conventional titration process, whereas the amended claim 1 recites that Au is substantially removed from the processing solution as a precipitate in the first reaction, and that the measured difference between blank and analyte titration endpoints corresponds to the amount of complexing agent consumed in that first reaction.
Examiner’s Response #2:
Applicant’s arguments have been fully considered, but are not persuasive as Parekh teaches that a precious metal is substantially removed from the processing solution as a precipitate in the first reaction (step 101 in Fig. 1). In addition, it would be obvious to one of ordinary skill in the art prior to the effective filing date to use a blank endpoint as blanks are commonly used in titrations to determine accurate concentrations of a target analyte (Chemistry, [last para., page 4 to first para., page 5]) and used in titrations involving precious metals and precipitating agents (Parekh, [para. 0045]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDALL LEE GAMBLE JR whose telephone number is (703)756-5492. The examiner can normally be reached Mon - Fri 10:00-6:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.L.G./Examiner, Art Unit 1795
/SHIZHI QIAN/Primary Examiner, Art Unit 1795
Prosecution Insights