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 .
This is in response to the Amendment dated December 3, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 19-21 and 23-31 (method) drawn to an invention nonelected with traverse in the reply filed on December 9, 2024.
Claim Objections
Claim 41 has been objected to because of minor informalities.
The objection of claim 41 has been withdrawn in view of Applicant’s amendment.
Claim Rejections- 35 USC § 112
Claims 1, 3-18 and 39-41 have been 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.
The rejection of claims 1, 3-18 and 39-41 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
I. Claim(s) 1, 4 and 6-18 have been rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of Clauss et al. (US Patent No. 3,563,866).
The rejection of claims 1, 4 and 6-18 under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of Clauss et al. has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 3 and 39 have been rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of Clauss et al. (US Patent No. 3,563,866) as applied to claims 1, 4 and 6-18 above, and further in view of JP 2012126951 (‘951).
The rejection of claims 3 and 39 under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of Clauss et al. as applied to claims 1, 4 and 6-18 above, and further in view of JP 2012126951 (‘951) has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 5 has been rejected under 35 U.S.C. 103 as being unpatentable over WO
2018/234229 (‘229) in view of Clauss et al. (US Patent No. 3,563,866) as applied to claims 1, 4 and 6-18 above, and further in view of Schwendemann et al. (US Patent No. 5,445,727).
The rejection of claim 5 under 35 U.S.C. 103 as being unpatentable over WO
2018/234229 (‘229) in view of Clauss et al. as applied to claims 1, 4 and 6-18 above, and further in view of Schwendemann et al. has been withdrawn in view of Applicant’s amendment.
IV. Claim(s) 40 has been rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of JP 2012126951 (‘951) and Clauss et al. (US Patent No. 3,563,866).
The rejection of claim 40 under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of JP 2012126951 (‘951) and Clauss et al. has been withdrawn in view of Applicant’s amendment.
V. Claim(s) 41 has been rejected under 35 U.S.C. 103 as being unpatentable over WO
2018/234229 (‘229) in view of Clauss et al. (US Patent No. 3,563,866) [‘866] and JP 2012126951
(‘951).
The rejection of claim 41 under 35 U.S.C. 103 as being unpatentable over WO
2018/234229 (‘229) in view of Clauss et al. (US Patent No. 3,563,866) [‘866] and JP 2012126951
(‘951) has been withdrawn in view of Applicant’s amendment.
Continued Response
Declaration
The declaration under 37 CFR 1.132 filed December 3, 2025 is insufficient to overcome a rejection of the claims based upon WO 2018/234229 (‘229) and JP 2012126951 (‘951) because:
• Applicant states that as one skilled in the art, I know that PPS can only be used as a secondary brightener and not as a pH buffer.
In response, the presently claimed invention is directed to a bath composition. Whether PPS is used as a brightener or as a buffer in the bath composition does not exclude the fact that the bath composition comprises alkylsulfonic zwitterions. The fact that the 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).
The Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
The experiments shown used 280 g/L of NiSO4۰6H2O. This is outside of the claimed range of “about 40 to about 110 g/L of at least one source of nickel ions”. Thus, the experiments are not commensurate in scope with the claims. It is not known if this would make a difference in the bath’s performance.
But even if PPS doesn’t function a pH buffer, which is Applicant’s intended use, where Applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly
disclosed by the reference, the discovery of a previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art’s functioning, does not render an old
composition patentably new to the discoverer. See MPEP § 2112.
• Applicant states that in contrast, Aikawa only describes the use of taurine for depositing a bright nickel layer, not a satin nickel layer. Aikawa does not describe or suggest that the “aminoalkanesulfonic acid or its derivative” (such as taurine) can be used in combination with other additives that are necessary to deposit a satin nickel layer.
In response, WO ‘229 teaches a nickel electroplating bath for depositing a bright, semi-bright, satin, matte or non-conductive particle containing nickel coating (page 1, lines 11-14). Thus, the additives or components for a bright nickel plating bath can be used for a satin nickel plating bath and the aminoalklanesulfonic acid or its derivatives disclosed by JP ‘951 are pH buffering agents which zwitterions become anions when the solution they are in becomes acidic, and become cations when the solution becomes alkaline, thereby exerting the effect of buffering the pH of the solution in which they are in (JP ‘951: ρ [0028]).
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim Rejections - 35 USC § 103
I. Claim(s) 1, 3-18, 42 and 44 is/are rejected under 35 U.S.C. 103 as being unpatentable
over WO 2018/234229 (‘229) in view of Ellis (US Patent No. 2,784,152) and JP 2012126951
(‘951).
Regarding claim 1, WO ‘229 teaches an aqueous nickel electroplating bath comprising:
a. about 40 to about 110 g/L of at least one source of nickel ions (= in a preferred embodiment, the total concentration of the nickel ions is ranging from 60 to 75 g/l) [page 6, lines 14-15];
b. about 3 to about 50 g/L of at least one source of chloride ions (= wherein the nickel
electroplating bath has a chloride content ranging from 7.5 to 40 g/l) [page 3, lines 20-21];
c. at least one source of alkylsulfonic zwitterions (= at least an additive selected from the group of pyridiniumpropylsulfobetaine (PPS) or derivatives thereof (such as PPS-OH) [page 9, lines 7-9];
d. about 1 to about 10 g/L of a primary brightener (= the primary brighteners can be added to the electrolyte bath at a concentration ranging from 0.001 to 8 g/l) [page 7, lines 22-23], wherein the primary brightener comprises saccharine or a salt thereof (= the sodium salt of saccharine) [page 7, lines 12 and 14; and page 8, lines 20-21];
e. about 0.5 to about 5 g/L of at least one sulfonic acid (= at least a sulfonic acid and/or
a derivative of a sulfonic acid in form of a sulfonic acid salt, at a total concentration ranging
from 0.1 to 5 g/l) [page 19, claim 13];
g. up to about 1 g/L of at least one wetting agent (= wherein the concentration of such
a wetting agent, is used, is ranging from 5 to 500 mg/l) [page 6, lines 21-22]; and
h. up to about 1 g/L of at least one additional brightener (= the electroplating bath may
further comprises additional compounds selected from brighteners in particular at a
concentration ranging from 0.005 to 5 g/l) [page 7, lines 5-7];
wherein the bath is maintained at a pH in the range of about 2.5 to about 5.5 (= in one embodiment, the pH-value of the electroplating bath ranges from 2 to 6) [page 6, lines 16-17];
wherein the nickel electroplating bath is configured to deposit a satin nickel layer on a substrate (= a nickel electroplating bath for depositing a bright, semi-bright, satin, matte or non-conductive particle containing nickel coating) [page 1, lines 11-14]; and
wherein the bath is at least substantially free of boric acid or a salt or a derivative thereof (= to provide a nickel electroplating bath, which shall be boric acid free) [page 2, lines
13-14].
WO ‘229 does not explicitly teach the following:
a. Wherein the at least one source of alkylsulfonic zwitterions is a pH buffer.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because WO ‘229 teaches pyridiniumpropylsulfobetaine (PPS) or derivatives thereof (such as PPS-OH) on page 9, lines 7-9, which is an alkylsulfonic zwitterion. Although WO ‘229 does not call PPS a pH buffer, the
fact that the 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).
The Applicant has a different reason for, or advantage, resulting from doing what the
prior art relied upon has suggested, it is noted that it is well settled that this is not
demonstrative of nonobviousness. The prior art motivation or advantage may be different than
that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
b. f. about 0.001 to about 1 g/L of at least one polymer and/or a copolymer based on polypropylene glycol and/or polyethylene glycol.
WO ‘229 teaches that the electroplating bath may further comprises additional
compounds selected from brighteners, leveling agents, internal stress reducers, and wetting
agents (page 7, lines 5-7).
Ellis, like WO ‘229, teaches a solution for the electrodeposition of nickel (col. 1, line 17).
This invention relates to electrodeposition of nickel and more especially to the provision of a novel process and solution for electrodeposition of nickel principally characterized in that a novel combination of addition agents is employed for production of bright and ductile deposits, the same being fully bright as taken from the electroplating solution without buffing or other treatment for bringing up the brightness (col. 1, lines 15-22).
So far as I am aware, it has never been realized prior to my invention that polyethylene glycols of high molecular weight are useful as brightening addition agents in nickel plating. These compounds, being known as wetting agents were tested as anti-pit agents in acid nickel plating and found to be effective to prevent pitting only at such high concentrations as to produce excessive brittleness. I have discovered, however, that when these compounds are used in lower concentrations suitable for producing bright and ductile nickel deposits in cooperation with compounds of the aromatic sulfonate type, and anti-pit agents of the alcohol sulfate type are employed, the deposits are superior in both brightness and freedom from pitting (col. 1, lines 28-41).
Brightening agent of the polyethylene glycol type: .001 to .05 gm (col. 2, lines 59-60).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the bath taught by WO ‘229 with at least
one polymer and/or a copolymer based on polypropylene glycol and/or polyethylene glycol.
The person with ordinary skill in the art would have been motivated to make this modification
because WO ‘229 teaches that the electroplating bath may further comprises additional
compounds selected from brighteners on page 7, lines 5-7, where polyethylene glycols of high
molecular weight are useful as brightening addition agents in nickel plating as taught by Ellis in col. 1, lines 29-31, where the addition of 0.001 to 0.05 gm of the polyethylene glycols of high
molecular weight to the bath would have produced bright and ductile nickel deposits as taken from the electroplating solution without buffing or other treatment for bringing up the brightness.
Regarding claim 3, WO ‘229 does not explicitly teach wherein the at least one source of alkylsulfonic zwitterions is selected from the group consisting of 2-aminoethane sulfonic acid, 2-aminopropane sulfonic acid, N-cylcohexyl-2-aminoetane sulfonic acid, N-[tri(hydroxymethyl)methyl]-3-aminopropane sulfonic acid, and combinations of one or more of the foregoing.
Like WO ‘229, JP ‘951 teaches a nickel electroplating solution (ρ [0001]).
The nickel plating solutions according to the present invention have a common feature in that they use “aminoalkanesulfonic acid or its derivatives” as a pH buffering agent.
Aminoalkanesulfonic acids and their derivatives are aminosulfonic acids having a cationic center and an anionic center in the molecule, and are compounds that exist in a zwitterionic state in a solution having a neutral pH range.
Zwitterions become anions when the solution they are in becomes acidic, and become cations when the solution becomes alkaline, thereby exerting the effect of buffering the pH of the solution in which they are in (ρ [0028]).
Furthermore, the nickel plating solution according to the present invention preferably
uses taurine among the “aminoalkanesulfonic acids or derivatives thereof.”
Among the “aminoalkanesulfonic acids or derivatives thereof,” taurine has excellent stability in nickel plating solutions, is excellent in its ability to stabilize solution quality over long periods of time, and causes little change in solution pH during plating operations, making it an additive
suitable for obtaining good nickel plating films.
Furthermore, taurine has the advantages of being a compound that is used as an orally administered drug for the human body, is non-toxic, is easily available on the market, and does not increase the load on wastewater treatment (ρ [0030]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the at least one source of alkylsulfonic
zwitterions taught by WO ‘229 with wherein the at least one source of alkylsulfonic zwitterions
is selected from the group consisting of 2-aminoethane sulfonic acid, 2-aminopropane sulfonic
acid, N-cylcohexyl-2-aminoetane sulfonic acid, N-[tri(hydroxymethyl)methyl]-3-aminopropane sulfonic acid, and combinations of one or more of the foregoing. The person with ordinary skill in the art would have been motivated to make this modification because adding taurine, which is non-toxic, to a nickel plating solution stabilizes the solution quality over long periods of time and causes little change in solution pH during plating operations, making it an additive suitable for obtaining good nickel plating films as taught by JP ‘951 in [0028] and [0030].
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 4, WO ‘229 teaches wherein the pH is maintained in the range of about
3.0 to about 4.5 (= in one embodiment, the pH-value of the electroplating bath ranges from 2
to 6) [page 6, lines 16-17].
Regarding claim 5, WO ‘229 does not explicitly teach wherein the pH is maintained with
sulfuric acid, hydrochloric acid, or combinations thereof.
WO ‘229 teaches that in one embodiment, the pH-value of the electroplating bath ranges
from 2 to 6 (page 6, lines 16-17).
JP ‘951 teaches that that furthermore, the nickel plating solution preferably has a
solution pH of 4.0 to 6.5 (ρ [0032]). The solution pH adjusted to 4.50 using sulfuric acid (ρ [0049]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the pH taught by WO ‘229 in view of Ellis with wherein the pH is maintained with sulfuric acid, hydrochloric acid, or combinations thereof. The person with ordinary skill in the art would have been motivated to make this modification because sulfuric acid would have adjusted the pH of the solution to an acidic pH-value.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 6, WO ‘229 teaches wherein the bath is maintained at a temperature in
the range of about 30 to about 70oC (= in one embodiment, the method for depositing is
executed in a working temperature range from 30°C to 70°C) [page 8, lines 9-10].
Regarding claim 7, WO ‘229 teaches wherein the at least one source of nickel ions is
selected from the group consisting of nickel sulfate, nickel chloride, and combinations of the foregoing (= such as nickel chloride and/or nickel sulfate) [page 5, lines 1-4].
Regarding claim 8, WO ‘229 teaches wherein the at least one source of nickel ions
comprises nickel chloride, wherein the nickel chloride provides a source of the at least one source of nickel ions and a source of the at least one source of chloride ions (= such as nickel chloride and/or nickel sulfate) [page 5, lines 1-4].
Regarding claim 9, WO ‘229 teaches wherein the bath is at least substantially free of
any other source of chloride ions (= nickel chloride may be replaced partly by sodium chloride) [page 4, line 22].
Regarding claim 10, WO ‘229 teaches wherein the primary brightener is selected from the group consisting of saccharine (= benzoic acid sulfimide (saccharine)) [page 7, line 14], sodium saccharine (= preferably the sodium salt of saccharin) [page 8, lines 20-21], calcium saccharine, silver saccharine, ammonium saccharine, cupric saccharine, lithium saccharine, magnesium saccharine, zinc saccharine, potassium saccharine, and combinations of one or
more of the foregoing.
Regarding claim 11, WO ‘229 teaches wherein the primary brightener comprises sodium
saccharine (= the sodium salt of saccharine) [page 7, lines 12 and 14; and page 8, lines 20-21].
Regarding claim 12, WO ‘229 teaches wherein the at least one sulfonic acid is selected
from the group consisting of methane sulfonic acid, vinyl sulfonic acid (= vinyl sulfonic acid),
allyl sulfonic acid (= allyl sulfonic acid) [page 7, line 16], ethane sulfonic acid, propane sulfonic
acid, propyne sulfonic acid, sulfonamides (= sulfonamides), sulfimides (= sulfimides) [page 7,
line 11], N-sulfonylcarboxamides, sulfinates, and combinations of one more of the foregoing.
Regarding claim 13, WO ‘229 teaches wherein the at least one sulfonic acid comprises
allyl sulfonic acid (= allyl sulfonic acid) [page 7, line 16; and page 8, line 24].
Regarding claim 14, Ellis teaches wherein the at least one polymer is selected from the group consisting of a high-chain length polyethylene glycol, a low-chain polyethylene glycol derivative, a long-chain length polypropylene glycol, a low-chain length polypropylene
glycol derivative, and combinations of one or more of the foregoing (= the high molecular
weight polyethylene glycols may be defined as polymeric compounds predominantly composed of the group CH2CH2O, preferably compounds of the form R(CH2CH2O)nH, where n is an integer from 10 to 100 and R is a radical selected from the class consisting of radicals of the form R’O and R’NH, where R’ is selected from the class consisting of hydrogen, alkyl radicals having from 1 to 20 carbon atoms, and aryl radicals having from 1 to 20 carbon atoms) [col. 2, lines 5-29].
Regarding claim 15, WO ‘229 teaches wherein the at least one wetting agent is present in the bath, and is selected from the group consisting of linear alkylsulfates with less than 18
carbons, branched alkylsulfates with less than 18 carbons, carboxylic sulfonic acid acids where the ester group is below the 12th carbon, fatty alcohol sulfated ethoxylates, naphthalene
sulfonates, 2-ethylhexysulfate, di-alkylsulfosuccinate, polymerized naphthalenesulfonate, lauryl
sulfate, lauryl ether sulfate, and combinations of one or more of the foregoing (= at least a wetting agent, such as 2-ethylhexylsulfate, di-alkylsulfusuccinate, polymerized
naphtalenesulfonate, lauryl sulfate or lauryl ether sulfate) [page 6, lines 19-22].
Regarding claim 16, WO ‘229 teaches wherein the at least one additional brightener is
present in the bath and is selected from the group consisting of pyridinium propyl sulfobetaine
(= pyridiniumpropylsulfobetaine (PPS)) [page 9, line 8], propargyl alcohols and derivatives
thereof (= further, such a primary brightener can comprise propargyl alcohol and/or derivatives (ethoxylated or propoxylated) thereof) [page 7, lines 20-21], butynedioles and derivatives thereof, hexynedioles (= the electroplating bath further comprises at least a diol, preferably selected from the group consisting of 2,5-hexanediol and 1,4-butanediol) [page 9, lines 4-6], and combinations of one or more of the foregoing.
Regarding claim 17, WO ‘229 teaches wherein a total concentration of nickel is in the range of about 40 to about 110 g/L (= in a preferred embodiment, the total concentration of the nickel ions is ranging from 60 to 75 g/l) [page 6, lines 14-15].
Regarding claim 18, WO ‘229 teaches wherein the total concentration of nickel is in the range of about 60 to about 90 g/L (= in a preferred embodiment, the total concentration of the
nickel ions is ranging from 60 to 75 g/l) [page 6, lines 14-15].
Regarding claim 42, JP ‘951 teaches wherein the total concentration of the pH buffer is in the range of about 10 to about 50 g/L (= the content of aminoalkanesulfonic acid or its
derivative is preferably 30 g/L to 100 g/L) [ρ [0029]).
Regarding claim 44, WO ‘229 in view of Ellis and JP ‘951 teach the bath of at least claims
1, 3-18 and 42 as applied above. The references do not explicitly teach wherein the satin nickel
layer1 is at least substantially free of pinholes and other defects.
The subject matter would have been obvious to a person having ordinary skill in the art
before the effective filing date of the claimed invention because all of the elements of the
claimed composition were accounted for in the prior art. Thus, the composition taught by that prior art would have been expected by a person having ordinary skill in the art to have deposited a satin nickel layer that is at least substantially free of pinholes and other defects.
The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP § 2112.
If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. See MPEP § 2112.01.
II. Claim(s) 41 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/234229 (‘229) in view of Ellis (US Patent No. 2,784,152) and JP 2012126951 (‘951).
Regarding claim 41, WO ‘229 teaches an aqueous nickel electroplating bath consisting
essentially of:
a. about 40 to about 110 g/L of at least one source of nickel ions (= in a preferred
embodiment, the total concentration of the nickel ions is ranging from 60 to 75 g/l) [page 6,
lines 14-15];
b. about 3 to about 50 g/L of at least one source of chloride ions (= wherein the nickel
electroplating bath has a chloride content ranging from 7.5 to 40 g/l) [page 3, lines 20-21];
c. at least one source of alkylsulfonic zwitterions (= at least an additive selected from
the group of pyridiniumpropylsulfobetaine (PPS) or derivatives thereof (such as PPS-OH) [page
9, lines 7-9];
d. about 1 to about 10 g/L of a primary brightener (= the primary brighteners can be added to the electrolyte bath at a concentration ranging from 0.001 to 8 g/l) [page 7, lines 22-23], wherein the primary brightener comprises saccharine or a salt thereof (= the sodium salt of saccharine) [page 7, lines 12 and 14; and page 8, lines 20-21];
e. about 0.5 to about 5 g/L of at least one sulfonic acid (= at least a sulfonic acid and/or
a derivative of a sulfonic acid in form of a sulfonic acid salt, at a total concentration ranging from 0.1 to 5 g/l) [page 19, claim 13];
g. up to about 1 g/L of at least one wetting agent (= wherein the concentration of such a wetting agent, is used, is ranging from 5 to 500 mg/l) [page 6, lines 21-22]; and
h. about 0.01 to about 1 g/L of at least one additional brightener (= the electroplating bath may further comprises additional compounds selected from brighteners in particular at a
concentration ranging from 0.005 to 5 g/l) [page 7, lines 5-7] selected from the group consisting
of pyridinium propyl sulfobetaine (= pyridiniumpropylsulfobetaine (PPS)) [page 9, line 8],
propargyl alcohols and derivatives thereof (= further, such a primary brightener can comprise
propargyl alcohol and/or derivatives (ethoxylated or propoxylated) thereof) [page 7, lines 20-
21], butynedioles and derivatives thereof, hexynedioles (= the electroplating bath further comprises at least a diol, preferably selected from the group consisting of 2,5-hexanediol and 1,4-butanediol) [page 9, lines 4-6], and combinations of one or more of the foregoing;
wherein the nickel electroplating bath is configured to deposit a satin nickel layer on a
substrate (= a nickel electroplating bath for depositing a bright, semi-bright, satin, matte or non-
conductive particle containing nickel coating) [page 1, lines 11-14]; and
wherein the bath is at least substantially free of boric acid or a salt or a derivative thereof (= to provide a nickel electroplating bath, which shall be boric acid free) [page 2, lines
13-14].
WO ‘229 does not explicitly teach the following:
a. Wherein the at least one source of alkylsulfonic zwitterions is a pH buffer.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because WO ‘229 teaches pyridiniumpropylsulfobetaine (PPS) or derivatives thereof (such as PPS-OH) on page 9, lines 7-9, which is an alkylsulfonic zwitterion. Although WO ‘229 does not call PPS a pH buffer, the
fact that the 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).
The Applicant has a different reason for, or advantage, resulting from doing what the
prior art relied upon has suggested, it is noted that it is well settled that this is not
demonstrative of nonobviousness. The prior art motivation or advantage may be different than
that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
b. f. about 0.001 to about 1 g/L of at least one polymer and/or a copolymer based
on polypropylene glycol and/or polyethylene glycol.
WO ‘229 teaches that the electroplating bath may further comprises additional compounds selected from brighteners, leveling agents, internal stress reducers, and wetting
agents (page 7, lines 5-7).
Ellis, like WO ‘229, teaches a solution for the electrodeposition of nickel (col. 1, line 17).
This invention relates to electrodeposition of nickel and more especially to the provision of a novel process and solution for electrodeposition of nickel principally characterized in that a novel combination of addition agents is employed for production of bright and ductile deposits, the same being fully bright as taken from the electroplating solution without buffing or other treatment for bringing up the brightness (col. 1, lines 15-22).
So far as I am aware, it has never been realized prior to my invention that polyethylene glycols of high molecular weight are useful as brightening addition agents in nickel plating. These compounds, being known as wetting agents were tested as anti-pit agents in acid nickel plating and found to be effective to prevent pitting only at such high concentrations as to produce excessive brittleness. I have discovered, however, that when these compounds are used in lower concentrations suitable for producing bright and ductile nickel deposits in cooperation with compounds of the aromatic sulfonate type, and anti-pit agents of the alcohol sulfate type are employed, the deposits are superior in both brightness and freedom from pitting (col. 1, lines 28-41).
Brightening agent of the polyethylene glycol type: .001 to .05 gm (col. 2, lines 59-60).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the bath taught by WO ‘229 with at least
one polymer and/or a copolymer based on polypropylene glycol and/or polyethylene glycol.
The person with ordinary skill in the art would have been motivated to make this modification
because WO ‘229 teaches that the electroplating bath may further comprises additional
compounds selected from brighteners on page 7, lines 5-7, where polyethylene glycols of high
molecular weight are useful as brightening addition agents in nickel plating as taught by Ellis in col. 1, lines 29-31, where the addition of 0.001 to 0.05 gm of the polyethylene glycols of high
molecular weight to the bath would have produced bright and ductile nickel deposits as taken from the electroplating solution without buffing or other treatment for bringing up the brightness.
c. i. balance water.
Ellis teaches H2O to make 100 cc (col. 2, line 61).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the bath taught by WO ‘229 with a
balance water. The person with ordinary skill in the art would have been motivated to make this modification because adding H2O would have adjusted the solution to the final total volume of solution as taught by Ellis in col. 2, line 61.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a
known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
d. Wherein the satin nickel layer2 is at least substantially free of pinholes and other
defects.
The subject matter would have been obvious to a person having ordinary skill in the art
before the effective filing date of the claimed invention because all of the elements of the
claimed composition were accounted for in the prior art. Thus, the composition taught by that prior art would have been expected by a person having ordinary skill in the art to have deposited a satin nickel layer that is at least substantially free of pinholes and other defects.
The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP § 2112.
If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. See MPEP § 2112.01.
Regarding claim 43, WO ‘229 does not explicitly teach wherein the at least one source of alkylsulfonic zwitterions is selected from the group consisting of 2-aminoethane sulfonic acid, 2-aminopropane sulfonic acid, N-cylcohexyl-2-aminoetane sulfonic acid, N-[tri(hydroxymethyl)methyl]-3-aminopropane sulfonic acid, and combinations of one or more of
the foregoing.
Like WO ‘229, JP ‘951 teaches a nickel electroplating solution (ρ [0001]).
The nickel plating solutions according to the present invention have a common feature in that they use “aminoalkanesulfonic acid or its derivatives” as a pH buffering agent.
Aminoalkanesulfonic acids and their derivatives are aminosulfonic acids having a cationic center and an anionic center in the molecule, and are compounds that exist in a zwitterionic state in a solution having a neutral pH range.
Zwitterions become anions when the solution they are in becomes acidic, and become cations when the solution becomes alkaline, thereby exerting the effect of buffering the pH of the solution in which they are in (ρ [0028]).
Furthermore, the nickel plating solution according to the present invention preferably
uses taurine among the “aminoalkanesulfonic acids or derivatives thereof.”
Among the “aminoalkanesulfonic acids or derivatives thereof,” taurine has excellent stability in nickel plating solutions, is excellent in its ability to stabilize solution quality over long periods of time, and causes little change in solution pH during plating operations, making it an additive suitable for obtaining good nickel plating films.
Furthermore, taurine has the advantages of being a compound that is used as an orally administered drug for the human body, is non-toxic, is easily available on the market, and does not increase the load on wastewater treatment (ρ [0030]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the at least one source of alkylsulfonic
zwitterions taught by WO ‘229 with wherein the at least one source of alkylsulfonic zwitterions is selected from the group consisting of 2-aminoethane sulfonic acid, 2-aminopropane sulfonic acid, N-cylcohexyl-2-aminoetane sulfonic acid, N-[tri(hydroxymethyl)methyl]-3-aminopropane sulfonic acid, and combinations of one or more of the foregoing. The person with ordinary skill in the art would have been motivated to make this modification because adding taurine, which is non-toxic, to a nickel plating solution stabilizes the solution quality over long periods of time and causes little change in solution pH during plating operations, making it an additive suitable
for obtaining good nickel plating films as taught by JP ‘951 in [0028] and [0030].
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Response to Arguments
Applicant’s arguments filed December 3, 2025 have been fully considered but they are not persuasive.
• Applicant states that these four experiments demonstrate that PPS cannot be used as a pH buffer, and that the pH buffer as described and claimed in the present invention must be an alkylsulfonic zwitterion that is capable of functioning as a pH buffer. The pH buffer cannot cause significant pH shifts and extreme visual defects in the deposited nickel layer (Second Decl. of Konigshofen 18).
In response, the fact that the 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).
The Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not
demonstrative of nonobviousness. The prior art motivation or advantage may be different than
that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
Because all of the elements of the claimed composition were accounted for in the prior art, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render an old composition
patentably new to the discoverer. See MPEP § 2112.
Furthermore, an aminoalkanesulfonic acid or derivative thereof from JP ‘951 can be added to the bath of WO ‘229 because adding taurine, which is non-toxic, to a nickel plating solution stabilizes the solution quality over long periods of time and causes little change in solution pH during plating operations, making it an additive suitable for obtaining good nickel plating films as taught by JP ‘951 in [0028] and [0030].
• Applicant states that as set forth in the present invention, one example of a suitable alkylsulfonic zwitterion is taurine. However, the concentration is still important to provide
adequate pH buffering.
In response, JP ‘951 in [0028] teaches that zwitterions become anions when the solution they are in becomes acidic, and become cations when the solution becomes alkaline, thereby exerting the effect of buffering the pH of the solution in which they are in.
In the nickel plating solution, the content of aminoalkanesulfonic acid or its derivative is
preferably 30 g/L to 100 g/L (ρ [0029]).
MPEP § 2144.05(I) states that “in the case where the claimed ranges “overlap or lie
inside ranges disclosed by the prior art” a prima facie case of obviousness exists in In re
Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) “.
• Applicant states that furthermore, Aikawa only describes that taurine may be used as a pH buffer to deposit a bright nickel layer. As discussed above, the present invention is directed to a
nickel that is configured to deposit a satin nickel layer. Based thereon, the prior art of record must show more than just the mere capability to deposit a satin nickel layer.3
In response, WO ‘229 teaches a nickel electroplating bath for depositing a bright, semi-bright, satin, matte or non-conductive particle containing nickel coating (page 1, lines 11-14). Thus, the additives or components for a bright nickel plating bath can be used for a satin nickel plating bath and the aminoalklanesulfonic acid or its derivatives disclosed by JP ‘951 are pH buffering agents which zwitterions become anions when the solution they are in becomes acidic, and become cations when the solution becomes alkaline, thereby exerting the effect of buffering the pH of the solution in which they are in (JP ‘951: ρ [0028]).
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Furthermore, the Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
• Applicant states that in contrast, Aikawa only describes the use of taurine for depositing a bright nickel layer, not a satin nickel layer. Aikawa does not describe or suggest that the “aminoalkanesulfonic acid or its derivative” (such as taurine) can be used in combination with other additives that are necessary to deposit a satin nickel layer. Based thereon, the skilled artisan would not be motivated to rely on the teachings of Aikawa to describe a nickel electroplating bath that is “configured to deposit a satin nickel layer.”4
In response, WO ‘229 teaches a nickel electroplating bath for depositing a bright, semi-bright, satin, matte or non-conductive particle containing nickel coating (page 1, lines 11-14). Thus, the additives or components for a bright nickel plating bath can be used for a satin nickel plating bath and the aminoalklanesulfonic acid or its derivatives disclosed by JP ‘951 are pH buffering agents which zwitterions become anions when the solution they are in becomes
acidic, and become cations when the solution becomes alkaline, thereby exerting the effect of buffering the pH of the solution in which they are in (JP ‘951: ρ [0028]).
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Furthermore, the Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness. See MPEP § 2144.
There is no requirement that the motivation to make the combination be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
• Applicant states that in contrast, Aikawa directly states that nickel electroplating bath that contain “strong carboxylic acid- based organic acids... are said to produce plating films with
large variations”. The pH cannot be controlled for a long period of time and thus the carboxylic acid will destabilize the bath ( [0009] of Aikawa). Based thereon, the skilled artisan would be led to
believe that Aikawa teaches away from Wachter and would not use such a reference to cure the deficiencies of Wachter.
In response, WO ‘229 teaches at least one amino acid and/or at least one carboxylic
acid, which is not an amino acid (page 3, lines 14-16).
Choosing the amino acid, e.g., glycine (a weak acid), is choosing an acid that is not a strong acid.
Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ibata et al. (US Patent Application Publication No. 2018/0327922 A1) is cited to teach a
satin nickel plating bath (page 1, [0001]). Additives include a nonionic surfactant such as polyethylene glycol 20000 (page 4, [0080]) and an anionic surfactant such as sodium dihexyl sulfosuccinate or sodium 2-ethylhexyl sulfate (page 2, [0030]).
In order to obtain the most suitable satin appearance, it is preferred to further add a primary brightener such as saccharic acid, benzenesulfonic acid, naphthalenedisulfonic acid, allylsulfonic acid, vinylsulfonic acid, propargylsulfonic acid, a sodium salt thereof, or a potassium salt thereof to the bath of the present invention. These primary brighteners can be used alone, or two or more types thereof can also be used simultaneously (page 2, [0051]).
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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 This is where a composition is claimed in terms of function, and the composition of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the reference(s).
2 This is where a composition is claimed in terms of function, and the composition of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the reference(s).
3 This is where a composition is claimed in terms of function, and the composition of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the reference(s).
4 This is where a composition is claimed in terms of function, and the composition of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the reference(s).