DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 1-2, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over JP-3972158-B2.
Regarding claims 1 and 4
The ‘158 patent discloses an electroless plating solution comprising PdCl2, L-aspartic acid 0.10 mol/l (i.e., 13.3 g/l), thiodiglycolic acid, and sodium formate (Example 1).
The ‘158 patent discloses that the pH can be adjusted with an acid such as hydrochloric acid (i.e., an inorganic acid), and that the pH value is not particularly limited and can be strongly acidic with a pH of about 2. It is noted that about 2 has some leeway to values below 2, and although this may not overlap with the claimed pH of less than 1, it is not so different that the skilled artisan would expect a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 2
The ‘158 patent discloses that the palladium is present in an amount from 0.001 to 0.2 mol/l (para 0045). As the molecular weight of palladium chloride is 177.33 g/mol, this give a range of 177.33 mg/l to 35460.00 mg/l. As the amount of palladium of the reference overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 6
This limitation is a desired/intended use, and "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation." Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Response to Arguments
Applicants argue against the 102 rejections.
Applicants amendments to the claims are sufficient to overcome the 102 rejections and they have been withdrawn.
Applicants argue against the 103 rejections.
Applicants argue that the reference only discloses a pH range of 2 to 12, not the claimed less than 1. While this may be true it is not persuasive as the reference teaches about 2 which allows for some leeway, and further the range is so close that the skilled artisan would not expect a difference in properties, nor has any evidence of new or unexpected results been presented.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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