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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendments/Arguments
The withdrawal of claims 21-41 as filed on May 12, 2026 is acknowledged.
Applicant's arguments, see Remarks filed on May 12, 2026, with respect to claim 1 have been fully considered but they are not persuasive.
The Applicant argues that “Nagamine does not describe or suggest the specific disproportionation reaction that occurs when a manganese(III)-based etching solution is used. That is, Nagamine preferably uses manganese(IV) ions or manganese(VII) ions for use in an etching solution (see [0022] of Nagamine). The skilled artisan would understand that permanganate-based solutions are very different than manganese(III)-based solutions and would not rely on features of a permanganate solution to describe features and/or mechanism of a manganese(III) solution”. The arguments are not commensurate in scope with the claimed invention. Claim 1 uses transitional phrase “comprising” for the components in the etching solution, which does not exclude permanganate. Nagamine clearly discloses that two or more kinds of manganese ions, selected from the list includes manganese(II), manganese(III), and permanganate(VII), may be used in combination for the composition (paragraphs 0022-0023). As acknowledged by the Applicant, “Middeke describes that adding a stabilizing ion to permanganate-based etching solutions prevents this self-decomposition reaction in the permanganate-based solution (see [0037] of Middeke)”. Middeke teaches that in an acidic solution comprising permanganate, the oxidation reaction with a plastic surface results in the deposition of manganese dioxide on the surface, resulting in instability of the etching solution (paragraph 0040). Middeke further teaches that the formation of manganese dioxide is decreased when metal ions, such as titanium, are present, thereby stabilizing the solution (paragraphs 0042-0043). Because the composition of Nagamine may include permanganate, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to include a stabilizing metal ion, such as titanium, as taught by Middeke (paragraphs 0042-0043), in the acidic solution comprising permanganate of Nagamine to decrease the formation of manganese dioxide, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
The Applicant further argues that “the skilled artisan would be led to believe the Middeke demonstrates the use of copper to stabilize a permanganate-based solution. There is no teaching or suggestion that any of the metal ions recited in Middeke can be used to stabilize manganese(III)-based solutions as described and claimed by Applicant”. However, as acknowledged by the Applicant, “Middeke describes that permanganate ions can be stabilized with a metal ion to prevent the self-decomposition of permanganate into manganese dioxide. Middeke further describes that only a select few metal ions can stabilize the permanganate-based solutions, which are titanium, zirconium, niobium, molybdenum, ruthenium, rhodium, nickel, copper, silver, zinc, or cadmium”. Therefore, titanium is clearly named as a metal with its ions being able to stabilize the permanganate-based solutions. Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 II).
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nagamine et al. (EP3584352) in view of Middeke et al. (US20190144747).
Regarding claim 1, Nagamine discloses a manganese(III)-based etching solution for treating plastic surfaces (the pretreatment composition (paragraphs 0015) comprising manganese(III) (paragraph 0024) is used to etch a resin material (paragraph 0040)) comprising: dissolved manganese(II) ions and dissolved manganese(III) ions (manganese(II) sulfate, manganese(III) phosphate, paragraph 0024); at least one acid (sulfuric acid, paragraph 0031), wherein the at least one acid has a concentration of 100 to 1800g/L (paragraph 0034), corresponding to a molar acidity of 2 to 36.8 (molar mass of sulfuric acid = 98g/mol, each sulfuric acid molecule provides two hydrogen ions), which overlaps with the range recited in the instant claim. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Nagamine is silent about the etching solution comprising at least one stabilizing metal ion selected from the group consisting of aluminum, titanium, chromium, and combinations thereof. However, Nagamine discloses that two or more kinds of manganese ions, selected from the list includes manganese(II), manganese(III), and permanganate(VII), may be used in combination for the composition (paragraphs 0022-0023), and it is desirable to reduce the generation of manganese dioxide precipitation (paragraph 0026). Therefore, Nagamine discloses the etching solution may comprise a permanganate. In addition, Middeke teaches that in an acidic solution comprising permanganate, the oxidation reaction with a plastic surface results in the deposition of manganese dioxide on the surface, resulting in instability of the etching solution (paragraph 0040). Middeke further teaches that the formation of manganese dioxide is decreased when metal ions, such as titanium, are present, thereby stabilizing the solution (paragraphs 0042-0043). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to include a stabilizing metal ion, such as titanium, as taught by Middeke, in the acidic solution comprising permanganate of Nagamine to decrease the formation of manganese dioxide, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 2, Nagamine in view of Middeke discloses wherein said etching solution is at least substantially free of manganese dioxide (Nagamine, paragraph 0026; Middeke, paragraph 0042).
Regarding claims 3-5, Nagamine in view of Middeke is silent about the concentration of manganese dioxide. However, Nagamine disclosed that the precipitation of manganese dioxide can be reduced by optimizing the concentration of manganese ions (paragraph 0026). Middeke teaches that the formation of manganese dioxide is decreased when metal ions, such as titanium, are present (paragraphs 0042-0043). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to optimize the concentrations of manganese ions and stabilizing metal ions as taught by Nagamine and Middeke, in order to keep the concentration of undesirable manganese dioxide at a low level, including the levels recited in the instant claims, with a reasonable expectation of success. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation and there is no evidence of the criticality of the claimed range. See MPEP 2144.05 II.
Regarding claim 6, Nagamine in view of Middeke is silent about wherein a portion of the manganese(II) ions are oxidized to manganese(III) ions by electrolysis. However, it is noted that the instant claim is a composition claim. The determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113 I.
Regarding claim 7, Nagamine discloses wherein the solution comprises manganese(II) ions and potassium permanganate (an oxidizing agent) (paragraph 0024). Nagamine is silent about a portion of the manganese(II) ions being oxidized to manganese(III) ions by the oxidizing agent. However, a portion of the manganese(II) ions being oxidized to manganese(III) ions by permanganate ions is an inherent property of manganese(II) ions in an acidic environment, as evidenced by Chemical Equation (A) on page 2718 in Powell (J. Phys. Chem. Vol. 93, year 1989, pages 2718-2721).
Regarding claim 8, Nagamine discloses wherein the oxidizing agent comprises potassium permanganate (paragraph 0024).
Regarding claim 9, Nagamine discloses wherein the manganese(II) ions are added as a soluble manganese salt (manganese(II) sulfate, paragraph 0024).
Regarding claim 10, Nagamine discloses wherein the soluble manganese salt is manganese(II)sulphate (manganese(II) sulfate, paragraph 0024).
Regarding claim 11, Nagamine discloses wherein the at least one acid is inorganic acids (sulfuric acid, paragraph 0031).
Regarding claim 12, Nagamine discloses wherein the at least one acid is sulfuric acid (paragraph 0031).
Regarding claim 13, Nagamine discloses , wherein the at least one acid comprises sulfuric acid (paragraph 0031).
Regarding claim 14, Nagamine discloses wherein the concentration of the at least one acid is in the range of about 2 molar acidity to about 36.8 molar acidity (acid concentration of 100 to 1800g/L, paragraph 0034; molar mass of sulfuric acid = 98g/mol, each sulfuric acid molecule provides two hydrogen ions), which encompasses the range recited in the instant claim.
Regarding claim 15, Middeke discloses wherein the stabilizing metal ions are added to the etching solution as a soluble metal salt (paragraph 0044).
Regarding claim 16, Middeke discloses wherein the soluble metal salt is titanium(III)nitrate (paragraph 0044).
Regarding claim 17, Nagamine in view of Middeke is about wherein the stabilizing metal ions are introduced into the etching solution by direct dissolution of metal in the solution. However, it is noted that the instant claim is a composition claim. The determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113 I.
Regarding claims 18-20, Middeke discloses wherein the concentration of the stabilizing metal ions is in the range of about 0.001M to 1M (paragraph 0044), which overlaps with the ranges recited in the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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