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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 14, 2025 has been entered.
This is in response to the Amendment dated November 14, 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 16-20 (methods) drawn to an invention nonelected by original presentation.
Claim Rejections - 35 USC § 112
Claim 4 has 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 claim 4 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paragraph, has been withdrawn in view of Applicant’s amendment.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) 1-2, 4, 6-8 and 11 have been rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US Patent Application Publication No. 2017/0114470 A1) in view of Sommer et al. (“New Hexavalent Cr Free Etch for ABS and ABS/PC Electroplated Plastics,” Plating and Surface Finishing (2008 Apr 1), Vol. 95, No. 4, pp. 43-46), CN 105506713 (‘713) and RU 2231581 (‘581).
The rejection of claims 1-2, 4, 6-8 and 11 under 35 U.S.C. 103 as being unpatentable over Nagao et al. in view of Sommer et al., CN 105506713 (‘713) and RU 2231581 (‘581) has been withdrawn in view of the new grounds of rejection.
II. Claim(s) 9 and 10 have been rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (US Patent Application Publication No. 2017/0114470 A1) in view of Sommer et al. (“New Hexavalent Cr Free Etch for ABS and ABS/PC Electroplated Plastics,” Plating and Surface Finishing (2008 Apr 1), Vol. 95, No. 4, pp. 43-46), CN 105506713 (‘713) and RU 2231581 (‘581) as applied to claims 1-2, 4, 6-8 and 11 above, and further in view of Schulz et al. (US Patent
Application Publication No. 2014/0042033 A1).
The rejection of claims 9 and 10 under 35 U.S.C. 103 as being unpatentable over Nagao et al. in view of Sommer et al., CN 105506713 (‘713) and RU 2231581 (‘581) as applied to claims 1-2, 4, 6-8 and 11 above, and further in view of Schulz et al. has been withdrawn in view of the new grounds of rejection.
Continued Response
Claim Rejections - 35 USC § 112
Claims 1-2 and 6-11 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.
Claim 1
lines 12-14, recite “(c) contacting the substrate with said electroplating bath and applying an electrical current such that the dark chromium layer is electrolytically deposited on the substrate”.
It is unclear from the claim language how the plastic substrate is electroplated because plastic is non-conductive.
Claim Rejections - 35 USC § 103
I. Claim(s) 1-2, 6-8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Sommer et al. (“New Hexavalent Cr Free Etch for ABS and ABS/PC Electroplated Plastics,”
Plating and Surface Finishing (2008 Apr 1), Vol. 95, No. 4, pp. 43-46) in view of Nagao et al. (US Patent Application Publication No. 2017/0114470 A1), CN 105506713 (‘713) and RU 2231581 (‘581).
Regarding claim 1, Sommer teaches a method for electrodepositing a dark chromium layer (= electroplated with dark trivalent chromium) [page 44, left column, line 29 to right column, line 2] on a substrate (= commercial ABS and ABS/PC resin materials) [page 43, left column, line 33], the method comprising the steps:
(a) providing the substrate, wherein the substrate comprises a plastic substrate (= commercial ABS and ABS/PC resin materials) [page 43, left column, line 33].
The method of Sommer differs from the instant invention because Sommer does not disclose the following:
a. (b) Providing an aqueous trivalent chromium electroplating bath comprising:
(i) trivalent chromium ions,
(ii) one or more than one complexing agent for said trivalent chromium ions,
(iii) colloidal particles containing the chemical element aluminum,
(iv) a first sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below, and
(v) optionally a second sulfur-containing compound having a sulfur atom
with an oxidation number of +5 or below being different from (iv).
Sommer teaches electroplating a dark trivalent chromium (page 44, left column, line 29 to right column, line 2) top coat (page 43, right column, line 13).
Nagao, like Sommer, teaches electroplating (page 4, [0051]) a dark (page 3, [0038] and page 4, [0046]: a black appearance) trivalent chromium top coat (= 3 chrome plating film) [page 8, [0068]] by providing an trivalent chromium electroplating bath (= the trivalent chrome plating solution comprises an aqueous solution) [page 3, [0037]] comprising:
(i) trivalent chromium ions (= an aqueous solution containing a water-soluble
trivalent chromium compound as a chromium component),
(ii) one or more than one complexing agent for said trivalent chromium ions (= further contains various additives, such as a complexing agent) [page 3, [0037]],
(iii) colloidal particles (= adding metal oxide fine particles to a trivalent chrome plating bath) [page 3, [0038]] containing the chemical element aluminum (= aluminum
oxide) [page 4, [0046]],
(iv) a first sulfur-containing compound having a sulfur atom with an oxidation
number of +5 or below (= thiourea) [page 3, [0045]], and
(v) optionally a second sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below being different from (iv) [= optional].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified method described by Sommer by providing an aqueous trivalent chromium electroplating bath comprising: (i) trivalent chromium ions, (ii) one or more than one complexing agent for said trivalent chromium ions, (iii) colloidal particles containing the chemical element aluminum, (iv) a first sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below, and (v) optionally a second sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below being different from (iv) because Sommer teaches electroplating a dark trivalent chromium top coat and this is a suitable trivalent chromium electroplating bath to use for electroplating a
dark trivalent chromium top coat as taught by Nagao in [0037], [0038], [0045], [0046], [0051] and [0068].
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 “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).”
b. (c) contacting the substrate with said electroplating bath and applying an electrical current such that the dark chromium layer is electrolytically deposited on the substrate.
Sommer teaches that:
Molded parts processed on racks through the Cr-free etch and electroless nickel were then electroplated with a copper strike, copper plate, semi-bright nickel, bright nickel and bright trivalent chromium or dark trivalent chromium to automotive thickness specifications (page 44, bridging paragraph).
Nagao teaches that:
The cathode current density can also be suitably determined according to the plating solution used, the type of object to be plated, etc. The cathode current density is preferably about 1 to 20 A/dm2 (page 4, [0051]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method described by Sommer by contacting the substrate with said electroplating bath and applying an electrical current such
that the dark chromium layer is electrolytically deposited on the substrate because applying a current density to the cathode in the bath disclosed by Nagao electrodeposits a dark chromium layer on the bright nickel of Sommer.
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.
c. Wherein said colloidal particles comprise at least particles with a particle size of
20 nm or less.
Nagao teaches that:
Examples of metal oxide fine particles added to form irregularity on the plating film surface and thereby obtain a trivalent chrome plating film with a black appearance include silica compounds, such as nanocolloidal silica, silica gel, colloidal silica, and silica slurry; zirconium oxide, aluminum oxide, titanium oxide, magnesium oxide, tin oxide, copper oxide, zinc oxide, cerium oxide, yttrium oxide, iron oxide, cobalt oxide, and complex oxides thereof (page 4, [0046]).
CN ‘713 teaches an electrolyte comprising trivalent chromium salts and nano-ceramic
particles is used in the electroplating. Adding nano-ceramic particles to the electrolyte can
significantly reduce cracks in the electroplated coating (ρ [0022]). The nano ceramic particles may be selected from aluminum oxide (Al2O3) powder, silicon nitride (Si3N4) powder, silicon oxide (SiO) powder, zirconium oxide (ZrO2) powder, and any combination thereof. The particle size of the nano-ceramic particles may be in the range of about 20 nanometers to 500 nanometers (ρ [0023]).
RU ‘581 teaches that the chromium plating electrolyte contains Cr III salts and Al2O3
powder (ρ [0013]). Ultrafine Al2O3 powder has a specific surface area of 20-200 m2 per gram of dry powder and a particle size of 0.005-0.15 µm1 (ρ [0020]). The use of ultra-dispersed Al2O3 powder allows eliminating defects in adhesion strength, as well as leakage on chromium due to the
production of a coating that accurately copies the surface profile of the part, ensuring a
microhardness value of up to 1500 kg/mm2 and a deposition rate of 1.8 μm/min (ρ [0022]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified said colloidal particles described by Sommer in view of Nagao with wherein said colloidal particles comprise at least particles with a particle size of 20 nm or less because nano-ceramic particles in the range of about 20 nanometers significantly reduce cracks in the electroplated coating and ultrafine Al2O3 powder having a particle size of 0.005-0.15 µm eliminates defects in adhesion strength, as well as leakage on chromium due to the production of a coating that accurately copies the surface profile of the part, ensuring a microhardness value of up to 1500 kg/mm2 and a deposition rate of 1.8 μm/min.
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 “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).”
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) “.
Regarding claim 2, the method of Sommer in view of Nagao, CN ‘713 and RU ‘581 differs from the instant invention because Sommer in view of Nagao, CN ‘713 and RU ‘581 do not
disclose wherein the aqueous trivalent chromium electroplating bath is a colloidal suspension.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because Sommer in view of Nagao, CN ‘713 and RU ‘581 teaches the aqueous trivalent chromium electroplating bath as presently claimed. 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 (MPEP § 2112.01(II)).
Thus, the aqueous trivalent chromium electroplating bath as taught by Nagao in [0037], [0038], [0045], [0046], [0051] and [0068] in view of CN ‘713 in [0022] and [0023] and RU in [0013], [0020] and [0022] is a colloidal suspension.
Regarding claim 6, CN ‘713 teaches wherein said colloidal particles are present in a
total amount ranging from 0.05 g/L to 15 g/L, based on the total volume of the aqueous
trivalent chromium electroplating bath (= the concentration of the nano-ceramic particles may be in a range of about 1 gram per liter (g/l) to about 15 g/l, or further, in a range of about 2 g/l
to about 13 g/l) [ρ [0023]).
RU ‘581 teaches wherein said colloidal particles are present in a total amount ranging from 0.05 g/L to 15 g/L, based on the total volume of the aqueous trivalent chromium
electroplating bath (= 1-100 g/l) [ρ [0019]].
Regarding claim 7, Nagao teaches wherein said colloidal particles comprise aluminum oxide (= examples of metal oxide fine particles added to form irregularity on the plating film surface and thereby obtain a trivalent chrome plating film with a black appearance include
aluminum oxide) [page 4, [0046]].
Regarding claim 8, Nagao teaches wherein said colloidal particles comprise Al2O3 (= examples of metal oxide fine particles added to form irregularity on the plating film surface and thereby obtain a trivalent chrome plating film with a black appearance include aluminum oxide) [page 4, [0046]].
Regarding claim 11, Nagao teaches wherein the second sulfur-containing compound
comprises an inorganic sulfur-containing compound having a sulfur atom with an oxidation
number of +5 or below (= examples of inorganic sulfur compounds include sodium sulfide,
ammonium sulfide, calcium sulfide, potassium thiocyanate, sodium thiocyanate, sodium hydrogen sulfide, and the like) [pages 3-4, [0045]].
II. Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Sommer et al. (“New Hexavalent Cr Free Etch for ABS and ABS/PC Electroplated Plastics,”
Plating and Surface Finishing (2008 Apr 1), Vol. 95, No. 4, pp. 43-46) in view of Nagao et al. (US
Patent Application Publication No. 2017/0114470 A1), CN 105506713 (‘713) and RU 2231581 (‘581) as applied to claims 1-2, 6-8 and 11 above, and further in view of Schulz et al. (US Patent Application Publication No. 2014/0042033 A1).
Sommer, Nagao, CN ‘713, and RU ‘581 are applied and incorporated herein.
Regarding claim 9, the method of Sommer in view of Nagao, CN ‘713 and RU ‘581 differs from the instant invention because Sommer in view of Nagao, CN ‘713 and RU ‘581 do not disclose wherein the first sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below comprises a nitrogen atom.
Nagao teaches that:
Trivalent chrome plating is generally known to have lower purity than hexavalent chrome plating. As described above, the trivalent chrome plating solution contains large amounts of organic materials, such as a complexing agent and a brightener; therefore, organic materials containing carbon, sulfur, oxygen, etc. co-deposit in the chrome plating film. Accordingly, when a sulfur compound is added to the trivalent chrome plating solution to increase the amount of sulfur co-deposited in the plating film, a black appearance specific to trivalent chrome plating films can be obtained. The black appearance can also be obtained by adding metal oxide fine particles to a trivalent chrome plating bath and co-depositing the metal oxide fine particles in the plating film to increase the surface roughness of the plating film. In the present invention, as the trivalent chrome plating solution, a plating solution for forming a black plating film as described above can also be used (page 3, [0038]).
Examples of the sulfur compound added to a trivalent chrome plating solution for forming a trivalent chrome plating film with a black appearance include inorganic sulfur compounds and organic sulfur compounds. Examples of inorganic sulfur compounds include sodium sulfide, ammonium sulfide, calcium sulfide, potassium thiocyanate, sodium thiocyanate, sodium hydrogen sulfide, and the like. Examples of organic sulfur compounds include thiourea compounds, such as thiourea, allylthiourea, ethylenethiourea, diethylthiourea, diphenylthiourea, tolylthiourea, guanylthiourea, and acetylthiourea; mercapto compounds, such as 2-mercaptoethanol, 2-mercaptohypoxanthine, 2-mercaptobenximidazole, and 2-mercaptobenzothiazole; amino compounds, such as aminothiazole; thiocarboxylic acids, such as thioformic acid, thioacetic acid, thiomalic acid, thioglycolic acid, thiodiglycolic acid, thiocarbamic acid, and thiosalicylic acid, and salts thereof; dithiocarboxylic acids, such as dithioformic acid, dithioacetic acid, dithioglycolic acid, dithiodiglycolic acid, and dithiocarbamic acid, and salts thereof (pages 3-4,
[0045]).
Schulz teaches an electroplating bath for depositing a dark chromium layer on a
workpiece and a method for applying said electroplating bath (page 2, [0024]). The electroplating bath for deposition of a dark chromium layer on a workpiece comprises (page 2,
[0025]): (D) at least one coloring agent selected from sulphur containing compounds having the general Formula (I):
PNG
media_image1.png
73
174
media_image1.png
Greyscale
Formula (I)
wherein
n, p, q are independently of each other integers from 0 to 4;
R1 represents -H, -OH, -COOH, -CO-OCH3, -CO-OCH2-CH3, -(-O-CH2-CH2-)m-OH, -CH(-NH2)-COOH, -CH(-NH-CH3)-COOH, -CH(-N(-CH3)2)-COOH, -CH(-NH2)-CO-OCH3, -CH(-NH2)-CO-OCH2-CH3, -CH(-NH2)-CH2-OH, -CH(-NH-CH3)-CH2-OH, -CH(-N(-CH3)2)CH2-OH, -SO3H;
m represents an integer from 5 to 15;
R2 represents -H, -OH, -(CH2-)p-OH, -(CH2-)p-C(-NH2)=NH, -CH2-CH2-(-O-CH2-CH2-)m-OH, -R5, -(CH2-)q-COOH, -(CH2-)q-CO-OCH3, -(CH2-)q-CO-OCH2-CH3, -(CH2-)q-S-(-CH2-)2-OH, -CS-CH3, -CS-CH2-CH3, -CS-CH2-CH2CH3, -CN (page 2, [0029] to [0034]), and
R5 represents -H, -CH3, -CH2-CH3, -CH2-CH2-CH3, -CH2-CH2-CH2-CH3 (page 2, [0029] to page 3, [0036]).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the first sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below described by Sommer in view of Nagao, CN ‘713 and RU ‘581 with wherein the first sulfur-containing compound having a sulfur atom with an oxidation number of +5 or below comprises a nitrogen atom because adding a
compound having the general Formula (I):
PNG
media_image1.png
73
174
media_image1.png
Greyscale
Formula (I)
wherein R1 is -CH(-NH2)-COOH, R2 is R5 is -CH3 and n is 2 to a trivalent chrome plating solution increases the amount of sulfur co-deposited in the plating film and a black appearance specific to a trivalent chrome plating film can be obtained.
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 “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 10, Schulz teaches wherein the first sulfur-containing compound comprises methionine (= at least one coloring agent selected from sulphur containing compounds having the general Formula (I):
PNG
media_image1.png
73
174
media_image1.png
Greyscale
Formula (I)
wherein R1 is -CH(-NH2)-COOH, R2 is R5 is -CH3 and n is 2 (page 2, [0029] to [0036]).
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims have been considered but are moot because the new grounds of rejection do not rely on the combination of references applied in the prior rejections of record for any teaching or matter specifically challenged in the argument.
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.
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.
/EDNA WONG/Primary Examiner, Art Unit 1795
1 0.005-0.15 µm = 5-150 nm.