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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/2025 has been entered.
Response to Arguments
The 35 U.S.C. 112(d) rejection is withdrawn in view of Applicant’s amendments. Applicant’s arguments, filed 12/31/2025, with respect to the 35 U.S.C. 103 rejection of the claims over Wernlund (US 2,429,970) have been fully considered but are not persuasive. Applicant makes the following arguments:
A) Wernlund does not teach the claimed method of producing the silver-plated product. However, the only differences between the claimed method and method of Wernlund are: 1) inclusion of silver potassium cyanide in the plating bath instead of silver cyanide and potassium cyanide and 2) the claimed mercaptothiazole concentration in the plating bath of 10 g/L to 30 g/L as opposed to 0.075 to about 7.5 g/L in Wernlund.
As to 1), the inclusion of silver cyanide and potassium cyanide in Wernlund is chemically equivalent to the claimed inclusion of silver potassium cyanide. Applicant has not presented any evidence that using silver potassium cyanide instead of silver cyanide and potassium cyanide results in a patentable distinction. As to 2), the prior art amount is very close to the claimed amount. Furthermore, Wernlund teaches including a mercaptothiazole for the purpose of obtaining a superior silver plating having good brightness, density, and hardness (col. 2, lines 14-21). The amount of mercaptothiazole is thus considered a result effective variable one of ordinary skill in the art would seek to optimize to obtain a silver plating having desired properties, rendering the claimed invention obvious. Applicant has not presented objective evidence rebutting the prima facie case of obviousness by demonstrating criticality of the claimed range.
B) Wernlund does not teach the claimed silver-plated product. However, the prior art process of Wernlund is substantially identical to the process used to make the claimed product (the described process in the specification uses at least 5 g/L of mercaptothiazole, and the claimed product of claim 13 does not depend from the claimed process, which uses 10-30 g/L of mercaptothiazole). Applicant has not presented objective evidence rebutting this finding of inherency. The prior art rejections are therefore maintained and remain outstanding.
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, 8-10 and 13-16 are rejected under 35 U.S.C. 103 as unpatentable over Wernlund et al. (US 2,429,970).
Regarding claims 1, 4-5 and 10, Wernlund discloses a method of electroplating silver (col. 1, lines 1-3). In the examples, the method comprises preparing a solution containing 10 oz/gal silver cyanide (75 g/L) and 16 oz/gal potassium cyanide (120 g/L) (col. 1, lines 40-46). 10 oz/gal AgCN and 10 oz/gal KCN combine to give a concentration of 150 g/L AgK(CN)2 because a solution containing 75 g/L AgCN and 75 g/L KCN is indistinguishable from a solution containing 150 g/L AgK(CN)2, so the prior art solution is the same as the claimed solution. 6 oz/gal KCN is left over to give a concentration of 45 g/L KCN.
An additive such as 2-mercaptothiazole or 2-mercaptobenzothiazole is added to the electroplating solution as a brightening agent (col. 1, lines 14-21). Wernlund teaches this brightening agent is present in an amount from 0.01 to about 1 ounce per gallon (col. 2, lines 5-7), which is equivalent to 0.075 to about 7.5 g/L. The upper range of “about 1 ounce per gallon” in Wernlund approaches the claimed lower limit. Furthermore, the amount of brightening agent is a result effective variable one of ordinary skill in the art would seek to optimize for achieving the desired properties of a silver plating such as brightness or hardness (see col. 2, lines 14-30). See MPEP 2144.05 II. Accordingly, the claimed range is obvious over Wernlund.
Additionally, Wernlund teaches the bath temperature is set to 21-43°C (col. 2, lines 23-25). The current density for electroplating is as high 30 A/ft2 (col. 2, lines 15-17), which is equivalent to 3.23 A/dm2. These ranges overlap or lie within the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 8, Wernlund teaches examples of plating solutions containing 10 oz/gal AgCN, which is equivalent to 75 g/L AgCN, or 60.4 g/L of Ag.
Regarding claim 9, Wernlund teaches up to 14 oz/gal of free cyanide (col. 1, line 55 – col. 2, line 4), which is up to 105 g/L free cyanide. This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claims 13-16, Wernlund does not expressly teach a silver-plated material having the claimed properties. However, the electroplating process of Wernlund is substantially identical to that used to make the claimed product (see discussion of claim 1 above). Accordingly, one of ordinary skill in the art would expect the prior art silver-plated material to exhibit substantially identical properties as those claimed, absent objective evidence to the contrary. See MPEP 2112.
Claims 11-12 and 17-18 are rejected under 35 U.S.C. 103 as unpatentable over Wernlund et al. (US 2,429,970), as applied to claims 1 and 13 respectively, further in view of Zhang et al. (US 2012/0067733).
Regarding claims 11-12, the limitations of claim 1 have been addressed above. Wernlund does not expressly teach the substrate material. Zhang teaches nickel undercoat is used as a diffusion barrier between copper substrates and silver plating for decorative and electronic applications (¶ 6). It would have been obvious at the effective time of filing for one of ordinary skill in the art to plate silver on a copper substrate having a nickel diffusion barrier coating in between because Zhang teaches this is conventional to prevent diffusion between copper and silver in silver plated materials for decorative and electronic applications.
Regarding claims 17-18, the limitations of claim 13 have been addressed above. Wernlund does not expressly teach the substrate material. Zhang teaches nickel undercoat is used as a diffusion barrier between copper substrates and silver plating for decorative and electronic applications (¶ 6). It would have been obvious at the effective time of filing for one of ordinary skill in the art to plate silver on a copper substrate having a nickel diffusion barrier coating in between because Zhang teaches this is conventional to prevent diffusion between copper and silver in silver plated materials for decorative and electronic applications.
Conclusion
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784