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 .
Response to Arguments
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. This argument is not persuasive. The claimed bath composition is indistinguishable from the prior art bath composition, and Applicant has not presented any evidence establishing a patentable distinction. With respect to electroplating current and bath temperature, Wernlund discloses ranges which overlap the claimed ranges, creating a prima facie case of obviousness. With respect to mercaptothiazole, Wernlund teaches including 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. The prior art process of Wernlund is substantially identical to the process used to make the claimed product (the process described in the specification uses at least 5 g/L of mercaptothiazole, which is not the same range recited in claim 1; the claimed product of claim 13 does not depend from the process of claim 1, which uses 10-30 g/L of mercaptothiazole). Applicant has not presented objective evidence rebutting this finding of inherency. Applicant does not present additional, substantive arguments traversing the 35 U.S.C. 103 rejection over Wernlund in view of Zhang et al. (US 2012/0067733). 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. 6 oz/gal KCN is left over to give a concentration of 45 g/L KCN. Therefore, the prior art solution is indistinguishable from the claimed solution, rendering the claimed bath composition consisting of silver potassium cyanide and potassium cyanide obvious over the prior art bath composition.
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 of a mercaptothiazole in the bath 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
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 XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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