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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification does not provide proper antecedent basis for plating solutions and aqueous baths for electroless plating wherein “said dispersion comprises 400 parts per million or less of perfluorooctanoic acid (PFOA)” as claimed (claims 1 and 7). Instead, the specification teaches “compositions, baths, and methods for plating that may contain PFOA … or may be free, or have only trace amounts of PFOA” at paragraphs [0044], [0071], and [00189].
The specification does not provide proper antecedent basis for plating solutions and aqueous baths for electroless plating comprising:
1) a non-ionic hydrocarbon surfactant made without fluorosurfactant or fluorine-based materials (claims 3 and 18);
2) an organic surfactant made without fluorosurfactant or fluorine-based materials (claims 4 and 9);
3) a cationic siloxane based surfactant made without fluorosurfactant or fluorine-based materials (claims 5 and 20); or
4) a non-ionic hydrocarbon surfactant made without fluorosurfactant or fluorine-based materials and a cationic siloxane based surfactant made without fluorosurfactant or fluorine-based materials (claim 6).
Instead, the specification generally teaches plating baths without “fluorinated surfactants” at paragraphs [0069], [0077] and [00189], and aqueous based mixtures of PTFE particles and one or more “surfactants” at paragraph [0134]. Non-ionic hydrocarbon surfactants, organic surfactants, cationic siloxane based surfactants and mixtures thereof are not disclosed.
The specification does not provide proper antecedent basis for aqueous baths for electroless plating wherein “an average particle size of said PTFE particulate matter is in a range of 0.05 microns to 100 microns” (claim 8). The specification only teaches “particulate matter suitable for practical composite electroless plating may be from nanometers up to approximately 75 microns in size” at paragraph [0011].
The specification does not provide proper antecedent basis for aqueous baths for electroless plating wherein “wherein any fluorocarbon materials in said dispersion contains no chain of fluorocarbons of eight (8) or longer” as claimed (claim 9). Instead, the specification teaches solutions free of all fluorocarbons at paragraph [0065].
The specification does not provide proper antecedent basis for aqueous baths for electroless plating wherein “the concentration of PFOS in said dispersion is less than 0.4 parts per thousand” (claim 14). The specification teaches compositions, baths, and methods for plating that may contain … PFOS, or may be free, or have only trace amounts of … PFOS” at paragraph [0044], [0071] and [00189].
The specification does not provide proper antecedent basis for aqueous baths for electroless plating wherein the dispersion “further comprises at least one of hydrocarbon and fluorocarbon particulate matter stabilizers” (claim 15). The specification makes no mention of using hydrocarbons in the aqueous baths, and specifically discloses solutions free from fluorocarbons at paragraph [0065].
The specification does not provide proper antecedent basis for aqueous baths for electroless plating wherein the dispersion is absent fluorocarbon “particulate matter stabilizers” (claim 16). Instead, the specification discloses solutions free from all fluorocarbons at paragraph [0065].
The specification does not provide proper antecedent basis for aqueous baths for electroless plating comprising “25 parts per billion or less of PFOA” (claim 17). Instead, the specification teaches “compositions, baths, and methods for plating that may contain PFOA … or may be free, or have only trace amounts of PFOA” at paragraphs [0044], [0071], and [00189].
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7, line 5, the term “PTFE” should be spelled out to avoid ambiguity in the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, and 9-12 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 2 recites, “said dispersion is compliant with Registration, Evaluation, Authorization, and Restriction of Chemicals (REACH) as published by the European Commission of the European Union.” However, the scope of claim 2 is unclear, given that the claim is not defined by the language of the claim, rather by reference to a standards document (“REACH”) produced by a committee (“European Commission of the European Union”). Changes to the “REACH” document in the future would result in changes to the scope of claim 2.
The boundaries of the claimed subject matter are not defined by the language of claim 2, but instead by reference to the “REACH” document that may be modified or change over time. Further, a person of ordinary skill in the art would be unable to determine the metes and bounds of the subject matter of claim 2 without consulting the REACH published by the EU. Therefore, claim 2 is rendered indefinite, given a limitation of the claim is defined by reference to an object, and the relationship between the limitation and the object is not sufficiently defined. See MPEP 2173.05(b) (II).
Claim 9 is indefinite for requiring that “any fluorocarbon materials in said dispersion contain no chains of fluorocarbons of eight (8) or longer,” because particulate PTFE, which is a fluorocarbon polymer, would necessarily contain a chain of more than 8 carbon atoms. Clarification is required.
Claim 10 is indefinite because the term “said elements” in line 1 lacks proper antecedent basis in the claims.
Claim 11 recites, “wherein the coating formed on the article from said aqueous bath is conformant with End-Of-Life Vehicle (ELV) and Removal of Hazardous Substances (RoHS) regulations.” However, the scope of claim 11 is unclear, given that the claim is not defined by the language of the claim, but rather by reference to published European regulations. Changes to the “End-Of-Life Vehicle (ELV)” and “Removal of Hazardous Substances (RoHS)” regulations in the future would result in changes to the scope of claim 11.
The boundaries of the claimed subject matter are not defined by the language of claim 11, but instead by reference to the End-Of-Life Vehicle (ELV) and Removal of Hazardous Substances (RoHS) regulations that may be modified or change over time. Further, a person of ordinary skill in the art would be unable to determine the metes and bounds of the subject matter of claim 11 without also consulting the End-Of-Life Vehicle (ELV) and Removal of Hazardous Substances (RoHS) published regulations. Therefore, claim 11 is rendered indefinite, given a limitation of the claim is defined by reference to an object, and the relationship between the limitation and the object is not sufficiently defined. See MPEP 2173.05(b) (II).
Claim 12 is indefinite because the term “said solution” in line 1 lacks proper antecedent basis in the claims. Amending this term to read “said dispersion” can overcome this rejection.
Claim 12 claims that the aqueous bath “further comprises particulate matter selected from … lubricating particles.” This limitation renders the claim indefinite because claim 7, from which claim 12 depends, requires PTFE particulate matter. The specification at [0014] discloses the PTFE particles are “lubricating particles” as claimed. Clarification is required.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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, 7, 9-10, 13-14 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Thottathil et al, US 2018/0258538 A1 (Thottathil).
Thottathil was cited in the IDS filed 02/28/2024.
Regarding claims 1, 7 and 17, Thottathil discloses solutions diluted with one liter of deionized water to form electroless plating baths in Fig. 1A-1E (i.e., plating solutions for electroless plating of claim 1 and aqueous baths for electrolessly plating an article of claim 7) (Thottathil; [0197]).
Examples 16 and 17 in Fig. 1B, and Examples 25-26 in Fig. 1C, comprise nickel sulfate (the metal salt of row 18); sodium hypophosphite and DMBA (the reducing agents of rows 16-17); lactic acid and malic acid (the complexing agents of rows 6-7); a PTFE dispersion (row 41); and bismuth and thiourea (the particulate matter stabilizers of rows 27-28). Example 27 of Fig 1C additionally comprises glycine (the complexer of row 11). The only additional components found in the solutions of Examples 16-17 and 25-27 are the buffer borax (Fig. 1B, row 8 and Fig. 1C, row 8), and the pH adjuster sodium hydroxide (Fig. 1B, row 22 and Fig. 1C, row 22)
Because the electroless plating solutions comprise each of the claimed components, it is inherent that the electroless plating solutions would form a coating including PTFE particulate matter on an article as claimed in claims 1 and 7.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, the PTFE dispersions of Thottathil appear to meet the claim limitation “wherein said dispersion comprises 400 parts per million or less of PFOA” of claims 1 and 7, and “wherein said dispersion further comprises 25 parts per billion or less of PFOA” of claim 17, because PFOA is not disclosed as being present in the exemplified PTFE dispersions. Further, Thottathil discloses compositions, baths and coatings that are free from or contain only trace amounts of PFOA (emphasis added) (Thottathil; [0074] and [0181]).
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). See MPEP 2131.02.III.
Alternatively, Thottathil teaches that health and environmental concerns have been raised about the inclusion of certain materials such as perfluoro octane sulfonate (PFOS) and perfluorooctanoic acid (PFOA) that may be used in plating systems, including composite plating systems, including those with PTFE. PFOS may be contained in certain particulate matter stabilizers (PMSs) useful for electroless plating. The present invention therefore includes compositions, baths, and methods for plating that may contain PFOA and/or PFOS, or may be free, or have only trace amounts of PFOA and/or PFOS (Thottathil; [0074]).
In light of the motivation provided by Thottathil to formulate plating systems comprising PTFE which are free from PFOA, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate plating solutions and baths which are free from PFOA in order to ensure the plating solutions and baths avoid the health and environmental concerns associated with PFOA.
Regarding claim 9, Thottathil is relied upon as disclosing the limitations of claim 7 as discussed above. The PTFE dispersions in the aqueous baths of Thottathil, including those of Examples 16-17 in Fig. 1B, and Examples 25-27 in Fig. 1C, appear to inherently meet the claim limitation “wherein any fluorocarbon materials in said dispersion contain no chains of fluorocarbons of eight (8) or longer” of claim 9, because no additional fluorocarbon materials are disclosed as being added to the exemplified PTFE dispersions.
Regarding claim 10, Thottathil is relied upon as disclosing the limitations of claim 7 as discussed above. The disclosed aqueous baths of Examples 16-17 in Fig. 1B, and Examples 25-27 in Fig. 1C, appear to meet the claim limitation “wherein said elements are further essentially free of perfluoro surfactant sulfonate (PFOS)” as claimed because PFOS is not disclosed as an additive to the exemplified baths. Further, Thottathil discloses compositions, baths and coatings that are free from or contain only trace amounts of PFOS (emphasis added) (Thottathil; [0074] and [0181]).
Alternatively, Thottathil teaches that health and environmental concerns have been raised about the inclusion of certain materials such as perfluoro octane sulfonate (PFOS) and perfluorooctanoic acid (PFOA) that may be used in plating systems, including composite plating systems, including those with PTFE. PFOS may be contained in certain particulate matter stabilizers (PMSs) useful for electroless plating. The present invention therefore includes compositions, baths, and methods for plating that may contain PFOA and/or PFOS, or may be free, or have only trace amounts of PFOA and/or PFOS (Thottathil; [0074]).
In light of the motivation provided by Thottathil to formulate plating systems comprising PTFE which are free from PFOS, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate plating solutions and baths which are free from PFOS in order to ensure the plating solutions and baths avoid the health and environmental concerns associated with PFOS.
Regarding claim 13, Thottathil is relied upon as disclosing the limitations of claim 7 as discussed above. Examples 16 and 17 in Fig. 1B, and Examples 25-26 in Fig. 1C, comprise bismuth and thiourea (rows 27-28), i.e., more than one type of particulate matter stabilizer as claimed.
Regarding claim 14, Thottathil is relied upon as disclosing the limitations of claim 7 as discussed above. The disclosed aqueous baths of Examples 16-17 in Fig. 1B, and Examples 25-27 in Fig. 1C, appear to meet the limitation “wherein the concentration of PFOS in said dispersion is less than 0.4 parts per thousand” as claimed because PFOS is not disclosed as an additive to the exemplified PTFE dispersions. Further, Thottathil discloses compositions, baths and coatings that are free from or contain only trace amounts of PFOS (emphasis added) (Thottathil; [0074] and [0181]).
Alternatively, in light of the motivation provided by Thottathil to formulate plating systems comprising PTFE which are free from PFOS, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate plating solutions and baths which are free from PFOS in order to ensure the plating solutions and baths avoid the health and environmental concerns associated with PFOS.
Regarding claim 16, Thottathil is relied upon as disclosing the limitations of claim 7 as discussed above. Because Thottathil does not disclose or suggest the addition of fluorocarbon particulate matter stabilizers to the electroless plating solutions and baths, it is clear that the dispersions of Thottathil are free from fluorocarbon particulate matter stabilizers as claimed.
Claims 1, 3-4, 7, 9-10, and 13-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Feldstein, US 2014/0178577 A1 (Feldstein).
Regarding claims 1, 7, 10, 13, 14 and 17, Feldstein discloses compositions, baths, and methods for composite plating with PTFE dispersions comprising PTFE particulate matter that is free of PFOA, or substantially free of, PFOA and/or PFOS (Feldstein; [0020] and [0039]). The PTFE dispersions may be used for electroless composite plating (Feldstein; [0051]).
In plating applications, the metal or alloy matrix may be applied through an electroless method, wherein the metal or alloy may be, for example, nickel, cobalt, copper, gold, palladium, iron, other transition metals, and mixtures thereof (Feldstein; [0052]). Such metals may be introduced to the plating bath within a compound that aids and allows the dissolution of the metal portion in the bath solution such as sulfates, chlorides, acetates, phosphates, carbonates, sulfamates, and hypophosphites (i.e., metal salts as claimed) (Feldstein; [0053]).
In electroless plating processes, reducing agents are used as electron donors as claimed (Feldstein; [0054]).
In order to formulate a PTFE dispersion free or essentially free of PFOA and/or PFOS as claimed, any known particulate matter stabilizers (PMSs) as claimed may be used so long as it is free or essentially free of PFOA and/or PFOS (Felstein; [0056]). In the case of composite electroless PTFE plating, the electroless metallizing bath may also contain one or more complexing agents as claimed (Feldstein; [0057]).
The electroless plating process results in an article with a coating containing metal or metal alloy and PTFE particulate matter, but free or essentially free of PFOA and/or PFOS (Feldstein; [0062]). Therefore, the coating includes PTFE particulate matter on an article as claimed in claims 1 and 7.
Free of PFOA reads on the claimed 400ppm or less of PFOA (claims 1 and 7), and 25 ppb or less of PFOA (claim 17).
Free of PFOS reads on the claimed essentially free from PFOS (claim 10), and less than 0.4 parts per thousand of PFOS (claim 14).
In Example 1, Feldstein exemplifies dispersing PTFE particulate matter that is essentially free of PFOA (i.e., understood in the art to be at most only trace amounts of PFOA in the PTFE) into an aqueous solution containing a mixture of PMSs (i.e., wherein the dispersions comprises more than one type of particulate matter stabilizer as claimed in claim 13) that do not contain PFOS, resulting in a PTFE dispersion that is free of PFOA and PFOS (Feldstein; [0069]).
This PTFE aqueous dispersion was introduced into a composite plating bath comprising a nickel salt (metal salt), the reducing agent sodium hypophosphite, and other components typical of nickel baths (Feldstein; [0070]).
See Examples 3-4 for similar PTFE dispersions and plating baths (Feldstein; [0078-0079] and [0084-0085]).
These compositions differ from the claimed compositions only in that Feldstein does not specifically disclose a complexing agent is used as a “typical component additive.” However, Feldman discloses in the case of composite electroless PTFE plating, the electroless metallizing bath may also contain one or more complexing agents (Feldstein; [0057]).
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). See MPEP 2131.02.III.
Alternatively, although Feldstein does not explicitly disclose that the exemplified plating solutions and aqueous baths comprising a complexing agent as claimed, given that Feldstein discloses plating solutions and aqueous baths that overlap the presently claimed plating solutions and aqueous baths, including solutions and baths which comprise a complexing agent, it therefore would be obvious to one of ordinary skill in the art to use a complexing agent, which is both disclosed by Feldstein and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this section can be found above.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Thottathil.
Regarding claim 12, Thottathil is relied upon as disclosing the limitations of claim 7 as discussed above. Thottathil teaches that the compositions may contain wear resistance particulates such as diamond, carbides, oxides, graphene, and ceramics; “lubricating particles” such as polytetrafluoroethylene (PTFE), boron nitride (BN), talc, molybdenum disulfide (MoS), graphite or graphite, and particulates with phosphorescent properties as claimed (Thottathil; [0043-0045]).
Given that Thottathil discloses aqueous baths for electroless plating that overlap the presently claimed aqueous baths for electroless plating, including baths which comprise, e.g., wear resistance particles, diamond, lubricating particles, boron nitride (BN), talc, molybdenum disulfide (MoS), graphite, and phosphorescent particles as claimed, it therefore would be obvious to one of ordinary skill in the art to use wear resistance particles, diamond, lubricating particles, boron nitride (BN), talc, molybdenum disulfide (MoS), graphite, and phosphorescent particles, which are both disclosed by Thottathil and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 3-4, 8-9, 12, 15-16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Feldstein.
Regarding claims 3-4, 9, 15-16 and 18-19, Feldstein is relied upon as disclosing the limitations of claims 1 and 7 as discussed above. Feldstein teaches that eight carbon chain based fluorocarbon surfactants most commonly used in PTFE dispersions, known as perfluoro-octyl or PFOS, bioaccumulate to a greater degree than fluorocarbon surfactants with shorter chains of carbon atoms or other varieties of surfactants (Feldstein; [0044]). PFOS has further been suspected of causing developmental and systemic toxicity in laboratory animals (Feldstein; [0045]). Therefore, Feldstein teaches PTFE dispersions using surfactants free or essentially free of PFOS and baths free of any fluorocarbon materials having chains of eight or longer (Feldstein; [0046], claims 32 & 42).
Feldstein teaches PTFE dispersions free of fluorocarbon surfactants in general, as even fluorocarbon surfactants with carbon chains less than eight may still be more problematic to the environment, humans, and/or animals than non-fluorocarbon surfactants. In one embodiment, hydrocarbon surfactants may be used as a replacement for fluorocarbon surfactants, wherein the hydrocarbons have hydrogen atoms and less electronegativity than fluorine atoms (i.e., nonionic) (Feldstein; [0047]).
In light of the motivation provided by Feldstein to formulate PTFE dispersions which are free from PFOS, any fluorocarbon materials having chains of eight or longer, and free from fluorocarbon surfactants in general, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate PTFE dispersions and plating baths which are free from fluorocarbon materials and surfactants, and instead use organic hydrocarbon surfactants as claimed, in order to obtain PTFE dispersions and plating baths that do not bioaccumulate and cause harm to the environment, humans, and/or animals, and thereby arrive at the claimed invention. Specifically, the PTFE dispersions and aqueous baths of Feldstein that comprise organic, nonionic hydrocarbon surfactants, and which are free from fluorocarbons, read on the claimed:
non-ionic hydrocarbon, organic surfactants made without fluorosurfactant or fluorine-based materials (claims 3-4 and 18-19);
wherein said dispersion contain no chains of fluorocarbons of eight (8) or longer (claim 9);
wherein said dispersion further comprises at least one of hydrocarbon particulate matter stabilizer (claim 15); and
where said dispersion is absent fluorocarbon particulate matter stabilizers (claim 16).
Regarding claim 8, Feldman is relied upon as disclosing the limitations of claim 7 as discussed above. The PTFE may be from nanometers in size up to approximately 100 microns in size. The specific preferred size range depends on the application involved (Feldstein; [0055]). Nanometers in size up to approximately 100 microns in size overlaps with the claimed PTE particulate matter size range of 0.05 microns to 100 microns.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Further, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Regarding claim 12, Feldman is relied upon as disclosing the limitations of claim 7 as discussed above. Feldstein teaches the manufacture of dispersions of particles of PTFE plus particles of another material, including other lubricating particles and wear resistance particles (Feldstein; [0049-0050]).
Given that Feldstein discloses aqueous plating baths that overlap the presently claimed aqueous plating baths, including baths comprising dispersions which contain lubricating particles and/or wear resistance particles, it therefore would be obvious to one of ordinary skill in the art to use the lubricating particles and/or wear resistance particles, which is both disclosed by Feldstein and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 5-6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Feldstein in view of Taira, WO 2019/031617 A1 (Taira).
The Examiner has provided the English language equivalent of Taira, US 2024/0117077 A1. The citation of the prior art in this rejection refers to the English language equivalent.
Regarding claims 5-6 and 20, Feldman is relied upon as disclosing the limitations of claim 7 as discussed above. PFOS may be introduced into PTFE dispersions through the use of certain surfactant materials. Feldstein teaches fluorocarbon surfactants have been widely used in the manufacture of PTFE dispersions. The surfactants that have been most commonly used in this field have been surfactants with a chain of eight carbon atoms, known as perfluoro-octyl, or PFOS. The use of such surfactants directly relates to the problem bioaccumulation (Feldstein; [0044]). PFOS has further been suspected of causing developmental and systemic toxicity in laboratory animals, making the avoidance of PFOS advantageous (Feldstein; [0045]).
In one embodiment, certain types and quantities of hydrocarbon surfactants may be used as a replacement for fluorocarbon surfactants, wherein only hydrocarbon surfactants are used in the PTFE dispersions (Feldstein; [0047]).
Feldstein does not explicitly teach wherein said dispersion contains a cationic siloxane based surfactant made without fluorosurfactant or fluorine-based materials (claims 5 and 20), or wherein said dispersion contains a non-ionic hydrocarbon surfactant made without fluorosurfactant or fluorine-based materials and a cationic siloxane based surfactant made without fluorosurfactant or fluorine-based materials (claim 6).
With respect to the difference, Taira teaches a method for producing an aqueous dispersion of purified polytetrafluoroethylene using a hydrocarbon surfactant, wherein in one embodiment the composition is substantially free from a compound represented by Formula (3) below, preferably in amounts of 1000ppb or less, more preferably 25 ppb or less:
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136
328
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(Taira; [0007-0009] and [0025-0026]).
The compounds of Formula (3) include PFOS when q=1 and M2=H.
In another embodiment, the composition comprises a compound represented by Formula (4′) below in amount 1000 ppb or less with respect to polytetrafluoroethylene, and a nonionic surfactant in an amount of 1%/polytetrafluoroethylene or more:
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134
338
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(Taira; [0007-0009] and [0030-0031]).
Compounds of formula (4’) include PFOA when p=1 and M1=H.
The composition in the form of an aqueous dispersion, wherein coagulation is obtained using a hydrocarbon surfactant (Taira; [0036], [0144] and [0159]). The hydrocarbon surfactant may be cationic or nonionic, wherein nonionic surfactants include, by means of example only, polyoxyethylene alkyl ether (i.e., non-ionic hydrocarbon surfactant made without fluorosurfactant or fluorine-based materials as claimed) (Taira; [0242-0243] and [0247]).
Cationic surfactants have a positively charged hydrophilic part such as alkylated ammonium halides (Taira; [0244]). Hydrocarbon surfactants include siloxane surfactants comprising a hydrophilic part, wherein hydrophilic parts include quaternary ammonium salts (Taira; [0263-0265]). Examples of siloxane surfactants include polydimethyl siloxane-grafted quaternary amines (i.e., a cationic siloxane based surfactant made without fluorosurfactant or fluorine-based materials) (Taira; [0266]).
Taira is analogous art as it teaches dispersions of PTFE particles which may comprise nonionic hydrocarbon surfactants or cationic siloxane surfactants, and which are substantially free from PTOS and PTOA.
In light of the disclosure of Taira of the equivalence and interchangeability of using nonionic hydrocarbon surfactants as disclosed in Feldstein, with cationic siloxane-based surfactants as presently claimed, it would therefore been obvious to one of ordinary skill in the art to use cationic siloxane-based surfactants as the hydrocarbon surfactant in Feldstein, in order to provide a plating solutions and aqueous bath comprising an PTFE aqueous dispersion which is substantially free from PFOA and PFOS, and thereby arrive claimed invention.
Further, it would have been obvious to one of ordinary skill in the art to use a mixture of the nonionic hydrocarbon surfactant and cationic siloxane-based surfactant in the PTFE dispersions of Feldstein in view of Taira because the combination of known substances for the same purpose has been held to have been prima facie obvious. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerhoevn, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rejections using these references would be cumulative to the above rejections.
Chiba, US 6,237,943 B1, discloses electroless plating solutions as claimed, such as the plating solution of Example 1 comprising nickel sulfate (metal salt), sodium hypophosphite monohydrate (reducing agent), malic, malonic and adipic acid (complexing agents), surfactants, thiourea (stabilizing agent), and PTFE particles (col. 11, lines 7-20).
Saiki et al, WO 2004024985 A1 (see provided English language translation for citations), discloses two-component electroless plating baths, wherein the second bath is a plating solution as claimed in that in contains nickel sulfate (metal salt), cobalt acetate (metal salt), lactic acid (complexing agent), sodium hypophosphite (reducing agent), glycine (complexing agent), PTFE, a oxidized phosphor stabilizing agent, Triton x-100 (a nonionic hydrocarbon surfactant) and a cationic surfactant (page 6, lines 19-29; page 6, line 55-page 7, line 4; page 7, lines 30-39).
Hayashi et al, JP 2004060050A (see provided English language translation for citations), discloses an electroless composite plating bath as claimed comprising nickel sulfate hexahydrate (metal salt), sodium hypophosphite monohydrate (reducing agent), malic, lactic and succinic acid (complexing agents), lead nitrate (stabilizing agent), a surfactant, and PTFE particles (page 6, lines 21-36).
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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