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, see Remarks, filed 3/17/2026, with respect to the 35 U.S.C. 112(b) rejections have been fully considered and are persuasive. The rejections have been withdrawn. However, new grounds of rejection are entered in view of Applicant’s amendments.
Specification
The amendment filed 3/17/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the amendments introduce new matter at paragraphs [0010]-[0012]: “trivalent chromium conductive salts”, “trivalent chromium part 1”, “trivalent chromium makeup agent”, “trivalent chromium wetting agent”, “high-sulfur nickel additive”, “semi-bright nickel makeup agent”, “semi-bright nickel main brightener”, and “nickel-based wetting agent”. The specification as originally filed did not include these compositions, which were added by amendment after the original filing date. Accordingly, these are considered new matter because the application as originally filed did not contemplate including these broadly classified compositions in the amounts described for making an electroplating solution. See MPEP 608.04(a).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 6-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the following limitations: “trivalent chromium conductive salts with a concentration of 10 g/L to 20 g/L”, “trivalent chromium part 1 with a concentration of 150 mL/L to 350 mL/L”, “trivalent chromium makeup agent with a concentration of 10 mL/L to 25 mL/L”, and “trivalent chromium wetting agent with a concentration of 0.5 mL/L to 5 mL/L”. The specification as originally filed named specific branded chemical compositions. The claim now recites broadly classified compositions, which are broader than the original language naming individual species. However, the specification as originally filed does provide support for the broader recitation, or that the amounts used for the specific branded chemical composition species may be used for any generic composition. Accordingly, it is not clear to one of ordinary skill in the art that Applicant possessed the invention as currently claimed at the time the application was filed.
Claim 6 recites the following limitations: “high-sulfur nickel additive with a concentration of 2 mL/L to 4 mL/L”. The specification as originally filed named specific branded chemical compositions. The claim now recites broadly classified compositions, which are broader than the original language naming various species. However, the specification as originally filed does provide support for the broader recitation, or that the amounts used for the specific branded chemical composition species may be used for any generic composition. Accordingly, it is not clear to one of ordinary skill in the art that Applicant possessed the invention as currently claimed at the time the application was filed.
Claim 7 recites the following limitations: “semi-bright nickel makeup agent with a concentration of 5 mL/L to 10 mL/L”, “semi-bright nickel main brightener with a concentration of 1 mL/L to 2 mL/L”, and “nickel-based wetting agent” with a concentration of 1 mL/L to 5 mL/L”. The specification as originally filed named specific branded chemical compositions. The claim now recites broadly classified compositions, which are broader than the original language naming various species. However, the specification as originally filed does provide support for the broader recitation, or that the amounts used for the specific branded chemical composition species may be used for any generic composition. Accordingly, it is not clear to one of ordinary skill in the art that Applicant possessed the invention as currently claimed at the time the application was filed.
Dependent claims not addressed are rejected for containing new matter for the same reasons as claim 1 above.
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 1-4 and 6-15 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 recites “trivalent chromium part 1” and “trivalent chromium makeup agent”. It is not clear a person skilled in the art would readily be able to identify what these compositions are, nor does the specification adequately define or describe these compositions. Accordingly, the limitations are indefinite.
Claim 7 recites “semi-bright nickel makeup agent”. It is not clear a person skilled in the art would readily be able to identify what this composition is, nor does the specification adequately define or describe this composition. Accordingly, the limitation is indefinite. For purposes of examination, the tradename identified in the specification will be tentatively substituted. Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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