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 .
The amendment of July 30, 2026 has been received and entered. With the entry of the amendment, claims 2 and 12 are canceled, claims 17-18 are withdrawn, and claims 1, 3-11, 13-16 and 19 are pending for examination.
Please Note: In future amendments claims 17-18 should be provided with the proper status identifier of “Withdrawn”.
Election/Restrictions
Applicant’s election without traverse of the species of the compound of Formula 1 where m=3, n=3, and R1 and R2 are imidazole in the reply filed on April 9, 2026 is acknowledged.
Claims 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 9, 2026.
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 8, 15 and 19 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 8 refers to features of the oxidizing agent for the solid metal piece, however, it is not clarified that the solid metal piece is used, and thus it is unclear what is required if the solid metal piece not used. For the purpose of examination, the claim is treated as requiring use of the solid metal piece, but applicant should clarify what is intended, without adding new matter. After the July 30, 2026 amendment to depend from claim 1, there is still the problem that two options of metal ion source are provided in claim 1, and it is unclear as worded that the solid metal piece is required to be used. Therefore, the claim remains rejected.
Claim 15, line 3, “method step (B)” is confusing and indefinite as the parent claim no longer has a “method step (B)”. For the purpose of examination, it is understood that after immersion as in claim 1 is referred to, but applicant should clarify what is intended, without adding new matter.
Claim 15, last line, “method step (A)” is confusing and indefinite as the parent claim no longer has a “method step (A)”. For the purpose of examination, it is understood that providing the material to the deposition composition in claim 1 is referred to, but applicant should clarify what is intended, without adding new matter.
Claim 19 is further rejected as dependent on claim 15 and not curing its defects.
The rejection of claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn due to the amendment of July 30, 2026 canceling claim 12.
Claim Objections
The rejection of claims 2 and 5 because of the informalities is withdrawn due to the removal of objected to subject matter in the amendment of July 30, 2026
Claim Rejections - 35 USC § 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 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, 3-11, 3-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Chevalier et al (US 6251249) in view of Brunner et al (US 2019/0144667), Japan 02-290977 (hereinafter ‘977) and Alpaugh et al (US 4152467).
Claims 1, 3-6, 8: Chevalier provides a method of electroless deposition of a metal or metal alloy on a metal surface of a substrate (note the abstract, column 6, lines 20-30, claims 9, 17), where an aqueous deposition composition is provided and the substrate is immersed in the composition, which contacts the substrate with the composition, which by the electroless deposition deposits the metal or metal alloy on the surface of the substrate (note claims 9, 10, 17, column 8, lines 20-30). The composition comprises water (aqueous) (note column 4, lines 60-65, claim 9) and a source of metal ions to be deposited as metal on the metal surface of the substrate (note claim 9, column 4, lines 5-65). The metal to be deposited can be different than the metal or metal alloy of the metal surface of the substrate (note column 8, lines 20-35, for example). It is indicated that at least one metal supplying compound can be provided, so it is understood that optionally, from the choices of materials there can also be a source of alloying metal ions (note claim 9). The composition can also contain additives such as organonitrogen compounds, substituted urea type compounds and heterocyclic compounds, for example, where the amount used can vary (note column 6, line 65 to column 7, line 20), with an example of additive amount of 0.5-10 g/l (note column 7, lines 45-60). The pH of the composition can be 0-12 (note column 7, lines 1-17), and it would have been obvious to optimize from this range, giving an alkaline composition as claimed in claim 1, and in the pH range of claim 5. Note 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
(A) As to the additive specifically being a compound as in Formula I of claim 1, and more specifically, meeting the requirements of claims 3-4 and 6, such that, for example, m=3, n=3, and R1 and R2 are imidazole, the use of substituted type urea compounds, etc. are noted by Chevalier as discussed above, but the specific compounds are not limited.
However, Brunner describes the use of urea compounds for plating bath compositions for metal or metal alloy deposition (note 0001), where Brunner forms a polymer using units of a formula A1 and a formula D, for example (note 0017, 0023). Formula A1 as described can correspond to the claimed Formula 1 where m and n =3 and R1 and R2 are imidazole (note X is preferably an imidazole, 0019, and R1 and R2 can be (CH2)b, where b can be 3 (note 0020), also note monomer for use described a 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea (note 0039,0089-0091, where this is used in the present application, and would meet the requirements of m and n =3 and R1 and R2 are imidazole)). It is indicated that the monomer is reacted to form the claimed polymer (note 0029, 0089-0091, where the formed polymer can be used without any further purification (note 0042) and would be used in a plating bath with a source of metal ions and the polymer (note 0058), where the bath is aqueous (note 0061)). Since the polymer is formed by reacting components including that of claimed Formula 1 and can be used without further purification, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that at least some amount of unreacted Formula I would be predictably and acceptably present in the plating bath. It is further noted that Formula I (1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea) would also from its structure be an organonitrogen compound and a heterocyclic compound as well as a substituted urea type compound.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chevalier to use, in the composition, a functionalized urea derivative as in Formula I as claimed where m and n are 3 and R1 and R2 are imidazole (as in the form of 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea) as suggested by Brunner with an expectation of predictably effective and efficient results, since Chevalier indicates that the electroless composition can contain additives such as a substituted urea type compound, an organonitrogen compound and a heterocyclic compound, and Brunner would indicte that in the metal plating art it is known that a compound of 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea would be a known substituted urea compound that is understood to be acceptably present in a plating composition and would provide both a substituted urea compound and also a described organonitrogen compound and a heterocyclic compound. This would provide the use of Formula I as desired by claims 1, 3, 4 and 6. Furthermore, as to the amount of the additive, it would have been obvious to optimize the amount used, as it is indicated by Chevalier that the amount can vary and an exemplary amount can be 0.5 to 10 g/L (so up to 1 wt% of the composition). Note MPEP 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
(B) Further as to providing the source of the metal ions as a solid metal piece which is in contact with the deposition composition, where the solid metal piece is oxidized by an oxidizing agent dissolved in the composition to enable an oxidation process, resulting in a release of metal ions into the composition, where the oxidizing agent is oxygen (note claims 1, 8), Chevalier provides using precious metal/silver alkanesulfonate, etc. in the composition, where the alkanesulfonate, etc. can be produced in situ, where salt/ions of the silver are provided and converted to alkanesulfonate, etc. in the solution (note column 4, lines 5-40).
‘977 indicates that metal (example copper, but not limited to copper) can be provided for a plating solution by using solid metal of copper (rather than salt such as copper sulfate) in the plating solution, where by providing an oxidizing atmosphere in the plating solution, the copper can be dissolved giving copper ions, where the oxidizing atmosphere is provided by introducing oxygen gas in to the plating solution, such as by blowing air/O2 gas into the plating solution (note figures 1, 3, pages 1-3, translation).
Alpaugh describes how dissolved oxygen can be provided into a plating solution be feeding/introducing oxygen gas or air into the plating solution (note figure 1, column 3, lines 60-68, column 6, lines 60-68, claims 1, 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chevalier in view of Brunner to provide the source of metal ions as a solid metal piece which is in contact with the deposition composition, where the solid metal piece is oxidized by an oxidizing agent dissolved in the composition to enable an oxidation process, resulting in a release of metal ions into the composition, where the oxidizing agent is oxygen as suggested by ‘977 and Alpaugh with an expectation of predictably acceptable results, since Chevalier indicates that the desired metal compound such as silver alkanesulfonate, etc. to be used in the plating solution can be produced in situ, where salt/ions of the silver are provided and converted to alkanesulfonate, etc. in the solution, and ‘977 indicates that a known way to provide metal ions into a plating solution is to provide a solid metal piece into the plating solution and oxidizing with an oxidizing agent of oxygen provided into the plating solution, where the providing of the oxygen is understood to dissolve at least some oxygen in the present composition, with an expectation of predictably acceptably results, since the oxygen would be introduced into the aqueous bath, and Alpaugh describes how dissolved oxygen can be provided in a plating solution by feeding oxygen gas or air into the solution.
Claim 7: As to the specific amount of the Formula 1 material, it would have been obvious to optimize and have predictably acceptable results in the range of 2-15 wt% as well. Note MPEP 2144.05(II)(A), as discussed for claim 1 above.
Claim 9: As to the source of metal ions coming specifically from simply silver (such as a solid piece of silver), this would be suggested by Chevalier in view of Brunner, ‘977 and Alpaugh as discussed for claims 1, 8 above.
Claim 10:the source of metal ions can be such as to provide a metal concentration of 1-150 g/L, for example (note column 4, lines 5-68 of Chevalier), and it would have been obvious to optimize from this range to provide the optimum amount and a corresponding amount of the source, which would be in the claimed range (note "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claim 11: in Chevalier, the composition does not have to contain a reducing agent (can be an immersion plating solution, for example) (note the abstract, column 8—Example 1, 2).
Claim 13: In Chevalier, the substrate can comprise metals or metal alloys such as copper, copper alloys, nickel, nickel alloys, zinc, zinc alloys, tin, tin alloys, etc. (note column 6, lines 25-30).
Claim 14: In Chevalier, the metal ions to be deposited can be silver ions (note column 4, lines 5-20 and 50-55).
Claim 16: In Chevalier, it is understood that there can be at least one source of alloying metal ions (since there can be two or more metal sources) (note claim 9, column 4, lines 5-20). Brunner also indicates the conventionally of plating one or more than one metal (giving an alloy) (note 0058), further suggesting that an alloy would be conventionally plated using an additional source of alloying metal ions in the plating composition.
Claims 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Chevalier in view of Brunner, ‘977 and Alpaugh as applied to claims 1, 3-11, 13-14 and 16 above, and further in view of CN 101413118 (hereinafter ‘118).
Claims 15, 19: as to recycling the composition after step (B)(immersion), with the steps of increasing the temperature of the composition, filtering the temperature increased composition to obtain a filtered composition, and adding a source of metal ions and reapplying the filtered composition to method step (A) (the deposition composition),
‘118 describes how a plating solution (described for a nickel plating solution) can be recycled after use (previous plating, aging), where the process includes heating the plating solution/composition to evaporate water to concentrate, cool the heated solution, with further cooling to separate/precipitate by product salt, then filter to remove by product salt that has precipitated, then add water and plating raw material/plating material (that is, would include adding a source of metal ions as raw material, note adding of nickel sulfate in Example 1) so that the bath can be regenerated/reused and further plating continues (note pages 2, 3 including Examples 1, 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chevalier in view of Brunner, ‘977 and Alpaugh to provide a recycling process after use of the plating solution over time, including for plating as in step (B)/immersion with the steps of increasing the temperature of the composition, filtering the temperature increased composition to obtain a filtered composition, and adding a source of metal ions and reapplying the filtered composition to method step (A)/deposition composition as suggested by ‘118 with an expectation of providing an efficient continuing use of the plating solution, because Chevalier teaches providing a plating process of providing a plating solution and contacting the substrate with the solution to deposit metal/metal alloy on the substate, and ‘118 indicates how it is conventional to need to regenerate plating baths after use, where the regeneration would include with the steps of increasing the temperature of the composition, filtering the temperature increased composition (as claimed it is not prevented to cool after the temperature heating and before filtering, since the solution still would be a “temperature increased” solution) to obtain a filtered composition, and adding a source of metal ions and reapplying the filtered composition to method step (A), which would allow for efficient longer use of the plating solution.
Holtzman et al (US 4816070) also teaches the use of urea compounds in a plating solution that is used for immersion plating (note column 1, lines 45-60).
Response to Arguments
Applicant's arguments filed July 30, 2026 have been fully considered.
Note the adjustment to the rejections due to the amendments to the claims.
As to the 35 USC 103 rejections, (1) as to the use of the solid piece of metal, it is argued that Chevalier does not provide this, where while it indicates metal ions can be provided in situ, it does not indicate dissolving the metals from a solid metal piece.
The Examiner notes this argument, however, the rejection is maintained. ‘977 and Alpaugh were cited as to this issue as discussed previously for claims 2 and 8. Since the alkanesulfonate, etc. can be formed in situ in from the metal material Chevalier (note column 4, lines 20-30), known methods of providing the metal ions for such reactions would be considered acceptable, and ‘977 and Alpaugh are cited as to how such metal ions can be provided.
(2) it is further argued that Chevalier indicates that substituted urea type compounds can be used as an additive, but one would not anticipate or understand that the compounds would include the claimed specific urea-imidazole compounds, as it only exemplifies ethylene urea, a much simpler compound than that claimed. Furthermore, as to looking to Brunner, starting from Chevalier, it is argued that this would not provide the claimed material, where use of polymers of A- and D- units described by Brunner, where the assumption by the Examiner that A monomers might still be in the plating solution is not supported by evidence or Brunner, where the goal of polymerization is to have polymers and any remaining monomer would be removed prior to use if present, and there is nothing in Brunner to suggest that excess A-unit would be present. It is also argued that even if ignoring the block of Brunner using –[A-D]n --, and Brunner not suggesting excess A present without D, Brunner’s A1 would not correspond to Applicant’s Formula 1, with a chemically different Formula A1, with no C3 or other C2-C6 divalent alkylene group bridging the imidazole on the left and the urea nitrogen atom to which the imidazole is directly bonded as shown in the Formula (A1), where R1 is not C3 or other C2-C6 divalent alkylene group, rather it is a monovalent substituent directly bonded to the nitrogen atom of the imidazole, not to the urea N atom, noting the definition of R1 as a “monovalent residues each selected independently from . . .” and thus while R2 might possibly be the same as in Applicant’s formula I, the compound in Brunner cannot have rendered obvious applicant’s claimed invention. It is argued that Brunner’s A2 is even more different. Furthermore, it is argued that Brunner describes the polymers for use in aqueous acidic plating bath for electrochemical deposition is used for filing recessed structures and build up of pillar bump structures and is completely different from the electroless process in an alkaline environment of the present invention. It is also argued that the additive claimed is for totally different reasons and has a different functionality.
The Examiner has reviewed these arguments, however, the rejections above area maintained. While Chevalier does not teach the specific urea compounds used include those claimed, Chevalier notes the use of organonitrogen compounds, substituted urea type compounds, and heterocyclic compounds (note column 7, lines 1-5). Brunner is cited as to the suggestion to use a urea compound that would meet the claimed requirements -- 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea (claimed formula I where m and n are 3 and R1 and R2 are imidazole). Brunner would indicate that in the metal plating art it is known that a compound of 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea would be a known substituted urea compound that is understood to be acceptably present in a plating composition and would provide both a substituted urea compound and also a described organonitrogen compound and a heterocyclic compound, and thus being a predictably acceptable material to use. While Chevalier may exemplify a simpler compound, it is not limited to such compounds. Note MPEP 2123, where it is noted that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” While there are many possible “substituted urea compounds”, etc., Brunner has been cited as to actual known urea compounds that would be expected to be acceptably provided in a plating solution. Furthermore, as to A monomers being in the plating solution of Brunner, the Examiner has cited her position that, since Brunner reacts monomers together to form the final polymer used, and specifically provides that the formed polymer can be used without further purification, it would be predictable that the monomer would be present. Applicant’s attorney argues that the skilled person would remove any monomers prior to use, and would not work with undefined amounts of A monomers. However, no evidence is provided of this. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). In fact, it is the Examiner’s position that Brunner would oppose this argument since it specifically provides that the formed polymer can be used without further purification, so excess monomer would not be removed. Further opposed to this position the Examiner notes, as a courtesy, Nagaoka et al (US 2007/0203313) describes how polymers formed by reacting monomers, and purification acts to remove unreacted monomer (note 0042-0043), and Ide et al (US 2011/0021742) describes forming polymers by reaction of monomers (note 0016), and where purification removes unreacted monomer (note 0034-0035), and therefore, it is further indicated how if purification not performed, it is expected that unreacted monomer present. It is expected that when using the plating solution of Brunner, along with the polymer of Brunner, monomer A would also be acceptably present, and still allow for plating, etc. Thus, the monomer A of Brunner of 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea, for example, would be known in the art as a monomer that is a substituted urea type compound, an organonitrogen compound and a heterocyclic compound that would be acceptably present in plating baths, giving a suggested monomer to use. Furthermore, as to Brunner’s monomer A1 not meeting the claimed requirements, the Examiner disagrees. Firstly, note that Brunner indicates the specific compound 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea as to meeting the formula A1’ structure (the monomer units of A1) (note 0035, 0039, 0089, 0091, where 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea used as the A monomer in the formed polymer). 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea corresponds to the exact formula of what is claimed, where m and n =3 and R1 and R2 are imidazoles). Note applicant’s own Example 1 where 1,3-Bis-(3-(1H-imidazol-1-yl)propyl)-urea is also used as the monomer. In Brunner R1 in A1, and R1’ in A1’meet the claimed requirements by being “divalent residues each selected independently from the group consisting of –(CH2)b – . . .” where b can be 2-12 (note 0020, 0026). Applicant refers to R1 as a monovalent substituent directly bonded to the quaternary nitrogen atom, however, this is not the case in Brunner. Applicant, citing 0019, is apparently referring to R and R’, which are used in a non-imidazole version of X, not R1 or R2. Furthermore, as to the plating bath material of Brunner being for aqueous acid plating baths for electrochemical metal or metal alloy deposition, etc., while Brunner describes such a bath, Chevalier indicates the similar use of baths that can have a wide range of pH, in acidic and alkaline, and use for immersion, electrodes and electrolytic deposition (note column 3, line 65-67, column 7, lines 1-10), and thus shows the expectation that such baths with such materials can be used in a wide range of pH, and as materials meeting the requirements understood to give the provided benefits. The urea compound does not have to be added for the same reason as used by applicant, and Chevalier gives reasons to provide the urea compound. Applicant argues that their materials give surprisingly better results. However, applicant has not shown criticality for the use of the specific compounds claimed over the ranges possible to use (criticality not shown commensurate in scope to the claims), where the in the disclosure various inventive examples are shown, and one comparative example with no additive, and this is not commensurate in scope to what is claimed, and even note that Chevalier describes using substituted urea compounds. Therefore, the rejections are maintained.
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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
