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 .
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Claims 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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.
Therefore, after the election, claims 17-18 are withdrawn and claims 1-16 and 19, as filed in the preliminary amendment of June 5, 2024, are pending for examination.
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, 9 and 11 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.
Claim 9, refers to the source of metal ions being manganese, silver, etc. However, it is unclear and indefinite as to whether this is intended that the source contain manganese, silver, etc. but can be a manganese salt, etc. or whether the source must be a material that is only manganese, silver, etc. For the purpose of examination, either is understood to meet the claim requirements, but applicant should clarify what is intended, without adding new matter.
Claim 11, it is not clarified what is required by anionic agent. Can this include the metal source? Or is it separate from and different from the metal source? For the purpose of examination, either is understood to meet the claim requirements, but applicant should clarify what is intended, without adding new matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected 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.
Claim 12 has providing a composition as in claim 1 and contacting the substrate with the composition such that the metal or metal alloy is deposited on the metal surface of the metal substrate in an electroless way. However, all of this would be required by parent claim 1 as now worded, noting claim 1, lines 1-4.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Objections
Claims 2 and 5 are objected to because of the following informalities: In claim 2, sections (ii) and (iii) should apparently be (i) and (ii), respectively, as the earlier (i) was deleted. In claim 2, line 9, “dissolved the aqueous” should be “dissolved in the aqueous” for proper grammar. In claim 5, line 2, the second period after “13” should be removed for correct grammar. Appropriate correction is required.
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, 3-7, 9-14 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).
Claims 1, 3-6, 12: 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).
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).”
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: in Chevalier the source of ions can be silver (note column 4, lines 5-30).
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), 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 2, 8 and optionally claim 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chevalier in view of Brunner as applied to claims 1, 3-7, 9-14 and 16 above, and further in view of Japan 02-290977 (hereinafter ‘977) and Alpaugh et al (US 4152467).
Claims 2, 8: 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, 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 soluton 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 9, if the source of metal ions has to come 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 2, 8 above.
Claims 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Chevalier in view of Brunner as applied to claims 1, 3-7, 9-14 and 16 above, and further in view of CN 101413118 (hereinafter ‘118).
Claims 15, 19: as to recycling the composition after step (B)(contacting with composition to deposit the metal/metal alloy), 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),
‘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 to provide a recycling process after use of the plating solution over time, including for plating as in step (B) 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) 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).
Conclusion
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
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