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 .
Continued Examination Under 37 CFR 1.114
The amendment filed July 1, 2026 has been received and entered. With the entry of the amendment, claims 3, 6 and 8-10 are canceled, claim 20 is withdrawn, and claims 1, 2, 4, 5, 7, 11-19, 21 and new claims 22-25 are pending for examination.
Election/Restrictions
Applicant’s election of Group I, claims 1-19 and 21, and Species A: (1) a nickel alloy (with the nickel electroless plating solution with Ni ions), and Species SET B: the doping element is (a) phosphorus in the reply filed on August 8, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Note that applicant stated that the election of Group I was with traverse, but no arguments were provided as to any supposed errors in the restriction requirement, so the election has been treated as without traverse. Further as to the species elections, no position was given as to traverse, and since there were no arguments were provided as to any supposed errors in the restriction requirement, the election has been treated as without traverse.
Claim is 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 8, 2025. It is noted that non-elected claims 3 and 8-10 were canceled by the amendment of March 10, 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, 2, 4, 5, 7, 11-19 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/219744 (hereinafter ‘744, used as provided with the IDS of June 7, 2024) in view of Japan 2008-041671 (hereinafter ‘671).
Claim 1, 11, 14: ‘744 provides a process for metallizing a surface of a mineral oxide (SiO2, Al2O3, as desired by claim 14) with a nickel or cobalt alloy (note 0015, 0018), where, since the underlying surface to be activated can be SiO2, Al2O3 on which the metal deposited (note 0058-0060), so the substrate as underlying substance that is plated would be SiO2 or Al2O3, or at the least, it would be understood to one of ordinary skill in the art before the effective filing date of the claimed invention that the substrate would predictably and acceptably be made of this material since it is the material of the underlying surface on which metallizing provided. The alloy can contain boron (first element) and also phosphorus (as the second element) (note 0017, “at least one” of boron, phosphorus, or tungsten, which would allow for boron and phosphorus, for example). The process includes activating the surface of the substrate with a noble metal activation solution, and thereafter contacting the surface of the substate with an electroless nickel or cobalt plating solution to form a layer of the nickel or cobalt alloy on the surface of the substrate, where the solution includes nickel or cobalt ions, a nickel or cobalt reducing agent comprising boron, and a compound comprising a doping element of phosphorus (note 0015, 0081, 0084-0086, and also 0131-0134, for example). The doping element can be 1-10 atomic % (note element % can be 1-10 atomic percent, where an element can be phosphorus) (note 0017). The compound comprising phosphorus as the doping element can be provided as hypophosphorous acid and its salts (note 0085-0086). It is indicated that it is desired to from conductive coating (lines) (note 0110, 0119).
(A) Additionally, as to the selection of a doping element of phosphorus while also using a reducing agent containing boron, giving a nickel alloy layer containing boron and phosphorus, where the amount of phosphorus is 1-10 atomic % of the nickel alloy, ‘671 describes wanting to provide a high conductivity material that does not peel, where a substrate (particles) are plated with a metal coating layer by electroless plating to provide plating a nickel alloy with both boron and phosphorus present (from using a boron compound and hypophosphite compound) (note the abstract, page 3, translation), where it is indicated to activate the surface of the substrate with noble metal activation solution (using Pd) (note page 3, translation, page 5, translation with Example 1). Then the substrate surface is contacted with an electroless nickel solution to form a layer of the nickel alloy on the surface of the substrate, where the solution comprises nickel ion, a nickel reducing agent comprising borane (such as dimethylamine borane) and a compound comprising phosphorus (reducing agent of sodium hypophosphite, for example, a hypophosphorous acid salt, or hypophosphorous acid) (note bottom of page 3, translation through page 5, translation, including example 1), where the resulting plated layer contains desirably 1-5 wt% phosphorus, for example (note page 3, translation, which would be inclusive of 1-10 atomic wt% from the materials given, and note examples 2 and 3 at page 6, translation and Table 1, where the amounts would provide for about 4.2 or 5.9 atomic % P, for example, in the claimed range). The amount of boron in the plating layer can be 0.1-2 wt%, for example (note page 3, translation). It is described that the thickness of the plated layer can be 0.005 microns to 1 micron (so 5 nm to 1000 nm) (note page 3, translation). It is described that the use of the alloy of Ni-B-P has advantages of nickel-boron and nickel-phosphorus alloy and also has desirable flexibility that contributes to high conductivity, excellent adhesion and compression resistance (note page 3, translation). It is indicated that the plating gives high conductivity (which would therefore give low resistivity) (note page 3, translation). It is indicated that the plating can uniformly form a layer (note page 4, translation).
Therefore, it specifically would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘744 to provide the electroless nickel plating solution so that the boron containing reducing agent and hypophosphorous acid/salt reducing agent/doping element compound are provided in amounts to give a Ni-B-P alloy, and where the P amount is in the range of 1-10 atomic% to help provide a desirably conductive and adhesive plating as suggested by ‘671, since ‘744 indicates providing a conductive plating layer that can contain boron and phosphorus and indicates providing that a doping element that can be P can be provided in 1-10 atomic percent amount, and where the plating solution can contain boron containing reducing agent and hypophosphoruous acid/hypophosphite reducing agent, and desires to provide a conductive plating, and ‘744 indicates that a similar plating solution can be used to provide a Ni-B-P plating layer containing P within the 1-10 atomic % range and also B, and where by providing this amount of P a desirably conductive and adhesive plating can be formed.
(B) As to the thickness of the nickel or cobalt alloy layer of less than 50 nm (claim 1) or less than 10 nm (claim 11), ‘744 provides that the contact with the nickel or cobalt plating solution is carried out for a sufficient time to provide a nickel or cobalt alloy layer having a thickness of 5-100 nm, for example (note 0083), and ‘671 also notes a range of 5-1000 nm (0.005-1 microns) (note page 3, translation) and it would have been obvious to optimize from this range, giving a value in the claimed range of claims 1 and 11, such as under 10 nm. 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).
(C) As to the resistivity of less than 0.1 ohm-cm at the desired thickness of less than 50 nm (claim 1) or less than 55 µohm-cm at less than 10 nm (claim 11), ‘744 provides a plating solution with the materials claimed, and the doping agent in the claimed range as discussed above, and would be optimized to have a thickness in the claimed range. Further (as discussed for claim 4 below), it would be suggested to have the nickel or cobalt ions in the concentration of 10-2 M-1 M, the phosphorous compound in the 400-600 mM amount (as discussed for claim 5 below), the phosphorus from the materials claimed (as discussed for claims 6-7 below), the reducing agent of dimethylaminoborane (as discussed for claim 13 below), where the amount of reducing agent can be 450-500 mM (note 0150) (in the range described for claim 21) and with a polyamine in an amount suggested to be in the claimed range (as discussed for claim 18 below). As well, ‘671 indicates using an amount of 0.01-100 g/l of hypophosphorous acid (note page 4, translation, which would give about 1.5 to 1516 mmol of phosphorous acid, overlapping the claimed range of claim 5, which would be selected to be optimized from to give the desired amount of P in the plating). Therefore, it would be understood that a layer of the same thickness using a plating solution the same as that claimed would be suggested to be used, and this would be understood to give the same metal layer as provided by applicant, with the same resistivity amount claimed. Note 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Note that ‘744 also notes that layers of equal or higher conductivity to the prior art can be formed (note 0119).
(D) Furthermore, as to the nickel or cobalt alloy layer not exhibiting any pinholes or voids, ‘744 indicates the material can be applied without material voids (which would include pinholes) (note 0164). Additionally, as discussed above, the same composition as claimed is deposited to the same thickness, so the same lack of pinholes or voids would be expected.
Claim 2: as to the molar ratio between boron and phosphorus in the plating solution can be 1:0-10:1, in ‘744 an example is given of using dimethylaminoborane (boron providing material) in an amount of 450-500 mM and hypophosphorous acid (phosphorus providing material) in an amount of 10-100 mg/l (note 0150), but at the same time, it is also indicated that the element amount so boron and phosphorus can be 1-10 atomic% (note 0152, 0017), and given these possible values it would have been obvious to one of ordinary skill in the art to optimize the amount of each, giving results of the ratio in the claimed range. ‘671 would also indicate ranges of amounts for boron and phosphorus compounds in the plating solution to be optimized from (note page 4, translation). "[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 4: as to the nickel or cobalt ion concentration, ‘744 indicates a range of 10-3 to 1 M, overlapping the claimed range (note 0081) (where 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)), and, as well, gives an example of nickel ions of 100-200 mM (in the claimed range) (note 0149).
Claim 5: the total amount of reducing agents can be 10-6 to 1M (note 0081), and based on the amount of dimethylaminoborane and phosphorus reducing agent used (note examples of claim 2 above), the amount would be optimized, giving a value in the claimed range. As well, ‘671 indicates using an amount of 0.01-100 g/l of hypophosphorous acid (note page 4, translation, which would give about 1.5 to 1516 mmol of phosphorous acid, overlapping the claimed range of claim 5, which would be selected to be optimized from to give the desired amount of P in the plating). "[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: ‘744 indicates phosphorus can be provided from hypophosphorus acid or a salt thereof (note 0085, 0015, 0017). ’671 notes how sodium hypophosphite (salt of hypophosphorous acid), etc. can be used (note page 4, translation).
Claim 12: ‘744 provides that the boron reducing agent can be provided in sufficient quantity so that boron represents between 1-10 at% in the nickel or cobalt alloy, with an example of 6 at% (note 0017). Also note the amounts given for ‘671 (note page 3, translation), further suggesting to optimize the amount giving values in the claimed range.
Claim 13: in ‘744 the nickel or cobalt ion reducing agent can be dimethylaminoborane (note 0085-0086). Also note ‘671 also teaches this at page 4, translation (with dimethylamine borane = dimethylaminoborane).
Claim 15: in ‘744, a noble metal contained in the activation solution is palladium (note 0115). ‘671 also notes this at Example 1, page 5, translation.
Claim 16: in ‘744, the activation solution comprises a solvent, a palladium complex and an organo-silane compound (note 0162, 0064, --66-0067, 0075).
Claim 17: in ‘744, the electroless nickel or cobalt plating solution comprises a pH adjusting agent for adjusting the pH to 6-11 (note 0088). ‘671 also indicates adjusting the pH to within this range (note Example 1, page 5, translation).
Claim 18: in ‘744, the electroless nickel or cobalt plating solution comprises a polyamine, in an amount in the range of 5-1000 ppm (note 0015, and for example, 6 ppm of the polyamine dipropylenetramine at 0170, 0094, and also note 0131 indicating 1-100 mg/l, and 0137 noting 0.5 to 100 ppm, giving overlapping ranges from which it would have been obvious to optimize giving a value in the claimed range, as well).
Claim 19: in ‘744, the nickel or cobalt alloy layer formed on the surface of the substrate can be rapid thermal annealed (note 0096, with times and temperatures overlapping that claimed of 200-400 degrees C, and 1-30 minutes, and it would have been obvious to optimize from this range giving a value in the claimed range).
Claim 21: in ‘744 in view of ‘671, the features of claim 21 are taught or suggested as discussed for claims 1 and 18 above, where as to the electroless nickel or cobalt solution “consisting of” the nickel or cobalt ions, the nickel or cobalt ion reducing agent comprising boron and a compound comprising a doping element of phosphorus, and polyethyleneimine, claim 1 of ‘744 lists these materials as the only required ones where the listed polyamine can be polyethyleneimine (as noted in 0088), and as to balance water, ‘744 notes using water to provide the final volume of solution (note 0170), so the solution can be consisting of these materials. As to the amount of nickel or cobalt ions, ‘744 indicates a range of 10-3 to 1 M, overlapping the claimed range (note 0081) (where 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)), and, as well, gives an example of nickel ions of 100-200 mM (in the claimed range) (note 0149). As to the amount of boron containing reducing agent, in ‘744 the amount of reducing agent can be 450-500 mM (note 0150), in the range claimed. As to the amount of phosphorus compound, in ‘744 the total amount of reducing agents can be 10-6 to 1M (note 0081), and based on the amount of dimethylaminoborane and phosphorus reducing agent used (note examples of claim 2 above), the amount would be optimized, giving a value in the claimed range, and also note the suggesting as to the amount of phosphorus compound from ‘671 as discussed for claim 5 above. "[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). As to the amount of polyethyleneimine (polyamine), in ‘744 it can be 1-100 mg/l (note 0131), overlapping the claimed range, and would be optimized giving a value in the claimed range as discussed above. As to the doping element amount, thickness, resistivity, and the alloy layer does not exhibit any pinholes or voids, this is suggested as discussed for claim 1 above.
Claims 22-25, as to the amount of boron in the alloy, amounts in the claimed range would be suggested from ‘671, which notes using 0.1-2 wt% of B (note page 3, translation), where examples would include example 3, at page 6, translation and Table 1, where the amount of B (indicated as 0.5 wt%) would provide for about 2.6 atomic percent B, all in the claimed ranges of claims 22-25, and as well, it also would have been obvious to optimize from the taught range, giving values in the claimed range.
Claims 1, 2, 4, 5, 7, 11-19 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Mevellec et al (US 2014/0087560) in view of EITHER Itoh et al (US 5897965) OR Japan 2008-041671 (hereinafter ‘671)
Claim 1, 11, 14: Mevellec provides a process for metallizing a surface of a mineral oxide (SiO2, as desired by claim 14) with a nickel or cobalt alloy (note 0030,0155, claim 6, 0096), where, since the underlying surface to be activated can be SiO2 (insulating layer) on which the metal deposited (note 0030, claim 1), so the substrate as underlying substance that is plated would be SiO2 and as well at 0096 it is described to use an insulating “substrate” of SiO2, or at the least, it would be understood to one of ordinary skill in the art before the effective filing date of the claimed invention that the substrate would predictably and acceptably be made of this material as the underlying surface on which metallizing provided. The alloy can contain boron (first element) (note 0155-0160 with use of boron based reducing agent) and it is also noted that phosphorus based reducing agents can be provided along with the boron based reducing agents (as 0031-0032, “at least one” reducing agent, and 0077-0079). The process includes activating the surface of the substrate with a noble metal activation solution (note 0099-0101, 0145-0154), and thereafter contacting the surface of the substate with an electroless nickel or cobalt plating solution to form a nickel or cobalt alloy layer, where the solution includes nickel or cobalt ions, a nickel or cobalt reducing agent comprising boron (note 0157-0161, 0031-0035, where the metal salt would give ions), and a compound comprising phosphorus (from additional reducing agent with phosphorus (note 0033, 0077-0078). As to the phosphorous compound, Mevellec suggests using hypophosphorous acid and its salts (note 0078)
(A) As to the contact to give an alloy layer with a thickness of less than 50 nm (claim 1) or 10 nm or less (claim 11), Mevellec suggests contact to get a thickness of at least 6 nm (note 0031, 0036), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. 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). It would further have been obvious to carry out the contact with plating with the solution to obtain the desired thickness over time.
(B) As to the specific use of an electroless nickel plating solution with a combination of boron and phosphorus and the amounts of the doping material to provide,
Using Itoh: Itoh indicates how electroless plating solutions for nickel, for example, can be provided to deposit coatings with nickel, 0.5-3 wt% phosphorus and, 0.05-2 wt% of boron (note column 2, lines 50-60 and column 3, lines 1-20), where the boron source and phosphorous sources would be from boron and phosphorus containing reducing agents, respectively (note column 3, lines 1-20). It is described that a specific plating layer can have nickel 98.2 wt%, P of 1.67 wt% and B of 0.13 wt% (note column 5, lines 30-50, where when converted to atomic % would give about 3 atomic % P, in the claimed range). It is indicated that base materials to be plated are not particularly limited (note column 4, lines 10-15). It is noted that the plated coatings have benefits of high impact strength/toughness and high hardness and can be uniformly formed at a high rate (column 1, lines 35-40).
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 Mevellec to specifically use a plating solution to deposit nickel and also have boron and phosphorous reducing agent compounds in the plating solution to provide boron and phosphorus as alloy material in the deposited nickel as suggested by Itoh with an expectation of providing benefits of a coating with high impact strength/toughness and high hardness and which can be uniformly formed at a high rate, since Mevellec is depositing a plating that can be nickel based from a solution that can have both boron and phosphorus based reducing agents, where Itoh indicates that an electroless plating solution with nickel source, and both boron and phosphorous based reducing agents can be used to deposit a nickel alloy with nickel, boron and phosphorus in the plating, and where the amount of boron and phosphorus in the plating can be 0.5-3 wt% phosphorus and, 0.05-2 wt% of boron, where this gives the benefits noted above. Furthermore, as to the amount of phosphorus, for example, Itoh exemplifies a plating with about 3 atomic % P as noted above, as well as B and Ni, giving a suggested amount of P to use in the claimed range. And furthermore, it would have been obvious to optimize from the ranges given, which would result in an atomic % in the claimed range. "[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).
Using ‘671: ‘671 describes wanting to provide a high conductivity material that does not peel, where a substrate (particles) are plated with a metal coating layer by electroless plating to provide plating a nickel alloy with both boron and phosphorus present (from using a boron compound and hypophosphite compound) (note the abstract, page 3, translation), where it is indicated to activate the surface of the substrate with noble metal activation solution (using Pd) (note page 3, translation, page 5, translation with Example 1). Then the substrate surface is contacted with an electroless nickel solution to form a layer of the nickel alloy on the surface of the substrate, where the solution comprises nickel ion, a nickel reducing agent comprising borane (such as dimethylamine borane) and a compound comprising phosphorus (reducing agent of sodium hypophosphite, for example, a hypophosphorous acid salt, or hypophosphorous acid) (note bottom of page 3, translation through page 5, translation, including example 1), where the resulting plated layer contains desirably 1-5 wt% phosphorus, for example (note page 3, translation, which would be inclusive of 1-10 atomic wt% from the materials given, and note examples 2 and 3 at page 6, translation and Table 1, where the amounts would provide for about 4.2 or 5.9 atomic % P, for example, in the claimed range). The amount of boron in the plating layer can be 0.1-2 wt%, for example (note page 3, translation). It is described that the thickness of the plated layer can be 0.005 microns to 1 micron (so 5 nm to 1000 nm) (note page 3, translation). It is described that the use of the alloy of Ni-B-P has advantages of nickel-boron and nickel-phosphorus alloy and also has desirable flexibility that contributes to high conductivity, excellent adhesion and compression resistance (note page 3, translation). It is indicated that the plating gives high conductivity (which would therefore give low resistivity) (note page 3, translation). It is indicated that the plating can uniformly form a layer (note page 4, translation).
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 Mevellec to specifically use a plating solution to deposit nickel and also have boron and phosphorous reducing agent compounds in the plating solution to provide boron and phosphorus as alloy material in the deposited nickel as suggested by ‘671 with an expectation of providing benefits of a coating with high conductivity and high adhesion, since Mevellec is depositing a plating that can be nickel based from a solution that can have both boron and phosphorus based reducing agents, where ‘671 indicates that an electroless plating solution with nickel source, and both boron and phosphorous based reducing agents can be used to deposit a nickel alloy with nickel, boron and phosphorus in the plating, and where the amount of phosphorus in the plating can be 0.1-5 wt% phosphorus, where the plating gives the benefits noted above. Furthermore, as to the amount of phosphorus, for example, ‘671 exemplifies platings with P in the claimed range as noted above, as well as B and Ni, giving a suggested amount of P to use in the claimed range. And furthermore, it would have been obvious to optimize from the ranges given of ‘671 as well, which would result in an atomic % in the claimed range. "[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).
(C) As to the resistivity of less than 0.1 ohm-cm (claim 1) or less than 55 µohm-cm (claim 11), Mevellec notes it can be desired for coatings to have resistivity improved (note 0014), and Mevellec in view of EITHER Itoh OR ‘671 provides a plating solution with the materials claimed, and the doping agent in the claimed range as discussed above, and would be suggested to have a thickness in the claimed range. Further (as discussed for claim 4 below), it would be suggested to have the nickel ions to be in the claimed range, the phosphorous compound in the 400-600 mM amount (as discussed for claim 5 below), the phosphorus from the materials claimed (as discussed for claims 6-7 below), the reducing agent of dimethylaminoborane (as discussed for claim 13 below), where the amount of reducing agent can be 400-550 mM (note 0050 of Mevellec) (in the range described for claim 21) and with a polyamine in an amount suggested to be in the claimed range (as discussed for claim 18 below). Therefore, it would be understood that a layer of the same thickness using a plating solution the same as that claimed would be suggested to be used, and this would be understood to give the same metal layer as provided by applicant, with the same resistivity amount claimed. Note 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Note that ‘744 also notes that layers of equal or higher conductivity to the prior art can be formed (note 0119).
(D) Furthermore, as to the nickel or cobalt alloy layer not exhibiting any pinholes or voids, as discussed above, the same composition as claimed is deposited to the same thickness, so the same lack of pinholes or voids would be expected.
Claim 2: As to the molar ratio of boron to phosphorus in the plating solution, (a) when using Itoh, Itoh indicates ratios can be suitably selected depending on the compositions of the plating coatings (note column 3, lines 10-20). Therefore, it would be suggested to optimize the amount of each based on the desired amounts of each in the resulting coating, and the resulting optimization would lead to values in the claimed range. "[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). Similarly, (b) when using ‘671, it also indicates the amounts of the B and P compounds can be selected from given ranges that would be optimized (note page 4, translation) and it would be suggested to optimize the amount of each based on the desired amounts of each in the resulting coating, and the resulting optimization would lead to values in the claimed range. "[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 4: As to the amount of nickel ions, Mevellec suggests 10-3 M to 1 M (note 0032), overlapping the claimed range, with an example of 0.118 M (note 0157, in the claimed range), and at the least it would have been obvious to optimize from this range, giving a value in the claimed range. 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).
Claim 5: The amount of the phosphorus compound would be optimized as discussed for claim 2 above, which would give a value in the claimed range. Also note for ‘671, as well, ‘671 indicates using an amount of 0.01-100 g/l of hypophosphorous acid (note page 4, translation, which would give about 1.5 to 1516 mmol of phosphorous acid, overlapping the claimed range of claim 5, which would be selected to be optimized from to give the desired amount of P in the plating). "[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 phosphorous compound, Mevellec suggests using hypophosphorous acid and its salts (note 0078), and (a) when using Itoh, Itoh notes using the salt of sodium hypophosphite for example (note column 3, lines 5-10), giving suggested materials to use. (b) when using ‘671, it indicates that sodium hypophosphite, etc. can be used, note page 4, translation.
Claim 12: noting the suggested range of boron as discussed for claim 1 above, it would have been obvious to optimize the amount, giving a value in the claimed range. "[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). And note when using ‘671, it indicates a range of boron of 0.1 to 2 wt% (note page 3, translation) understood to at least overlap with the claimed atomic %, and would be optimized from.
Clam 13: Mevellec would suggest that the reducing agent is dimethylaminoborane (dimethylamineborane) (note 0079). (a) when using Itoh, Itoh would also indicate that such a reducing agent can be used (note column 3, lines 10-15). (b) when using ‘671, ‘671 would also note dimethylamine borane (dimethylaminoborane) can be used (note page 4, translation).
Claim 15: Mevellec indicates using palladium as the noble metal in the activation solution (note 0100-0101).
Claim 16: Mevellec indicates using a noble metal activation solution with solvent, Pd-complex and organosilane compound (note 0100-0101).
Claim 17: Mevellec indicates the plating solution can have a pH adjuster to provide a pH of 8.5-9.5, in the claimed range (note 0048, 0053).
Claim 18: Mevellec indicates the plating solution can contain polyamine of 15-100 mg/l (note 0052, 0068), which would give about 15-100 ppm, in the claimed range.
Claim 19: Mevellec indicates that there can be thermal annealing of the formed nickel alloy layer at 200-400 degrees C for 1-30 minutes, overlapping the claimed range (note 0088), which from optimization would give values in the claimed range, which is understood to give “rapid” thermal annealing from the time given. Itoh also notes similar annealing (note column 3, lines 55-68).
Claim 21: Mevellec in view of EITHER Itoh OR ‘671 provides the features of claim 21 as discussed for claim 1 above, where as to the electroless nickel or cobalt solution “consisting of” the nickel or cobalt ions, the nickel or cobalt ion reducing agent comprising boron and a compound comprising a doping element selected from phosphorus, and a polymer bearing amine (which can be polyethyleneimine), Mevellec would list these materials (note 0031-0035, 0060, 0066 the boron and the phosphorous compounds would be reducing agents as suggested by Itoh or ‘671), and notes an aqueous solution so balance water (note 0031, and describes using water to make the total volume of solution, note 0157), and other materials not required to be present (note 0031-0035). As to the amount of nickel ions, Mevellec indicates a range of 100-200 mM, in the claimed range (note 0049). As to the amount of reducing agent, the amount of reducing agent in Mevellec can be 450-500 mM (note 0050), in the range claimed. As to the amount of phosphorus compound, as discussed for claims 2, 5 above, the amount would be optimized, giving a value in the claimed range. "[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). As to the amount of polyethyleneimine (polyamine), in Mevellec it can be 15 -100 mg/l (note 0052), in the claimed range. As to the doping element amount, thickness, resistivity, and the alloy layer does not exhibit any pinholes or voids, this is suggested as discussed for claim 1 above.
Claims 22-25, as to the amount of boron in the alloy, (1) when using Itoh, amounts in the claimed range would be suggested from Itoh from the example of column 5, lines 30-50, where when the nickel 98.2 wt%, P of 1.67 wt% and B of 0.13 wt% converted to atomic percent, the B would be about 0.69 atomic %, in the range of claims 23-25, and further as to claim 22, since 0.05-2 wt% of B can b used (note column 2, lines 50-60 and column 3, lines 1-20), it further would have been obvious to optimize the specific amount of B provided, giving a value in the claimed range, and (2) when using ‘671, amounts in the claimed range would be suggested from ‘671, which notes using 0.1-2 wt% of B (note page 3, translation), where examples would include example 3, at page 6, translation and Table 1, where the amount of B (indicated as 0.5 wt%) would provide for about 2.6 atomic percent B, all in the claimed ranges of claims 22-25, and as well, it also would have been obvious to optimize from the taught range, giving values in the claimed range.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 5, 7, 11-19 and 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,190,283 (hereinafter ‘283) in view of EITHER Itoh et al (US 5897965) OR Japan 2008-041671 (hereinafter ‘671).
Claims 1, 11, 14: The claims of ‘283 provides a process for metallizing a surface of a mineral oxide (SiO2, as desired by present claim 14) with a nickel or cobalt based material (note claims 1, 6), where, since the underlying surface to be activated can be SiO2 (insulating layer) on which the metal deposited forming a layer (note claim 1, 6), so the substrate as underlying substance that is plated would be SiO2, or at the least, it would be understood to one of ordinary skill in the art before the effective filing date of the claimed invention that the substrate would predictably and acceptably be made of this material as the underlying surface on which metallizing provided. It is understood that the nickel or cobalt material can contain boron (first element) (note claims 1, 3 with use of borane based reducing agent) and it is also noted that phosphorus based reducing agents can be provided along with the boron based reducing agents (note claim 1, “at least one” reducing agent, and claim 3). The process includes activating the surface of the substrate with a noble metal (note claim 9), and thereafter contacting the surface of the substate with an electroless nickel or cobalt plating solution to form a layer, where the solution includes nickel or cobalt ions, a nickel or cobalt reducing agent comprising boron and can also contain a compound comprising phosphorus (from additional reducing agent with phosphorus, note claims 1, 3). As to providing the activating by contacting the substrate with a noble metal activation, when looking to the specification to see what is understood by activation (as indicated acceptable by MPEP 804), such treatment is indicated.
As to the specific use of an electroless nickel plating solution with a combination of boron and phosphorus and the amounts of the doping material to provide,
Using Itoh: Itoh indicates how electroless plating solutions for nickel, for example, can be provided to deposit coatings with nickel, 0.5-3 wt% phosphorus and, 0.05-2 wt% of boron (note column 2, lines 50-60 and column 3, lines 1-20), where the boron source and phosphorous sources would be from boron and phosphorus containing reducing agents, respectively (note column 3, lines 1-20). As to the phosphorous compound, Itoh notes using the salts of sodium hypophosphite (a salt of hypophosphorous acid) for example (note column 3, lines 5-10), giving suggested materials to use. It is described that a specific plating layer can have nickel 98.2 wt%, P of 1.67 wt% and B of 0.13 wt% (note column 5, lines 30-50, where when converted to atomic % would give about 3 atomic % P, in the claimed range). It is indicated that base materials to be plated are not particularly limited (note column 4, lines 10-15). It is indicated that base materials to be plated are not particularly limited (note column 4, lines 10-15). It is noted that the plated coatings have benefits of high impact strength/toughness and high hardness and can be uniformly formed at a high rate (column 1, lines 35-40).
Therefore, it would have been obvious to one of ordinary skill in the art to modify ‘83 to specifically use a plating solution to deposit nickel and also have boron and phosphorous reducing agent compounds such as sodium hypophosphite in the plating solution to provide boron and phosphorus as alloy material in the deposited nickel as suggested by Itoh with an expectation of providing benefits of a coating with high impact strength/toughness and high hardness and which can be uniformly formed at a high rate, since ‘283 is depositing a plating that can be nickel based from a solution that can have both boron and phosphorus based reducing agents, where Itoh indicates that an electroless plating solution with nickel source, and both boron and phosphorous based reducing agents can be used to deposit a nickel alloy with nickel, boron and phosphorus in the plating, and where the amount of boron and phosphorus in the plating can be 0.5-3 wt% phosphorus and, 0.05-2 wt% of boron, where this gives the benefits noted above, and the phosphorous compound can be sodium hypophosphite. Furthermore, as to the amount of phosphorus, for example, Itoh exemplifies a plating with about 3 atomic % P as noted above, as well as B and Ni, giving a suggested amount of P to use in the claimed range. And furthermore, it would have been obvious to optimize from the ranges given, which would result in an atomic % in the claimed range. "[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)”. As to the contact time to give a thickness of less that 50 nm (claim 1) or 10 nm or less (claim 11), ‘283 suggests contact to get a thickness of at least 6 nm (note claim 1), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. 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 resistivity and lack of pinholes or voids, it would be understood that a layer of the same thickness using a plating solution the same as that claimed would be suggested to be used, and this would be understood to give the same metal layer as provided by applicant, with the same resistivity amount claimed. Note 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Furthermore, as to the nickel or cobalt alloy layer not exhibiting any pinholes or voids, as discussed above, the same composition as claimed is deposited to the same thickness, so the same lack of pinholes or voids would be expected.
Claim 2: As to the molar ratio of boron to phosphorus in the plating solution, Itoh indicates ratios can be suitably selected depending on the compositions of the plating coatings (note column 3, lines 10-20). Therefore, it would be suggested to optimize the amount of each based on the desired amounts of each in the resulting coating, and the resulting optimization would lead to values in the claimed range. "[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 4: As to the amount of nickel ions, ‘283 suggests 10-3 M to 1 M (note claim 1), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. 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). Claim 5: The amount of the phosphorus compound would be optimized as discussed for claim 2 above, which would give a value in the claimed range. Claim 7: as to the phosphorous compound, Itoh notes using the salts of sodium hypophosphite for example (note column 3, lines 5-10), giving suggested materials to use. Claim 12: noting the suggested range of boron as discussed for claim 1 above, it would have been obvious to optimize the amount, giving a value in the claimed range. "[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). Clam 13: Itoh would indicate using a reducing agent of dimethylaminoborane (dimethylamineborane) (note column 3, lines 10-15). Claim 15: ‘283 indicates using palladium as the noble metal in the activation solution (note discussion for claim 1 above, and claim 9). Claim 16: when looking to the substrate to see what is meant by activation (as is acceptable as discussed for claim 1 above) indicates using a noble metal activation solution with solvent, Pd-complex and organosilane compound. Claim 17: ‘283 indicates the plating solution can have a pH adjuster to provide a pH of 8-12, overlapping the claimed range, and it would be obvious to optimize from this range, giving a value in the claimed range (note claim 8). Claim 18: ‘283 indicates the plating solution can contain polyamine of 5-250 mg/l (note claims 1, 4), which would give about 5 to 250 ppm, in the claimed range or at least obvious to optimize from. Claim 19: Itoh indicates annealing at 200-350 degrees C, for example, for a time of 30-120 minutes, which is understood to include “rapid” thermal annealing from the time given and overlap of ranges, which can be optimized (note column 3, lines 55-68). Claim 21: ‘283 in view of Itoh provides the features of claim 21 as discussed for claim 1 above, where as to the electroless nickel or cobalt solution “consisting of” the nickel or cobalt ions, the nickel or cobalt ion reducing agent comprising boron. a compound comprising a doping element selected from phosphorus and balance water, ‘283 would list these materials as the only required ones along with the addition of polymer bearing amine functions (which would include polyethyleneimine as claimed (note claims 1, 3, 4, the boron and the phosphorous compounds would be reducing agents, and aqueous solution so balance water). As to the amount of nickel ions, the amount of reducing agent, the amount of phosphorus compound, and the amount of polyethylene imine, this would be optimized from the ranges given in claim 1, etc. and as discussed for claim 5 above. The additional features are suggested as discussed for claim 1 above. Claims 22-25, the features of these claims would be suggested by Itoh as discussed in paragraph 10 above for claims 22-25.
Using ‘671: ‘671 describes wanting to provide a high conductivity material that does not peel, where a substrate (particles) are plated with a metal coating layer by electroless plating to provide plating a nickel alloy with both boron and phosphorus present (from using a boron compound and hypophosphite compound) (note the abstract, page 3, translation), where it is indicated to activate the surface of the substrate with noble metal activation solution (using Pd) (note page 3, translation, page 5, translation with Example 1). Then the substrate surface is contacted with an electroless nickel solution to form a layer of the nickel alloy on the surface of the substrate, where the solution comprises nickel ion, a nickel reducing agent comprising borane (such as dimethylamine borane) and a compound comprising phosphorus (reducing agent of sodium hypophosphite, for example, a hypophosphorous acid salt, or hypophosphorous acid) (note bottom of page 3, translation through page 5, translation, including example 1), where the resulting plated layer contains desirably 1-5 wt% phosphorus, for example (note page 3, translation, which would be inclusive of 1-10 atomic wt% from the materials given, and note examples 2 and 3 at page 6, translation and Table 1, where the amounts would provide for about 4.2 or 5.9 atomic % P, for example, in the claimed range). The amount of boron in the plating layer can be 0.1-2 wt%, for example (note page 3, translation). It is described that the thickness of the plated layer can be 0.005 microns to 1 micron (so 5 nm to 1000 nm) (note page 3, translation). It is described that the use of the alloy of Ni-B-P has advantages of nickel-boron and nickel-phosphorus alloy and also has desirable flexibility that contributes to high conductivity, excellent adhesion and compression resistance (note page 3, translation). It is indicated that the plating gives high conductivity (which would therefore give low resistivity) (note page 3, translation). It is indicated that the plating can uniformly form a layer (note page 4, translation).
Therefore, it would have been obvious to one of ordinary skill in the art to modify ‘83 to specifically use a plating solution to deposit nickel and also have boron and phosphorous reducing agent compounds such as sodium hypophosphite in the plating solution to provide boron and phosphorus as alloy material in the deposited nickel as suggested by ‘671 with an expectation of providing benefits of a coating with high conducitivity and adherence, since ‘283 is depositing a plating that can be nickel based from a solution that can have both boron and phosphorus based reducing agents, where ‘671 indicates that an electroless plating solution with nickel source, and both boron and phosphorous based reducing agents can be used to deposit a nickel alloy with nickel, boron and phosphorus in the plating, and where the amount of phosphorus in the plating can be in the claimed rnage, where this gives the benefits noted above, and the phosphorous compound can be sodium hypophosphite. Furthermore, as to the amount of phosphorus, for example, ‘671 exemplifies platings with P in the claimed range as noted above, as well as B and Ni, giving a suggested amount of P to use in the claimed range. And furthermore, it would have been obvious to optimize from the ranges given of ‘671 as well, which would result in an atomic % in the claimed range. "[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). As to the contact time to give a thickness of less that 50 nm (claim 1) or 10 nm or less (claim 11), ‘283 suggests contact to get a thickness of at least 6 nm (note claim 1), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. 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 resistivity and lack of pinholes or voids, it would be understood that a layer of the same thickness using a plating solution the same as that claimed would be suggested to be used, and this would be understood to give the same metal layer as provided by applicant, with the same resistivity amount claimed. Note 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Furthermore, as to the nickel or cobalt alloy layer not exhibiting any pinholes or voids, as discussed above, the same composition as claimed is deposited to the same thickness, so the same lack of pinholes or voids would be expected.
Claim 2: As to the molar ratio of boron to phosphorus in the plating solution, ‘671 it also indicates the amounts of the B and P compounds can be selected from given ranges that would be optimized (note page 4, translation) and it would be suggested to optimize the amount of each based on the desired amounts of each in the resulting coating, and the resulting optimization would lead to values in the claimed range. "[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 4: As to the amount of nickel ions, ‘283 suggests 10-3 M to 1 M (note claim 1), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. 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). Claim 5: ‘671 indicates using an amount of 0.01-100 g/l of hypophosphorous acid (note page 4, translation, which would give about 1.5 to 1516 mmol of phosphorous acid, overlapping the claimed range of claim 5, which would be selected to be optimized from to give the desired amount of P in the plating). "[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: ‘’671 notes how sodium hypophosphite, etc. can be used (note page 4, translation). Claim 12: Note the amounts given for ‘671 (note page 3, translation). Claim 13: note ‘671 also teaches the reducing agent at page 4, translation. Claim 15: ‘283 indicates using palladium as the noble metal in the activation solution (note discussion for claim 1 above, and claim 9). Claim 16: when looking to the substrate to see what is meant by activation (as is acceptable as discussed for claim 1 above) ‘283 indicates using a noble metal activation solution with solvent, Pd-complex and organosilane compound. Claim 17: ‘283 indicates the plating solution can have a pH adjuster to provide a pH of 8-12, overlapping the claimed range, and it would be obvious to optimize from this range, giving a value in the claimed range (note claim 8). Claim 18: ‘283 indicates the plating solution can contain polyamine of 5-250 mg/l (note claims 1, 4), which would give about 5 to 250 ppm, in the claimed range or at least obvious to optimize from. Claim 19: when looking to the specification to see what is covered by the method, rapid thermal annealing overlapping the conditions claimed is indicated by ‘283, and would be optimized, giving values in the claimed range. Claim 21: ‘283 in view of ‘671 provides the features of claim 21 as discussed for claim 1 above, where as to the electroless nickel or cobalt solution “consisting of” the nickel or cobalt ions, the nickel or cobalt ion reducing agent comprising boron, a compound comprising a doping element selected from phosphorus and balance water, ‘283 would list these materials as the only required ones along with the addition of polymer bearing amine functions (which would include polyethyleneimine as claimed) (note claims 1, 3, 4, the boron and the phosphorous compounds would be reducing agents, and aqueous solution so balance water). As to the amount of nickel ions, the amount of reducing agent, the amount of phosphorus compound, and the amount of polyethylene imine, this would be optimized from the ranges given in claim 1, etc. and as discussed for claim 5 above. The additional features are suggested as discussed for claim 1 above. Claims 22-25, the features of these claims would be suggested by ‘671 as discussed in paragraph 10 above for claims 22-25.
Chebiam et al (US 2003/0113576) notes how electroless plating with NiBP, NiWB, etc. can be provided, as well as also CoBP, CoWB, etc. (note 0034-0035). Lopatin et al (US 2005/0101130) notes how plating with Co and alloy materials of W, Re, B and P can be provided (note 0032-0033).
Response to Arguments
Applicant's arguments and declaration filed July 1, 2026 have been fully considered.
As to the 35 USC 103 rejections using ‘744 (Suhr) as the primary reference, applicant/the declaration argues that the combination of references would not suggest the claimed features, where applicant uses a mineral oxide substrate, and a barrier metal must be deposited and have a certain thickness, and that is why the Ni-B-P alloy as described and claimed is used to maximize the amount of conductive metal, while preventing electromigration and is substantially more conductive than traditional barrier metals and Ni-B alloys. It is argued that ‘744 does not provide the combination of Ni-B-P alloy, and ‘671 (Takechi) is used to cure the defects of ‘744, but applicant argues that one would not combine ‘671 with ‘744 because they are directed to different industries and are depositing alloys on different substrates, where ‘744 is directed to metallizing metal oxide, while ‘671 is coating a resin particle. It is argued that the metal oxide substrates are non-porous inorganic material, that provide a base for conductive material, and require bath chemistry compatible with this, and resins are organic polymer compounds that are highly porous and have different characteristics than metal oxide, and a metal alloy deposited onto a resin particle require the bath to be compatible with organic surfaces. It is also argued that resins are used for different purposes than mineral oxide substrates. It is argued that ‘671 is limited to coating a resin particle, which is of a large size and of a different surface shape than metallizing metal oxide and thus one would not combine ‘744 and ‘671.
The Examiner has reviewed the arguments and the July 1, 2026 declaration, however, the rejection above is maintained. The Declaration is in the form of opinion evidence, where as discussed in MPEP 716.01(III):
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).
Here, the matter sought to be established is that the various references cited should not be used in combination. The expert is an employee of the applicant. As to the presence/absence of factual support for the expert’s opinion, only opinions have been cited. Furthermore, the Examiner will discuss the strength of opposing evidence below. As to the teaching of ‘744, the Examiner notes that it is not limited to N-B alloys, where ‘744, provides that the alloy can contain boron and phosphorus (note 0017, where “at least one” of boron, phosphorus or tungsten is used, which allows for both boron and phosphorous to be used). ‘744 provides the desired Ni alloy coating on mineral oxide surfaces. ‘671 is cited as to further selecting both phosphorus as a doping agent and a reducing agent with boron to provide Ni-B-P alloys with amounts of P as claimed, and also amounts of B as claimed (noting claims 22-25) to give a desired plating, including with benefits of high conductivity, and adhesive plating. As to the combination of ‘744 and ‘671, while ‘744 describes metal oxide surfaces to be plated and ‘671 describes resin particles, both are still plating a Ni based alloy on the surfaces, where both describe catalyzing the surface before plating (note page 3, translation of ‘671 and 0015 of ‘744). Therefore, both would describe how an Ni alloy can be coated and the Ni alloy has desired components, with ‘671 describing benefits from the coating, including high conductivity. While applicant may describe benefits of using Ni-B-P alloys, ‘671 also describes benefits that would apply to ‘744 including high conductivity (note 0119 fo ‘744). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As to not looking to ‘671, while it is not coating mineral oxide surfaces, it would still have been obvious to look to other surfaces being plated to see what desirable nickel alloy coatings can be provided. It is argued in the declaration that mineral oxide and resin surfaces are so different that they would require different baths, etc., and resins are used for different purposes in the art, and that resin polymers are not compatible and cannot be used to metallize small, nanoscale features in mineral oxide substrates (note paragraphs 15-17 of the declaration). However, evidence opposing this is (a) Mevellec, for example, describes depositing a barrier layer based on nickel/cobalt (note 0025) and describes as discussed in the rejection above using Mevellec, activating a substrate and plating with nickel alloys, where Mevellec provides that the surface layer of the substrate can be mineral oxide such as SiO2, but also the surface can be various polymer (resin) materials (note 0096-0098). This shows how electroless nickel alloy plated layers can be equivalently plated over polymer/resin or mineral oxide with the same solution features. (b)Also note Chyan et al (US 2016/0040290) describing how electroless plating including nickel alloys can be generally provided on catalyzed surfaces of many types of substrates, including semiconductors, resins, other polymers and ceramics (note 0022, 0032). Similarly, Ito et al (US 2017/0067164) describes how electroless plating with nickel, etc. can be provided on surface of metal, plastics, ceramics, with examples of polymer resin, alumina, silica, etc., where the substrate can be pretreated with catalyst to help the electroless plating adhere (note 0002). Therefore, the opposing evidence shows the conventionality of providing a nickel alloy plating over a variety of surfaces including mineral oxide, and resin, that would be catalyzed allowing the plating, with no indication that a specific plating bath would differ based on the substrate. Mevellec would further indicate that the coating can be nanoscale with the thickness of at least 6 nm (note 0031, 0036). Further as to ‘671 providing large particles, while the surface used can have small features such as cavities, Mevellec would also provide this (note 0030), and ‘671 would still show how a surface can be plated with an alloy as claimed. Again, even though ‘671 is not plating the exact same substrate as in ‘744, it still shows a desirable nickel alloy to plate, and ‘744 is going to plate a nickel alloy, and ‘671 would demonstrate desirable nickel plating features to provide. As to the concentration range of ‘744 (note the declaration at paragraphs 23-24), since there is a broad teaching, it is included as taught. While ‘744 gives examples and describes using B with a small amount of P, the broad teaching of ‘744 would include using P in a range of 1-10 at%, note 0015, 0017, 0152, and 0131 where one or more of P and B can be used, and 0131 indicates broad total amounts of reducing agents. The Examples with smaller amounts do not obviate the broader teachings. Note MPEP 2123(II), “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)”. ‘671 is further cited as to ranges to chose. Therefore, considering the issues as noted by MPEP 716.01(III) as discussed above, the weight of all of these features, considering the opposing evidence would mean that the declaration does not overcome the rejection, and noting the reasoning above, applicant’s arguments do not overcome the rejection above.
Additionally, as to the combination of Mevellec with Itoh or ‘671, it is argued that as to the use of Itoh, it is directed to any substrate that uses the characteristics of the coatings, where these are strength, hardness and lubricating characteristics, but these are not relevant to the semiconductor industry, and the substrates described by Itoh are metal alloys and already conductive, so there would be no motivation to combine with Itoh. As to the use of ‘671, it is argued that ‘671 is directed to the different process of creating conductive coatings for organic resin particles and that there would be no motivation to combine.
The Examiner has reviewed the arguments and the July 1, 2026 declaration, however, the rejection above is maintained. The Declaration is in the form of opinion evidence, where as discussed in MPEP 716.01(III):
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).
Here, the matter sought to be established is that the various references cited should not be used in combination. The expert is an employee of the applicant. As to the presence/absence of factual support for the expert’s opinion, only opinions have been cited. Furthermore, the Examiner will discuss the strength of opposing evidence below. As to the combination with Itoh, it is argued that Itoh’s features, including impact strength, hardness, etc. would not be relevant to the semiconductor industry (noting the declaration at paragraphs 26-31), the Examiner disagrees with this opinion evidence. As opposing evidence, the Examiner notes Brunner et al (US 2015/0110965), which notes providing nickel plating baths that can be used for nickel barrier layers in semiconducting devices, and indicates that it is desirable to provide a high hardness plating (note 0001-0003). Therefore, it is understood that desirably hard coatings are relevant to the coatings of Mevellec. Furthermore, while Itoh describes plating a metal surface, it is not limited to this, and shows a plating solution that can be used. Itoh also specifically provides that “Base materials to be plated according to the present invention are not particularly limited. They may be any articles which can utilize the characteristics of the plated coatings of the present invention and may be, but are not limited to, machine parts composed of iron alloys . .” (note column 4, lines 10-20). Therefore, Itoh is not limited to iron/aluminum/conductive metal, but can be a wide variety of substrates, where Mevellec shows how the mineral oxides substrates would be known to be plated with nickel alloys. Again, as discussed above, Note MPEP 2123(II), “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)”. The Examiner has cited Itoh as showing a beneficial nickel alloy coatings that would have benefits that would also apply to Mevellec. Therefore, considering the issues as noted by MPEP 716.01(III) as discussed above, the weight of all of these features, considering the opposing evidence would mean that the declaration does not overcome the rejection, and noting the reasoning above, applicant’s arguments do not overcome the rejection above.
Furthermore, as to the combination of Mevellec with ‘671 (noting paragraphs 32-34 of the declaration), motivation would be provided to combine as with ‘744 and ‘671 as discussed above, where Mevellec specifically provides how polymer/resin surfaces can be plated as well as mineral oxide by the plating solution, and provides for how boron and phosphorus reducing agents can be used. Therefore, considering the issues as noted by MPEP 716.01(III) as discussed above, the weight of all of these features, considering the opposing evidence would mean that the declaration does not overcome the rejection, and noting the reasoning above, applicant’s arguments do not overcome the rejection above.
As to the obviousness double patenting rejection using ‘283, it is argued that the same arguments addressed to the Mevellec 35 USC 103 rejection apply. The Examiner notes these arguments, however, the same reasoning as discussed above with regard to the Mevellec 35 USC 103 rejection would apply, and therefore the rejection would be maintained for the same reasons.
New claims 22-25 are rejected as discussed in the rejections above.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
