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 .
Status of Amendment
The amendment filed on 10 November 2025 fails to place the application in condition for allowance.
Claims 1-20 are currently pending.
Claims 1-4, 6-9, 11-16, and 19 are currently under examination.
Claims 5, 10, 17, and 20 are currently withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-4, 6-9, 11-16, 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Addressing now the "Wands" factors (MPEP 2164.01 (a)).
(A) The breadth of the claims:
The claims are drawn towards a method of gold plating on connecting fingers using a particular method of determining when the plating has reached conclusion via a loop on-off detection device.
(B) The nature of the invention:
The nature of the invention is drawn towards gold electroplating on circuit boards.
(C) The state of the prior art:
The most relevant prior art is deemed as follows:
Han (US 2004/0259354A1) discloses a detection method of determining when plating is concluded via placing two probes over the area being plated (#s 30 [0008]), performing electroplating until the time the electrodes complete the circuit through the plating layer ([0013], [0014]).
Rotzow (US 4,000,045) disclose providing a common electrical bus to plural contact fingers (#42) to enable deposition onto said fingers. (Abstract).
Takshi et al (US 2019/0017185 A1) discloses using probe pins (#s 66) to establish a plating bias between two conductive sections to plate a conductive bridge between them ([0076])
(D) The level of one of ordinary skill:
One of ordinary skill in the art would have an understanding with respect to the electrical characteristic of an electroplating process with respect to the biasing of a cathode being plated and an anode.
(E) The level of predictability in the art:
The level of predictability with respect to electroplating is deemed to be high so much as the cathode being biased is plated.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
The instant specification is particularly silent as to the specific type of “loop on-off detection device”. The instant specification does not provide detail as to the particular measurement being taken place to determine when the loop is conducted.
The particular device and method of measurement is particularly important with respect to an electroplating process. The claims require filling gaps between connecting fingers with a conductive medium as shown in instant Fig. 6 and described at [0133] of the as filed specification. The detection appears to detect the completion of an electrical circuit between the finger, plated layer, and conductive medium between the fingers. However, in order to enable electroplating on the fingers, the finger necessarily must be biased with respect to an anode or counter electrode, neither of which structures are disclosed within the as filed specification. Upon bias, all connecting fingers and conducive medium would be biased with respect to an anode as is inherent and required with an electroplating bias. Via application of a voltage, deposition of positively charged ions takes place on the cathode. Since the probe is necessarily in contact with the upper surface of the conductive medium, it too would be bias relative an anode and thus plated.
Therefore, because the instant specification is silent as to the particulars of the detection, it does not resolve the electrical limitations inherent to any electroplating process as elected when performing the method as instantly claimed. The claim amendment filed 10 November 2025 attempts to resolve this issue by explicitly reciting the loop to form the connection but does not further refine the specific detection taking place.
Furthermore, the electrolyte upon which plating takes place is an electrically conductive medium necessary to carry electrical current through the plating bath to enable deposition. Thus, the probes would be in electrical communication through the bath itself, and thus providing a mere electrical connection through a generic detection device.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
A determination on the quantity of experimentation cannot be determined without a starting point for different detection means.
Response to Arguments
Applicant's arguments filed 10 November 2025 have been fully considered but they are not persuasive.
Applicant presents a summary of the instant claim language on pg. 7 last paragraph. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., equal thickness on all of the connecting fingers being equal) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is further noted the conductive medium as asserted by Applicant results in setting the thickness of the as plated gold layers. However, the broadest reasonable interpretation of claim 1 provides that the conductive medium can be merely a conductive fluid, and not necessarily the graphite of instant claim 2 for example.
The Examiner appreciates the summary on pgs. 7-8 of the specific loop as now claimed. The Examiner does not contend to this disclosure as this particular arrangement is clearly enunciated within the specification. However, the discussion on pgs. 9-10 is not a part of the instant specification. The particular circuit arrangement and plating system are not a part of the instant disclosure. The reliance on information not a part of the specification is not proper to establish enablement of the instant claim language.
The method described on page 10 is not disclosed as part of the instant specification. The method suggested by Applicant is not commensurate with the method outlined in the instant claim language. Claim 1 explicitly requires “performing gold plating on upper surfaces of the connecting fingers, and stopping gold plating in response to detecting by the loop on-off detection device that the loop is conducted” (emphasis added). The claim explicit stops plating when conduction is detected, NOT stopping plating then measuring conductance. The steps of plating, stop plating, measure conductance, repeat, etc. are not disclosed in the instant specification and thus would potentially raise a new matter issue under 35 U.S.C. 112(a) if attempted to incorporate into the claim language.
Thus, the claim requires electroplating that is performed until a detection, in which the detection is carried out through the plating process.
Even assuming that the claimed process reads on plating and measuring independently, this interpretation further does not resolve the issue with plating on the conductive medium because the conductive medium explicitly forms the conductive loops via connection to the finger being plated. Thus, even without concurrent monitoring, the conductive medium would be biased with the finger during the electroplating, resulting in an ever increasing thickness on top of the conducting medium due to the deposition of gold. Applicant does not contend this result of plating outlined above in the response.
No further arguments are presented.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/ Primary Examiner, Art Unit 1795
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