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 Application
Claims 1-12 are pending. Claims 9-11 are withdrawn. Claims 1-8 and 12 are presented for examination.
Election/Restrictions
Applicant’s election without traverse of claim 1-8 and 12 in the reply filed on 12/9/2025 is acknowledged.
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/9/2025.
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.
1. Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 5-9 of copending Application No. 18/042791 in view of Kojima et al. (U.S. PGPUB No. 2009/0044720). Claims 1, 3 and 5-9 of Application No. 18/042791 teach a composition that includes all the elements as claimed in claims 1-8 but fails to teach the composition having a pH in the range as claimed. However, Kojima teaches a similar composition comprising palladium ions, chloride ion, ethylenediamine and a reducing agent (Plating Solution 1, 0051) and teaches that the composition can have a pH in a range of 3-10. 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 claims 1, 3 and 5-9 of Application No. 18/042791 to have the composition have a pH of 7.5-9.5. One would have been motivated to make this modification as Kojima makes clear that this range is suitable for palladium plating solutions including similar elements.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
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.
2. Claim(s) 1-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (U.S. PGPUB No. 2009/0044720) in view of Bruning et al. (U.S. PGPUB No. 2016/0053379).
I. Regarding claims 1, 3, 6, 8 and 12, Kojima teaches a composition for depositing palladium (0051) comprising: palladium ions (Plating Solution 1, 0051); chloride ions (Plating Solution 1, 0051); ethylenediamine (Plating Solution 1, 0051); sodium formate as a reducing agent (Plating Solution 1, 0051); and 20 mM disodium ethylene diaminetetraacetate, which has the formula
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314
444
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(Plating Solution 1, 0051); and the composition not including boron hydride (Plating Solution 1, 0051). Kojima teaches the ratio of palladium ions to ethylenediamine being 1:2 (0031 and Plating Solution 1, 0051) and that the pH of the composition can be 3-10 (0046, and note that overlapping ranges are prima facie evidence of obviousness). Kojima fails to teach the inclusion of EDDS, which has the formula
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317
650
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where the acids may be in ionic form, and the pH being 7.5 to 9.5.
First, Kojima fails to explicitly teach the range of 7.5-9.5. However, Kojima does teach a range for pH from 3-10 (see above) which overlaps the claimed range and makes obvious the claimed range. Note that overlapping ranges have been held as prima facie evidence of obviousness.
Second, EDDS, as shown above, has an extremely similar structure to Kojima’s disodium ethylene diaminetetraacetate. Furthermore, Bruning teaches the inclusion of EDDS as a preferred complexing agent (0039) in a metal plating solution (abstract). 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 Kojima’s composition by substituting EDDS for Kojima’s disodium ethylene diaminetetraacetate. One would have been motivated to make this modification as Bruning teaches that EDDS is a preferred complexing agent based on its high biodegradability and increased metal deposition rates (0045).
II. Regarding claims 2, 4 and 5, Kojima in view of Bruning teach all the limitations of claim 1 (see above), but fail to explicitly teach the concentration of palladium, ethylenediamine, and chloride ions. However, the amount of these elements are result-effective variables as adjusting the concentrations of these compounds will alter the deposition rate and plating film thickness (see Kojima at 0033, 0037 and 0045 which discloses that adjusting the concentrations of these variables alters properties of the resultant palladium composition). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
III. Regarding claim 7, Kojima in view of Bruning teach all the limitations of claim 1 (see above), but fail to show an example where the reducing agent is present in 200 mM-1000 mM. However, Kojima in view of Bruning does teach a range for the reducing agent being 5 mM-300 mM (Kojima at 0045) which overlaps with the claimed range. Furthermore, overlapping ranges are prima facie evidence of obviousness. Therefore, Kojima in view of Bruning make obvious claim 7.
Conclusion
Claims 1-12 are pending.
Claims 9-11 are withdrawn.
Claims 1-8 and 12 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
January 7, 2026Primary Examiner, Art Unit 1717