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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2026 has been entered.
The amendment filed with the RCE submission of July 21, 2026 has been received and entered. With the entry of the amendment, claims 18 and 22 are canceled, and claims 1-17, 19-21 and 23 are pending for examination.
Election/Restrictions
Applicant’s election of Group I, claims 1-17 and 19 (and also new claims 20-22) in the reply filed on September 16, 2024 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)).
Applicant states the rejection is with traverse, but non-elected claim 18 is canceled and no arguments are provided as to the supposed errors in the restriction requirement.
Applicant’s election of the species I of a nickel-boron alloy using nickel ions in the reply filed on September 16, 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)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4, 11-12 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2, “the noble metal” as to the first activation stage lacks antecedent basis because specifically “noble metal” was not used in parent claim 1 with regard to the first activation stage. This rejection also applies to claim 4, which depends from claim 2 and does not cure its defects.
Claim 11, line 1, “the noble metal ions” lack antecedent basis, as parent claim 1 now uses “a source of noble metal ions”. For the purpose of examination, it is understood that noble metal ions from the source of noble metal ions in claim 1 is intended, but applicant should clarify what is intended, without adding new matter. This rejection also applies to claim 12, which depends from claim 11 and does not cure its defects.
Claim 14, “the noble metal” as to the first solution and the second solution both lack antecedent basis because specifically “noble metal” was not used in parent claim 1 as to the first and second activation solutions.
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 1-17, 19-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Mevellec et al (US 2012/0196441) in view of Japan 2004-332023 (hereinafter ‘023) and Schutyser (US 5153024).
Claim 1, 2, 4, 16, 20, 21: Mevellec teaches a process for metallizing a surface of a mineral oxide (SiO2 as desired by claim 16) with nickel alloyed with boron, for example (note 0001, 0017, 0027, 0146-0147, 0137, 0152, 0198, 0213-0214, where since the underlying surface to be activated can be SiO2/silicon oxide (insulating dielectric layer) on which the alloy can be deposited, so the substrate as underlying substance that is plated would be SiO2/silicon oxide, 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 process includes activating a surface of the substrate with a noble metal (palladium as desired by claims 2, 4, where the palladium complexed with the complexing agent as noted below to form a palladium complex) (note 0029-0031), where the activating step includes a first stage comprising activating the surface of the substrate by contacting the surface with a first activation solution, the first activation solution comprising a solvent, a noble metal complex with a complexing agent, and an organo-silane bi-functional binder (note 0146, 0030-0031, 0042, 0051, 0057-0059, for example, 0199-0209). Thereafter the activated surfaces of the substrate in the absence of electrical polarization (note 0179), is contacted with an electroless aqueous solution comprising, for example, nickel ions, and a reducing agent comprising boron, to form a nickel-boron alloy layer on a surface of the substrate (note 0146-0165, o210-0215).
Mevellec does not teach providing second activation step a)ii) as claimed between steps a)i) and b).
‘023 teaches electroless deposition (chemical plating, note 0015) and catalyzing (activating) the substrate (poorly conductive body) for such deposition (abstract, 0014-0015, 0019). ‘023 describes that the catalyzing can include a first step of applying a thermosetting paint (so with an organic compound) that contains metal such as a noble metal like Pd that can be in metal form or metal compound form, where this paint layer has a catalytic function for the further plating (note 0013-0015, 0022-0034). ‘023 further teaches that where the catalytic reaction from this paint is weak, the catalytic ability can be enhanced by providing a second activation step/stage by applying a palladium chloride treatment after the first step, followed by reducing treatment (note 0015, 0027-0028). The palladium chloride treatment is provided by immersion in a palladium chloride solution (note 0027, 0034). The further reduction can be by using a borohydride, for example (note 0027, 0015). Therefore, electroless (chemical) plating is provided (note 0028, 0019). The chemical plating can be copper or nickel, for example (note 0019).
Furthermore, as to the specific materials of the palladium chloride solution, Schutyser further describes palladium chloride solutions that can be used for activating/catalyzing electroless plating, such as copper or nickel plating (note column 5, lines 1-20 and 40-55). The palladium chloride is described as a solution of palladium chloride in water at a pH of 1.6 set by using HCl (so, the solution would require water, palladium chloride and HCl, with no other materials required) (column 5, lines 40-50, for example). After the palladium chloride treatment, there can be a borohydride, for example, reducing treatment before electroless plating (note column 5, lines 10-2, column 5, lines 40-55).
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 additionally provide a second activation stage a)ii) after stage a)i) and before the electroless plating, where the substrate is contacted with a second activation solution consisting of an aqueous solution of palladium chloride (noble metal ion source) and a pH adjuster of HCl, as suggested by ‘023 and Schutyser with an expectation of providing a desirable catalyst structure with improved catalytic ability, since Mellevec notes providing a first activation stage using a palladium complex, organo-silane bi-functional binder and solvent before electroless plating, and ‘023 describes applying a first activation catalyst stage that can be with palladium metal or compound in a organic thermosetting material and solvent (note 0024, 0033) before electroless plating, and further to improve catalytic ability, a second activation stage of applying a palladium chloride solution to the substrate (by immersion, so contacting a surface of the substrate) is provided before further plating material including nickel, and Schutyser further indicates that palladium chloride solutions used for similar activating before electroless plating would be suggested to be consisting simply of palladium chloride, water and HCl (pH adjusting material). Additionally, as to the palladium chloride being dissolved in the aqueous solution, it would be at least suggested that this would be the case because the material in ‘023 and Schutyser is described as in solution form, and additionally, Mevellec indicates how when providing a palladium compound that can be PdCl2 in water and HCl, it can be dissolved (note 0059, 0062), further suggesting the material would be predictably and acceptably dissolved. As to the pH of the second stage solution, Schutyser indicates how such solutions can conventionally have a pH of 1.6, indicating a pH in the claimed range of claims 20 and 21 to use with an expectation of predictable and acceptable results.
Claim 3: As to the complexing agent comprising ethylene diamine, in Mevellec there can be complexing agents from formula (IV) that include ethylene diamine (note 0058, 0032 when R1, R2 are H).
Claim 5: in Mevellec the concentration of the noble metal complex (activator) in the first activation solution can be 10-6 to 10-2 M, in the claimed range (note 0055).
Claim 6: in Mevellec, the organo-silane binder ion the first activation solution can have 2 or 3 amine functions (note 0086, 0087, 0073-0075).
Claim 7: in Mevellec, the organo-silane binder can be 3-[2-(2-aminoethylamino)ethylamino]propyl-trimethoxysilane (that is (3-Trimethoxylsilypropyl)diethylenetriamine) (note 0087).
Claim 8: in Mevellec, the concentration of the binder in the first activation solution can be 10-5 to 10-1 M, in the claimed range (note 0056).
Claim 9: in Mevellec, the first activation stage can be carried out at a temperature from 65-70 degrees C, in the claimed range (note 0146).
Claim 10: in Mevellec, the first activation stage can be carried over from 5-15 minutes, in the claimed range (note 0146).
Claim 11, 12: From ‘023, and Schutyser the noble metal ion of the ion source of the second activation solution can be from palladium ions (from the palladium chloride, note ‘023 at 0027, for example).
Claim 13: From ‘023 and Schutyser as discussed for claim 1, the palladium can be used from palladium chloride. Mevellec notes how a when providing palladium for use in activation solutions, one can start with palladium chloride (0062) and treat with dissolving in water/aqueous solution with acid to use H2PdCl4 (tetrachloropalladic acid) , that can also be considered dissolved in the water present (note 0059, 0200-0201), and thus it would be understood that the formed H2PdCl4 would be acceptably used similarly to palladium chloride in the solution of ‘954.
Claim 14: Since Mevellec (note discussion for claim 2, 4) would indicate palladium can be used for the first activation stage, and ‘203 and Schutyser (note discussion for claims 11, 12) would indicate that palladium can be used for the second activation stage, it would have been obvious that it can be used for both stages with an expectation of predictably acceptable results.
Claims 15: ‘023 does not give a specific temperature for the palladium chloride solution use, but gives a time example of 5 minutes (note 0034). Schutyser does not limit the time or temperature for use of the palladium chloride solution (note column 5, lines 40-50). Therefore, it would be suggested to use the solution at a temperature of room temperature, in the claimed range, so as to not to have to go to specific time or expense to heat or cool the solution, when there is no limit of temperature use. Further as to the time of treatment, since ‘023 gives one example at 5 minutes and Schutyser does not limit time of treatment, it would have been obvious to one ordinary skill in the art to optimize the time range for the treatment of the second stage for the specific article treated, giving a value in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 17: Mevellec indicates to provide annealing (to the extent claimed) of the nickel boron alloy coating (note 0166, 0214-0215).
Claim 19: Since the same process as discussed for the claims above, for providing the Ni-B layer to have the claimed resistivity when the layer thickness is less than or equal 20 nm, the same results are expected. 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).
Claim 23: Mevellec in view of ‘023 and Schutyser provides all the features of these claims, as discussed for claim 1 above, and additionally, as for the time of activation in step a)i) as discussed for claim 10 above, and the time of activation in step a)ii) as discussed for claim 15 above. As to the pH of the second activation solution, as discussed for claim 20, above, Schutyser provides the suggested second activation solution pH range of 1.6, in the claimed range Furthermore, as to the pH of the first activation solution between about 2 and about 10, Mevellec, which provides the first activation solution, does not teach a specific pH to be used, however, as discussed above, for the second activation solution, solutions can have desirable pH for use, and it would have been obvious to optimize for the specific pH to use, giving a value in the claimed range (Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
The rejection of claims 1-17, 19-21 and 23 under 35 U.S.C. 103 as being unpatentable over Mevellec et al (US 2012/0196441) in view of GB 1264954 (hereinafter ‘954) is withdrawn due to the amendments changing the scope of the claims.
PubChem (pages 1-2) describes the formula for (3-Trimethoxylsilypropyl)diethylenetriamine that corresponds to that used for 3-[2-(2-aminoethylamino)ethylamino]propyl-trimethoxysilane (that is (3-Trimethoxylsilypropyl)diethylenetriamine) as described in FisherScientific (page 1).
Response to Arguments
Applicant's arguments filed July 21, 2026 have been fully considered.
Note the adjustment to the rejections, including new 35 USC 112 and the new 35 USC 103 rejection using Mevellec in view of ‘023 and Schutyser.
As to the 35 USC 103 rejections it is argued that ‘954 does not provide the second activation solution consisting of the listed materials now claimed. The Examiner notes these arguments, and the new rejection removes ‘954 and uses the new references to ‘023 and Schutyser as to the suggestion to use a second activation solution as now claimed as discussed in the rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
