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 .
The amendment filed December 22, 2025 has been received and entered. With the entry of the amendment, claims 18 and 22 are canceled, and claims 1-17, 19-21 and new claim 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 rejection of claim 1-17 and 19-22 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to the amendments of December 22, 2025 clarifying the claim language.
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 GB 1264954 (hereinafter ‘954).
Claim 1, 2, 4, 16: 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 179), 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). However, ‘954 teaches electroless deposition and catalyzing (activating) the substrate for such deposition (note page 1, lines 5-10, page 10, lines 30-45). ‘954 describes that the catalyzing can include a first step of applying a noble metal (active agent, such as palladium or other noble metals such as platinum, silver, gold, where the noble metal can be in ion form, noting the use of the salts of the metal, such as chlorides giving ions) containing polymer (in aqueous solution/dispersion) to the substrate (note page 1, lines 1-25, page 4, lines 25-35, page 6, lines 10-25). Various polymers can be used and non-crosslinked polymers, including various amines (note page 5, lines 16-65). The materials can be in an aqueous solution at a pH or 1-14 (so would include acidic pH) (note page 7, lines 20-25, page 9, lines 35-50,page 10, lines 30-35). ‘954 teaches that two layers can be applied by sequentially depositing one catalyst system on the surface, then contacting with reactant, then depositing a second catalyst system thereon, and then contacting with a second reactant (note use of reducing agent as a reactant to prepare for plating), where this process allows various reactions/materials to be used for activation (note page 7, lines 35-55, page 6, lines 10-30).
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 comprising an aqueous solution of acidic pH comprising noble metal ions, as suggested by ‘954 with an expectation of providing a desirable catalyst structure that can have a combination of catalyst materials, since Mellevec notes providing a first activation stage using a palladium complex, organo-silane bi-functional binder and solvent before electroless plating, and ‘954 also describes applying a catalyst in an aqueous activation solution where the catalyst can be as noble metal ions that can be with polymer/amines that would act as a binder (since adheres) and solvent (water) and describes how sequences of catalyst systems can be applied (giving multiple layers) to allow combinations of catalyst systems to be used, and therefore, it would be expected that the desirable use of a combination of catalyst systems would be allowed by providing the first stage activation with the solution as in Mellevec and the a second stage application with a solution as in ‘954 which indicates how its solutions can also be applied over a first catalyst to allow for combinations of catalyst systems to be used, where as to the pH of the second stage solution, ‘954 gives a range of 1-14, which would be optimized from, 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 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 ‘954 the noble metal ions of the second activation solution can be from palladium (for claim 12, as well), rhodium, ruthenium, osmium, iridium, platinum, gold and silver (from the possible catalytic metals to use) (note page 6, lines 10-15).
Claim 13: From ‘954, the palladium can be used from palladium chloride, and also salts of the palladium in general (note page 6, lines 15-20). 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 ‘954 (note discussion for claims 11, 12) 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: ‘954 indicates that the second activation stage (that using the solution of ‘954) can be carried out at 25 degrees C (in the claimed range) and for 5 minutes in an example (note page 10, lines 30-35). Mevellec further notes how in an activation stage, the time of treatment can be 1-30 minutes (note 0146), giving a range overlapping that claimed, and from the indication that it is known to adjust the time of treatment, it would have been obvious to one ordinary skill in the art to optimize the time range for the treatment of ‘954 in the second stage, 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 20, 21: As to the pH of the second activation solution (from ‘954), ‘954 teaches a pH range of 1-14, overlapping the claimed range(note page 7, lines 20-25), and it would have been obvious to optimize from this range, 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 23: Mevellec in view of ‘954 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, and for the second activation solution obtained by dissolving in water the tetrachloropalladic acid would be suggested as discussed for claim 13 above. As to the pH of the second activation solution, as discussed for claim 20, above, ‘954 provides the suggested second activation solution and teaches a pH range of 1-14, overlapping the claimed range(note page 7, lines 20-25), and it would have been obvious to optimize from this range, 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)). 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, ‘954 teaches that a conventional pH for an activation solution would be 1-14, indicating that one would optimize from this range for the best activation solution, so one would provide this optimization for the activation solution of Mevellec as well, giving a value in the claimed range.
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 December 22, 2025 have been fully considered but they are not persuasive.
As to the arguments regarding the 35 USC 103 rejection, (1) it is argued that a skilled artisan would have no reason to combine Mevellec and ‘954/Neely, as one is directed to integrated circuits and one is directed to printed circuit boards. The Examiner disagrees, Mevellec, for example, notes that its invention generally relates to the fabrication of electronic devices, such as in particular integrated circuits (note 0001), which does not limit its teachings to integrated circuits, and indicates treatments on through vias (note 0002, 0027). Furthermore, ‘954 describes generally treatment of surfaces , that is particularly useful for treatment of printed circuit boards and through holes of printed circuit boards (note page 1, lines 5-20). Furthermore, ‘954 is not limited to epoxy resin or glass fiber/epoxy resin substrates (note page 7, lines 15-20). Therefore, Mevellec would not be simply limited to integrated circuits and ‘954 would not be simply limited to printed circuit boards, and both are treating through holes/vias/openings. Both are catalyzing surfaces for further electroless plating, and thus suggesting that each would be pertinent and relevant to the teaching of the other as to how catalysts can be provided for electroless plating on a variety of surfaces. (2) as to ‘954 not providing the second activation solution as claimed, the Examiner is of the position that it provides the desired second activation solution as claimed. As to ‘954 providing an active agent complexed in the polymer and not a metal ion in solution, and depositing a monolayer of polymer particles, not individual metal ions, note for claim 1, for example, there is no requirement of depositing individual metal ions, merely contacting the surface of the substrate with the solution, and merely has that the aqueous solution comprise noble metal ions. ‘954 notes, for example, how the noble metals can be in anionic form (that is, a negatively charged ion) in a polymer matrix, and formed with mixing a solution of polymer (including soluble polymer) with the active agent (metal salt) (note page 5, line 64 to page 6, line 15, page 1, lines 1-25), and thus an aqueous solution as claimed comprising noble metal ions can be provided (ph discussed at page 7, lines 20-25). As to the use of this solution of ‘954 with that of Mevellec, ‘954 notes how different catalyst systems can be used in sequence to deposit different materials (note page 7, lines 35-55), and thus would suggest that a second solution (as in ‘954) can be used sequentially after the solution of Mevellec to provide a desirable combination of catalyst systems to be used. (3) Further as to the additional arguments as to claim 1, as to the argument that the ‘954 does not provide the claimed second activation solution, as noted above for (2), it is the Examiner’s position that ‘954 provides the solution to the extent claimed. As to problems with a pH above 12, it is not required for the pH to be above 12. As to ‘954 not indicating that a solution such as Mevellec’s could be used for the first activation, since ‘954 indicates that various catalyst systems can be used in sequence, and Mevellec indicates that its catalyst system provides for acceptable catalyzing, it would have been obvious to expect that the catalyst of Mevellec would provide an acceptable first layer of catalyst. (4) As to the further arguments for claim 13, it is argued that there is no indication that the tetrachloropalladiic acid can be used in an aqueous solution that comprises noble metal ions or that this would be used as an intermediate for the formed polymer article of ‘954, The Examiner disagrees, tetrachloropalladic acid would give a known noble metal salt used in providing Pd (as shown by Mevellec) with anion form of Pd, where ‘054 generally teaches that salts of Pd can be used (note page 6, lines 10-15), including anionic form (note page 5, lines 64-65), and with aqueous solution (note page 1, lines 1-15, page 6, lines 1-5) and thus would be understood to be an acceptable material to use. (5) As to claim 15, as to the time of activation, while ‘954 gives an example of a 5 minute treatment, it is indicated that this is a typical time, not the only time (note page 7, lines 55-65), and therefore, the citation of Mevellec as showing how other times can be used when treating with catalyst would show the expectation that one would optimize time based on the specific treatment used. (6) As to the arguments with regard to claim 20, ‘954 indicates forming a complete monolayer at low pH for weak base polymers (note page 7,lines 20-25), however, for example, the polymer particles can be strongly basic as well (note page 5, lines 25-35), and it is also indicated that time of treatment affects whether there will be a monolayer (note page 6, lines 55-65), so even if a low pH will eventually give a monolayer, based on time of treatment, partial coverage would be expected as well, and as well, since multiple layers of catalyst can be used, even if there is a monolayer of polymer for a top layer, it is understood that there will still be a catalyst effect from an underlayer. Therefore, the rejections above are maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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