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 .
This is in response to the Amendment After Final dated December 23, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The finality of the rejection of the last Office action is withdrawn in view of the new grounds of rejection.
Response to Amendment
Claim Rejections - 35 USC § 103
I. Claim(s) 7, 10 and 12 have been rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1).
The rejection of claims 7, 10 and 12 under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. has been withdrawn in view of Applicant’s arguments.
II. Claim(s) 9 has been rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1) as applied to claims 7, 10 and 12 above, and further in view of Akhtar et al. (“New Synthesis of Aryl-Substituted Sulfonium
Salts and Their Applications in Photoinitiated Cationic Polymerization,” Chemistry of Materials
(1990 Nov 1), Vol. 2, No. 6, pp. 732-737).
The rejection of claim 9 under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. as applied to claims 7, 10 and 12 above, and further in view of Akhtar et al. has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 11 has been rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1) as applied to claims 7, 10 and 12 above, and further in view of Hochstetler et al. (US Patent Application Publication No. 2005/0070701 A1).
The rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. as applied to claims 7, 10 and 12 above, and further in view of Hochstetler et al. has been withdrawn inv view of Applicant’s amendment.
IV. Claim(s) 13 has been rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1).
The rejection of claim 13 under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. has been withdrawn in view of Applicant’s amendment.
V. Claim(s) 14 has been rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto
et al. (US Patent Application Publication No. 2014/0005301 A1) as applied to claims 13 above,
and further in view of Hochstetler et al. (US Patent Application Publication No. 2005/0070701
A1).
The rejection of claim 14 under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. as applied to claims 13 above, and further in view of Hochstetler et al. has been withdrawn in view of Applicant’s amendment.
VI. Claim(s) 15 stands rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1) in view of Hochstetler et al. (US Patent Application Publication No. 2005/0070701 A1).
Regarding claim 15, Kunimoto teaches a solution comprising:
• a sulfonio group-containing ether compound,
wherein the sulfonio group-containing ether compound has a structure represented by Formula 1,
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(Formula I)
wherein R1 and R2 each independently represent a substituted or unsubstituted aromatic hydrocarbon group, an unsubstituted aliphatic hydrocarbon group, or an aliphatic hydrocarbon group substituted with an alkyl group, an alkoxy group, a halogen group, or a halogenated hydrocarbon group; R1 and R2 may be bonded to each other to form a cyclic structure; and E represents an ether moiety in the sulfonio group-containing ether compound or a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether
moiety is bonded (=
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(page 2, [0023]) wherein R1 is C1-C20-alkyl, C3-C20-cycloalkyl, heterocycloalkyl, a group A or a group B, where C1-C20-alkyl may be substituted by one or more identical or different radicals R1a and/or may be interrupted by one or more non-adjacent groups selected from -O-, -S--, -C(O)- and -N(RN)- [page 2, [0025] and et seq.], R2 and R3 are selected independently of one another from C1-C20-alkyl, C2-C20-alkenyl, C2-C20-alkynyl, C3-C20-cycloalkyl, heterocycloalkyl, C6-C20-aryl and heteroaryl) [page 3, [0040] et seq.: -O-, -OR20].
The solution of Kunimoto differs from the instant invention because Kunimoto does not
disclose:
a. Wherein the solution is a plating solution.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because:
(i) The Kunimoto combination teaches the presently claimed composition. If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01(II)).
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been
obvious.”
(ii) There is nothing in the word “plating” that positively adds anything to the composition of the presently claimed solution to make it distinguishing from any other prior art composition rather than adding a function, property or intended use to the solution.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
(iii) “A plating solution comprising” is recited in the preamble of claim 15, line 1.
MPEP § 2111.02(II) states that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
b. A water-soluble metal salt wherein the metal salt is a salt containing copper.
Kunimoto teaches that:
The heat curable composition of the invention may comprise at least one pigment. Suitable in principle are inorganic pigments, organic pigments, and mixtures thereof. The pigments may be color pigments, effect pigments, transparent pigments or mixtures thereof (page 32, [0672]).
The heat curable composition is formulated as an aqueous coating composition (page 32, [0679]).
Suitable pigment derivatives are, for example, copper phthalocyanine derivatives (page 33, [0687]).
Hochstetler teaches that:
The process of the invention also comprises aqueous mixtures of pigments. Examples of pigments include, but are not limited to, one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, antimony oxide, or organic pigments familiar to those skilled in the art. Further examples of pigments include the typical organic and inorganic pigments, well-known to one of ordinary skill in the art of surface coatings, especially those set forth by the Colour Index, 3d Ed., 2d Rev., 1982, published by the Society of Dyers and Colourists in association with the American Association of Textile Chemists and Colorists. Examples include, but are not limited to, the following: barytes, clay, CI Pigment White 6 (titanium dioxide); CI Pigment Red 101 (red iron oxide); CI Pigment Yellow 42; CI Pigment Blue 15, 15:1, 15:2, 15:3, 15:4 (copper phthalocyanines); CI Pigment Red 49:1; and CI Pigment Red 57:1. Pigments, in the context of the present invention, may also comprise colorants such as phthalocyanine blue, molybdate orange, TIPURETM R-746 (a titanium pure slurry available from Dupont Chemical, Inc. of Wilmington, Del.) [page 3, [0014]].
In which said pigment comprises one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, calcium carbonate, antimony oxide, clay, copper phthalocyanines, red iron oxide, or an organic pigment (page 10, claim 8).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the pigment described by Kunimoto with
a water-soluble metal salt wherein the metal salt is a salt containing copper because the composition of Kunimoto composition comprises at least one pigment where copper sulfate is an alternative to copper phthalocyanine as a pigment.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Continued Response
Claim Rejections - 35 USC § 112
Claims 7 and 9-15 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 7
lines 9-11, recite “E represents an ether moiety in the sulfonio group-containing ether compound or a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether moiety is bonded”.
If “E” is a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether moiety is bonded, then “the ether moiety” in this species lack antecedent basis because it is not tied to further limiting the sulfonio group-containing ether compound species because of the word “or”.
Claim 13
lines 9-10, “the ether moiety” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v.
Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
Claim 15
lines 10-12, recite “E represents an ether moiety in the sulfonio group-containing ether compound or a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether moiety is bonded”.
If “E” is a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether moiety is bonded, then “the ether moiety” in this species lack antecedent basis because it is not tied to further limiting the sulfonio group-containing ether compound species because of the word “or”.
Claim Rejections - 35 USC § 103
I. Claim(s) 7 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1) in view of Hochstetler et al. (US Patent Application Publication No. 2005/0070701 A1).
Regarding claim 7, Kunimoto teaches a solution comprising:
• a sulfonio group-containing ether compound,
wherein the sulfonio group-containing ether compound has a structure represented by
Formula 1,
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(Formula I)
wherein R1 and R2 each independently represent a substituted or unsubstituted aliphatic or aromatic hydrocarbon group with a proviso that at least one of R1 and R2 is an aromatic hydrocarbon group or R1 and R2 are bonded to each other to form a cyclic structure; and E represents an ether moiety in the sulfonio group-containing ether compound or a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether moiety is bonded
(=
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(page 2, [0023]) wherein R1 is C1-C20-alkyl, C3-C20-cycloalkyl, heterocycloalkyl, a group A or a group B, where C1-C20-alkyl may be substituted by one or more identical or different radicals R1a and/or may be interrupted by one or more non-adjacent groups selected from -O-, -S--, -C(O)- and -N(RN)- [page 2, [0025] and et seq.], R2 and R3 are selected independently of one another from C1-C20-alkyl, C2-C20-alkenyl, C2-C20-alkynyl, C3-C20-cycloalkyl, heterocycloalkyl, C6-C20-aryl and heteroaryl) [page 3, [0040] and et seq.].
The solution of Kunimoto differs from the instant invention because Kunimoto does not
disclose:
a. Wherein the solution is a plating solution.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because:
(i) The Kunimoto combination teaches the presently claimed composition. If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01(II)).
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been
obvious.”
(ii) There is nothing in the word “plating” that positively adds anything to the composition of the presently claimed solution to make it distinguishing from any other prior art composition rather than adding a function, property or intended use to the solution.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
(iii) “A plating solution comprising” is recited in the preamble of claim 7, line 1.
MPEP § 2111.02(II) states that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
b. A water-soluble metal salt.
Kunimoto teaches that:
The heat curable composition of the invention may comprise at least one pigment. Suitable in principle are inorganic pigments, organic pigments, and mixtures thereof. The pigments may be color pigments, effect pigments, transparent pigments or mixtures thereof (page 32, [0672]).
The heat curable composition is formulated as an aqueous coating composition (page 32, [0679]).
Suitable pigment derivatives are, for example, copper phthalocyanine derivatives (page 33, [0687]).
Hochstetler teaches that:
The process of the invention also comprises aqueous mixtures of pigments. Examples of pigments include, but are not limited to, one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, antimony oxide, or organic pigments familiar to those skilled in the art. Further examples of pigments include the typical organic and inorganic pigments, well-known to one of ordinary skill in the art of surface coatings, especially those set forth by the Colour Index, 3d Ed., 2d Rev., 1982, published by the Society of Dyers and Colourists in association with the American Association of Textile Chemists and Colorists. Examples include, but are not limited to, the following: barytes, clay, CI Pigment White 6 (titanium dioxide); CI Pigment Red 101 (red iron oxide); CI Pigment Yellow 42; CI Pigment Blue 15, 15:1, 15:2, 15:3, 15:4 (copper phthalocyanines); CI Pigment Red 49:1; and CI Pigment Red 57:1. Pigments, in the context of the present invention, may also comprise colorants such as phthalocyanine blue, molybdate orange, TIPURETM R-746 (a titanium pure slurry available from Dupont Chemical, Inc. of Wilmington, Del.) [page 3, [0014]].
In which said pigment comprises one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, calcium carbonate, antimony oxide, clay, copper phthalocyanines, red iron oxide, or an organic pigment (page 10, claim 8).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the pigment described by Kunimoto with a water-soluble metal salt because the composition of Kunimoto composition comprises at least
one pigment where copper sulfate is an alternative to copper phthalocyanine as a pigment.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 10, the solution of Kunimoto differs from the instant invention because
Kunimoto does not disclose wherein the sulfonio group-containing ether compound is a compound having a mass average molecular weight of 2,000 or more and 10,000 or less.
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the sulfonio group-containing ether
compound described by Kunimoto with wherein the sulfonio group-containing ether compound is a compound having a mass average molecular weight of 2,000 or more and 10,000 or less because although the mass average molecular weight of the sulfonio group-containing ether compound is not disclosed by Kunimoto, where 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 (MPEP § 2144.05).
Furthermore, structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art
compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties (MPEP § 2144.08 and § 2144.09).
Kunimoto teaches the sulfonium:
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(page 7, [0225] to page 8, [0242]).
Regarding claim 11, Hochstetler teaches wherein the metal salt is a salt containing copper (= in which said pigment comprises one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, calcium
carbonate, antimony oxide, clay, copper phthalocyanines, red iron oxide, or an organic pigment (page 10, claim 5).
Regarding claim 12, the solution of Kunimoto differs from the instant invention because
Kunimoto does not disclose wherein the sulfonio group-containing ether compound is contained at a concentration of 0.1 mg/L to 1 g/L.
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the sulfonio group-containing ether
compound described by Kunimoto with wherein the sulfonio group-containing ether compound is contained at a concentration of 0.1 mg/L to 1 g/L because although the concentration of the
sulfonio group-containing ether compound is not disclosed by Kunimoto, it has been held that changes in temperature, concentration or both, is not a patentable modification; however, such changes may impart patentability to a process if the ranges claimed produce new and unexpected results which are different in kind and not merely in degree from results of the prior art, such ranges are termed “critical” ranges and Applicant has the burden of proving such criticality; even though Applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within capabilities of one
skilled in the art; more particularly, where general conditions of the claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP § 2144.05].
II. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1) in view of Hochstetler et al. (US Patent Application Publication No. 2005/0070701 A1) as applied to claims 7 and 10-12 above, and further in view of Akhtar et al. (“New Synthesis of Aryl-Substituted Sulfonium Salts
and Their Applications in Photoinitiated Cationic Polymerization,” Chemistry of Materials (1990 Nov 1), Vol. 2, No. 6, pp. 732-737).
Kunimoto and Hochstetler are as applied above and incorporated herein.
Regarding claim 9, the solution of Kunimoto differs from the instant invention because
Kunimoto does not disclose wherein the sulfonio group-containing ether compound is a reaction product of an organic sulfur compound having groups represented by R1 and R2 and an ether
compound having a reactive group.
Kunimoto teaches the sulfonium:
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(page 7, [0225] to page 8, [0242]).
Akhtar teaches a novel, general, and high-yield synthesis of aryl-substituted sulfonium salts by the direct reaction of diaryl and dialkyl sulfoxides with activated aromatic compounds in the presence of P2O5-methanesulfonic acid (page 732, abstract).
The sulfonio group-containing ether compound (= diphenyl(4-methoxyphenyl)sulfonium hexafluoroantimonate =
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)
is a reaction product of an organic sulfur compound having groups represented by R1 and R2 (= diphenyl sulfoxide) and an ether compound having a reactive group (= anisole) [page 732, right column, lines 4-6].
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the sulfonio group-containing ether
compound described by Kunimoto with wherein the sulfonio group-containing ether compound is a reaction product of an organic sulfur compound having groups represented by R1 and R2
and an ether compound having a reactive group because reacting diphenyl sulfoxide with anisole produced diphenyl(4-methoxyphenyl)sulfonium hexafluoroantimonate.
The sulfonium compound is generated from corresponding reactants.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
III. Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunimoto et al. (US Patent Application Publication No. 2014/0005301 A1) in view of Hochstetler et al. (US Patent Application Publication No. 2005/0070701 A1).
Regarding claim 13, Kunimoto teaches a solution comprising:
• a sulfonio group-containing ether compound,
wherein the sulfonio group-containing ether compound has a structure represented by Formula 1,
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(Formula I)
wherein R1 and R2 each independently represent a substituted or unsubstituted aliphatic or aromatic hydrocarbon group, R1 and R2 may be bonded to each other to form a cyclic structure; and E represents a substituted or unsubstituted aromatic hydrocarbon group to which the ether moiety is bonded (=
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(page 2, [0023]) wherein R1 is C1-C20-alkyl, C3-C20-cycloalkyl, heterocycloalkyl, a group A or a group B, where C1-C20-alkyl may be substituted by one or more identical or different radicals R1a and/or may be interrupted by one or more non-adjacent groups selected from -O-, -S--, -C(O)- and -N(RN)- [page 2, [0025] and et seq.], R2 and R3 are selected independently of one another from C1-C20-alkyl, C2-C20-alkenyl, C2-C20-alkynyl, C3-C20-cycloalkyl, heterocycloalkyl, C6-C20-aryl and heteroaryl) [page 3, [0040] and et seq.].
The solution of Kunimoto differs from the instant invention because Kunimoto does not
disclose:
a. Wherein the solution is a plating solution.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because:
(i) The Kunimoto combination teaches the presently claimed composition. If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01(II)).
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been
obvious.”
(ii) There is nothing in the word “plating” that positively adds anything to the composition of the presently claimed solution to make it distinguishing from any other prior art composition rather than adding a function, property or intended use to the solution.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
(iii) “A plating solution comprising” is recited in the preamble of claim 13, line 1.
MPEP § 2111.02(II) states that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
b. A water-soluble metal salt.
Kunimoto teaches that:
The heat curable composition of the invention may comprise at least one pigment. Suitable in principle are inorganic pigments, organic pigments, and mixtures thereof. The pigments may be color pigments, effect pigments, transparent pigments or mixtures thereof (page 32, [0672]).
The heat curable composition is formulated as an aqueous coating composition (page 32, [0679]).
Suitable pigment derivatives are, for example, copper phthalocyanine derivatives (page 33, [0687]).
Hochstetler teaches that:
The process of the invention also comprises aqueous mixtures of pigments. Examples of pigments include, but are not limited to, one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, antimony oxide, or organic pigments familiar to those skilled in the art. Further examples of
pigments include the typical organic and inorganic pigments, well-known to one of ordinary skill in the art of surface coatings, especially those set forth by the Colour Index, 3d Ed., 2d Rev., 1982, published by the Society of Dyers and Colourists in association with the American Association of Textile Chemists and Colorists. Examples include, but are not limited to, the following: barytes, clay, CI Pigment White 6 (titanium dioxide); CI Pigment Red 101 (red iron oxide); CI Pigment Yellow 42; CI Pigment Blue 15, 15:1, 15:2, 15:3, 15:4 (copper phthalocyanines); CI Pigment Red 49:1; and CI Pigment Red 57:1. Pigments, in the context of the present invention, may also comprise colorants such as phthalocyanine blue, molybdate orange, TIPURETM R-746 (a titanium pure slurry available from Dupont Chemical, Inc. of Wilmington, Del.) [page 3, [0014]].
In which said pigment comprises one or more of: titanium dioxide, barium sulfate, copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, calcium carbonate, antimony oxide, clay, copper phthalocyanines, red iron oxide, or an organic pigment (page 10, claim 5).
It would have been obvious to one having ordinary skill in the art before the effective
filing date of the claimed invention to have modified the pigment described by Kunimoto with a water-soluble metal salt because the composition of Kunimoto composition comprises at least one pigment where copper sulfate is an alternative to copper phthalocyanine as a pigment.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 14, Hochstetler teaches wherein the metal salt is a salt containing
copper (= in which said pigment comprises one or more of: titanium dioxide, barium sulfate,
copper sulfate, barium chloride, copper chloride, zinc oxide, zinc sulfide, lead carbonate, calcium
carbonate, antimony oxide, clay, copper phthalocyanines, red iron oxide, or an organic pigment
(page 10, claim 5).
IV. Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crivello (US Patent No. 4,388,450).
Regarding claim 13, Crivello teaches a solution comprising:
• a water-soluble metal salt (= additional copper compounds are copper salts, for example, copper naphthenate, copper benzoate, copper citrate, copper stearate, copper oleate, copper gluconate, copper (I) bromide, copper (II) bromide, copper (I) chloride, copper (II) chloride, copper (I) trifluoroacetate, etc.) [col. 10, lines 49-54]; and
• a sulfonio group-containing ether compound,
wherein the sulfonio group-containing ether compound has a structure represented by
Formula 1,
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(Formula I)
wherein R1 and R2 each independently represent a substituted or unsubstituted aliphatic or aromatic hydrocarbon group, R1 and R2 may be bonded to each other to form a cyclic structure; and E represents a substituted or unsubstituted aromatic hydrocarbon group to which the ether moiety is bonded (=
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where R4 are C(1-8) alkyl radicals, and there is a substituted aromatic hydrocarbon group to which the ether moiety is bonded:
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where R5 -R8 are monovalent radicals selected from hydrogen, C(1-8) alkyl, C(1-8) alkoxy, nitro, chloro, etc.) [col. 8, lines 42-56].
The solution of Crivello differs from the instant invention because Crivello does not wherein the solution is a plating solution.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because:
(i) Crivello teaches the presently claimed composition. If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01(II)).
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been
obvious.”
(ii) There is nothing in the word “plating” that positively adds anything to the composition of the presently claimed solution to make it distinguishing from any other prior art composition rather than adding a function, property or intended use to the solution.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
(iii) “A plating solution comprising” is recited in the preamble of claim 13, line 1.
MPEP § 2111.02(II) states that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478,
42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
(iv) Crivello teaches that:
Some of the applications in which the curable compositions of the present invention can be used are, for example, protective, decorative and insulating coatings, potting compounds, printing inks, sealants, adhesives, molding compounds, wire insulating, textile coatings, laminates, impregnated tapes, varnishes, etc. (col. 10, line 65 to col. 11, line 2).
It is deemed that coating is indicative to plating.
Regarding claim 14, Crivello teaches wherein the metal salt is a salt containing
copper (= additional copper compounds are copper salts, for example, copper naphthenate,
copper benzoate, copper citrate, copper stearate, copper oleate, copper gluconate, copper (I)
bromide, copper (II) bromide, copper (I) chloride, copper (II) chloride, copper (I) trifluoroacetate, etc.) [col. 10, lines 49-54].
V. Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crivello (US Patent No. 4,388,450).
Regarding claim 15, Crivello teaches a solution comprising:
• a water-soluble metal salt,
wherein the metal salt is a salt containing copper (= additional copper compounds are copper salts, for example, copper naphthenate, copper benzoate, copper citrate, copper stearate, copper oleate, copper gluconate, copper (I) bromide, copper (II) bromide, copper (I) chloride, copper (II) chloride, copper (I) trifluoroacetate, etc.) [col. 10, lines 49-54]; and
• a sulfonio group-containing ether compound,
wherein the sulfonio group-containing ether compound has a structure represented by
Formula 1,
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106
153
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(Formula I)
wherein R1 and R2 each independently represent a substituted or unsubstituted aromatic hydrocarbon group, an unsubstituted aliphatic hydrocarbon group, or an aliphatic hydrocarbon group substituted with an alkyl group, an alkoxy group, a halogen group, or a halogenated hydrocarbon group; R1 and R2 may be bonded to each other to form a cyclic
structure; and E represents an ether moiety in the sulfonio group-containing ether compound
or a substituted or unsubstituted aliphatic or aromatic hydrocarbon group to which the ether moiety is bonded (=
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165
276
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where R4 are C(1-8) alkyl radicals, and there is a substituted aromatic hydrocarbon group to which the ether moiety is bonded:
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164
173
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where R5 -R8 are monovalent radicals selected from hydrogen, C(1-8)
alkyl, C(1-8) alkoxy, nitro, chloro, etc.) [col. 8, lines 42-56].
The solution of Crivello differs from the instant invention because Crivello does not
disclose wherein the solution is a plating solution.
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because:
(i) Crivello teaches the presently claimed composition. If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01(II)).
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been
obvious.”
(ii) There is nothing in the word “plating” that positively adds anything to the composition of the presently claimed solution to make it distinguishing from any other prior art composition rather than adding a function, property or intended use to the solution.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
(iii) “A plating solution comprising” is recited in the preamble of claim 15, line 1.
MPEP § 2111.02(II) states that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
(iv) Crivello teaches that:
Some of the applications in which the curable compositions of the present invention can be used are, for example, protective, decorative and insulating coatings, potting compounds, printing inks, sealants, adhesives, molding compounds, wire insulating, textile coatings, laminates, impregnated tapes, varnishes, etc. (col. 10, line 65 to col. 11, line 2).
It is deemed that coating is indicative to plating.
Response to Arguments
Applicant’s arguments filed December 23, 2025 have been fully considered but they are not persuasive. The standing prior art rejection has been maintained for the following reasons:
• Applicant states that Kunimoto does not disclose or even suggest a plating solution, as expressly required by claim 15.
• Applicant states that thus, neither Akhtar nor Hochstetler discloses or even suggests a plating solution.
In response,
(i) The Kunimoto combination teaches the presently claimed composition. If the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable (MPEP § 2112.01(II)).
MPEP § 2141.02(I) states that “[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been
obvious.”
(ii) There is nothing in the word “plating” that positively adds anything to the composition of the presently claimed solution to make it distinguishing from any other prior art composition rather than adding a function, property or intended use to the solution.
It is well settled that unpatented claims are given the broadest, most reasonable interpretation and that limitations are not read into the claims without a proper claim basis therefor. In re Prater 415 F. 2d 1393, 162 USPQ 541 (CCPA 1969); In re Zeltz 893 F. 2d 319, 13 USPQ 1320.
(iii) “A plating solution comprising” is recited in the preamble of claim 13, line 1.
MPEP § 2111.02(II) states that "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation”. See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
The Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness (MPEP § 2144(IV)).
• Applicant states that because the cited references are technically unrelated to electroplating, a person of ordinary skill in the art would have no motivation or reasonable expectation of success to combine them to arrive at Applicant's claimed plating solution.
• Applicant states that there is no substantial evidence, nor clear and particular evidence, within the record of motivation for modifying Kunimoto to arrive at the claimed invention.
In response, the composition of Kunimoto composition comprises at least one pigment where copper sulfate is an alternative to copper phthalocyanine as a pigment as taught by Hochstetler.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Thus, the Kunimoto combination teaches a solution comprising a water-soluble metal salt and a sulfonio group-containing ether compound having a structure of Formula I which read on the composition of the presently claimed plating solution.
Also, present claim 15 reads on a heat-curable composition.
Where Applicant claims a composition in terms of function, property or characteristic
and the composition of the prior art is the same or similar as that of the claim but the function is not explicitly disclosed by the reference, the scientific explanation for the prior art's functioning does not render an old composition patentably new to the discoverer (MPEP § 2112(I)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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/EDNA WONG/Primary Examiner, Art Unit 1795 December 31, 2025