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 Claims
Claims 1-12 are pending in the current application.
Claims 10-12 are withdrawn from consideration in the current application.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on June 10, 2026 is acknowledged.
Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito (JP 2019123909 A, herein English machine translation).
Regarding Claim 1, Ito teaches a primer layer for an electroless (non-electrolytic) plating comprising 80 parts by mass of a base resin of poly(bisphenol A-co-epichlorohydrin) (i.e., a phenoxy resin) and 20 parts by mass of a melamine crosslinking agent (i.e., a melamine resin) (Ito, [0015], [0022]-[0023], [0046]-[0048]). Normalizing the content values to a basis of 100 parts by mass of phenoxy resin yields: [20/80] = [x/100] => x = 100*[20/80] = 25 parts by mass of melamine resin. Ito’s melamine resin content falls within the claimed range of 25-65 parts by mass based on 100 parts by mass of phenoxy resin, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 6, Ito teaches the primer layer further comprises palladium catalyst nanoparticles dispersed thereon (Ito, [0015], [0020]-[0021]).
Regarding Claim 7, Ito teaches the palladium catalyst is in the form of nanoparticles having an average particle size of 2-100 nm (Ito, [0015], [0020]-[0021]). Ito’s particle size encompasses the claimed range of 2-10 nm, and therefore, renders obvious the claimed range (MPEP 2144.05).
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Noh et al. (US 2009/0252952 A1).
Regarding Claim 1, Noh teaches a resin treatment layer for a plate steel sheet (i.e., a primer composition for metal plating) comprising a phenoxy resin and 3-25 parts by weight of a melamine resin based on 100 parts be weight of the phenoxy resin (Noh, Abstract, [0036]-[0042]). Noh’s melamine resin range overlaps the claimed range of 25-65 parts by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Claims 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Murata et al. (JP 2007197798 A, herein English machine translation utilized for all citations).
Regarding Claims 1 and 2, Murata teaches a primer composition for electroless (non-electrolytic) plating comprising (A) epoxy resins that include (A-1) a bifunctional epoxy resin formed by reacting a diol with an epihalohydrin (i.e., a phenoxy resin (A)) and (A-2) an epoxidized polybutadiene (i.e., an epoxy resin (C)), (B) a polyfunctional phenol compound, (C) a curing catalyst, (D) a filler component, and a surface activating Pd catalyst material (Murata, [0001], [0006], [0010]-[0017], [0022]-[0035], [0044]-[0045]). Murata teaches (B) the polyfunctional phenol compound includes cresol novolac resin (i.e., a resol phenol resin (D)) (Murata, [0027]-[0028]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried a cresol novolac resin from the finite number of polyfunctional phenol compounds disclosed by Murata with a predictable and reasonable expectation of success (MPEP 2143). Murata teaches (C) the curing catalyst includes melamine compounds (i.e., a melamine resin (B)) (Murata, [0029]-[0031]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried a melamine curing catalyst from the finite number of curing catalysts disclosed by Murata with a predictable and reasonable expectation of success (MPEP 2143). Murata teaches (C) the curing catalyst melamine compound is included in a range of 0.1-10 parts by mass relative to total amount of epoxy resins (A) and polyfunctional phenol compound (B) (Murata, [0032]). Murata teaches (A-1) the phenoxy resin is preferably included in an amount of 50 mass% or more relative to total epoxy resins (A), and (A-2) is preferably 5-30 mass%; yielding (A-1) being 50-95 mass% of (A) (Murata, [0025]-[0026]). Murata teaches the polyfunctional phenol compound (B) is included in a ratio with the epoxy resins (A) of preferably 0.6:1 to 1.1:1 (Murata, [0028]). Assuming a basis of 50 parts by mass of total epoxy resins (A), yields a total amount of epoxy resins (A) and polyfunctional phenol compound (B) of (50)(A)+(0.6*50)(B) = 80(A+B) parts by mass to (50)(A)+(1.1*50)(B) = 105(A+B) parts by mass. So a content ratio range of (C) relative to the total amount of epoxy resins (A) and polyfunctional phenol compound (B) is 0.1(C)/105(A+B) to 10(C)/80(A+B); and normalizing relative to only (A-1) that is 50-95 mass% of (A) yields:
0.1(C)/(0.95*50)(A-1) = 0.1(C)/(47.5)(A-1),
Normalizing 0.1(C)/(47.5)(A-1) = LO(C)/(100)(A-1), LO(C) = (100)(A-1)*[0.1(C)/(47.5)(A-1)] = 0.21 parts by mass;
10(C)/(0.5*50)(A-1) = 10(C)/(25)(A-1),
Normalizing 10(C)/(25)(A-1) = HI(C)/(100)(A-1), HI(C) = (100)(A-1)*[ 10(C)/(25)(A-1)] = 40 parts by mass;
Murata’s (C) curing catalyst melamine compound range overlaps the claimed range of 25-65 parts by mass, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 3, Murata teaches (A-1) the phenoxy resin is preferably included in an amount of 50 mass% or more relative to total epoxy resins (A), and (A-2) is preferably 5-30 mass%; yielding (A-1) being 50-95 mass% of (A) (Murata, [0025]-[0026]). Murata teaches the polyfunctional phenol compound (B) is included in a ratio with the epoxy resins (A) of preferably 0.6:1 to 1.1:1 (Murata, [0028]). Assuming a basis of 50 parts by mass of total epoxy resins (A), yields a total amount of epoxy resins (A) and polyfunctional phenol compound (B) of (50)(A)+(0.6*50)(B) = 80(A+B) parts by mass to (50)(A)+(1.1*50)(B) = 105(A+B) parts by mass. So a content ratio range of (A-2)+(B) relative to the total amount of (A-1) yields:
[(0.05*50)(A-2) + (0.6*50) (B)]/(0.95*50)(A-1) = [(32.5)(A-2+B)]/(47.5)(A-1),
Normalizing [(32.5)(A-2+B)]/(47.5)(A-1) = LO(A-2+B)/(100)(A-1), LO(A-2+B) = (100)(A-1)*[(32.5)(A-2+B)/(47.5)(A-1)] = 68.4 parts by mass;
[(0.30*50)(A-2) + (1.1*50) (B)]/(0.50*50)(A-1) = [(70)(A-2+B)]/(25)(A-1),
Normalizing [(70)(A-2+B)]/(25)(A-1) = HI(A-2+B)/(100)(A-1), HI(A-2+B) = (100)(A-1)*[(70)(A-2+B)/(25)(A-1)] = 280 parts by mass;
Murata’s total of (A-2) + (B) range overlaps the claimed range of 30-80 parts by mass, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, Murata teaches (A-2) the epoxidized polybutadiene is an epoxy resin having more than 1 epoxy group along a polybutadiene chain, where this structure renders obvious the claimed polyfunctional epoxy having three or more epoxy groups in a molecule thereof (Murata, [0024]-[0026]).
Regarding Claim 5, Murata teaches the epoxy resins are solid within a solvent, where a solvent can be used to adjust the viscosity of the solid resins (Murata, [0022], [0038]).
Regarding Claim 6, Murata teaches the primer composition surface can be activated with a catalytic metal such as palladium Pd (Murata, [0044]-[0045]).
Regarding Claim 9, Murata teaches the primer composition comprises (D) a filler that includes silica (Murata, [0034]-[0037]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Murata et al. (JP 2007197798 A, herein English machine translation utilized for all citations) as applied to claims 1 and 6 above, and further in view of Ito (US 2019/0090357 A1).
Regarding Claim 7, Murata teaches the primer layer for an electroless (non-electrolytic) plating as discussed above for claims 1 and 6. Murata teaches the primer composition surface can be activated with a catalytic metal such as palladium Pd (Murata, [0044]-[0045]).
Murata remains silent regarding a palladium particle having an average size of 2-10 nm.
Ito, however, teaches a primer composition for electroless (non-electrolytic) plating comprising a resin such as an epoxy and a catalyst of metal nanoparticles formed of palladium, where the nanoparticles having an average size of preferably 3-80 nm (Ito, Abstract, [0025], [0029]-[0038]). Ito’s average size range overlaps the claimed range of 2-10 nm, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Murata and Ito both disclose primer layer compositions for electroless (non-electrolytic) plating comprising an active palladium catalyst, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Ito’s palladium metal nanoparticles as Murata’s catalytic metal to yield a primer layer that has a uniform distribution of nanoparticles, does not generate voids with a plating layer, and has strong adhesion power with a plating layer as taught by Ito (Ito, [0028], [0033]-[0039]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Murata et al. (JP 2007197798 A, herein English machine translation utilized for all citations) as applied to claims 1 and 6 above, and further in view of Voss (US 2002/0001709 A1).
Regarding Claim 8, Murata teaches the primer layer for an electroless (non-electrolytic) plating as discussed above for claims 1 and 6. Murata teaches the primer composition surface can be activated with a catalytic metal such as palladium Pd (Murata, [0044]-[0045]).
Murata remains silent regarding a content of palladium being 0.1-30% by mass with respect to the primer composition.
Voss, however, teaches a primer composition for electroless metallization of substrates comprising a matrix resin (such as epoxy and melamine resins) and about 0.1 to 15% by weight of an activator that includes colloidal metal, where the colloidal metal includes palladium (Voss, Abstract, [0008]-[0017], [0029]). Voss’s activator content range falls within the claimed above of 0.1-30% by mass, and therefore, satisfies the claimed range (MPEP 2131.03).
Since Murata and Voss both disclose primer layer compositions for electroless metal plating comprising an activator comprising palladium, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have add Murata’s palladium catalyst in an amount of about 0.1-15% by mass according to Voss’s guidance to yield a primer layer that exhibits improved characteristics for metallization at low bath loadings as taught by Voss (Voss, Abstract, [0001], [0008]-[0009], [0029]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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