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 .
Claims Status
Claims 1 and 4-14 are pending. Claims 1 and 5 have been amended. Claims 2 and 3 have been canceled.
Applicant’s arguments, filed 05/06/2026, with respect to 112 rejections have been fully considered and are persuasive. The rejections of claims 1-12 have been withdrawn.
Applicant’s arguments, filed 05/06/2026, with respect to the rejection(s) of claim(s) 1-2 and 4-12 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sonntag et al. (US 6652728 B1).
Applicant's arguments filed 05/06/2026, with respect to rejection of claim 3 under 35 USC 103 have been fully considered but they are not persuasive. See response to arguments below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 12 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Arzt et al. (US 20090107845 A1) in view of Sonntag et al. (US 6652728 B1).
Considering claims 1 and 12, Arzt discloses a method for depositing a zinc-nickel alloy on a substrate, the method comprising the steps: (a) providing the substrate, (b) providing an aqueous zinc-nickel deposition bath as a catholyte in a deposition compartment, wherein - the deposition compartment comprises at least one anode with an anolyte, and - the anolyte is separated from the catholyte by at least one membrane, and the catholyte [0044] comprises (i) nickel ions [0037], (ii) at least one brightening agent [0040], and (iii) zinc ions [0036], (c) contacting the substrate with the catholyte in the deposition compartment such that the zinc-nickel alloy is electrolytically deposited onto the substrate and thereby obtaining a zinc-nickel coated substrate [0043], wherein after step (c) the at least one brightening agent has a lower concentration than before step (c), characterized in that the method comprises after a step (c) [0050], step (d) adding directly or indirectly a brightening agent source to the catholyte [0044], said source being substantially free of halogen anions [0040].
Arzt discloses aromatic or heteroaromatic brighteners [0019] and references U.S. Pat. No. 6,652,728 to Sonntag as example patent literature with further details [0025].
Sonntag discloses aromatic aldehydes as brightening agents (col. 5, lines 45-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an aldehyde as a brightening agent in the method of Artz, because Artz explicitly references Sonntag for more details as to the bath composition such as brighteners, and Sonntag teaches aldehydes as brightening agents are used in zinc or zinc alloy deposition.
Claim(s) 5, 6, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arzt et al. and Sonntag et al., as applied to claim 1 above, and further in view of further in view of Hillebrand et al. (EP 1533399 A2, machine translation).
Considering claims 5 and 6, Arzt does not disclose at least a portion of the catholyte, at least a portion of the rinse water, and/or at least a portion of the pre-rinse water is treated in a first treatment compartment such that water is separated therefrom, resulting in separated water and a concentrated aqueous solution, wherein, directly or indirectly, at least a portion of the concentrated aqueous solution is returned into the catholyte.
However, Hillebrand discloses separating water, which is fed to rinsing water [0018] and a concentrated aqueous solution is returned into the electrolyte [0019].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to separate water from the rinse water and reuse the concentrate in the method of Arzt, because Hillebrand teaches that the additional reprocessing of the rinsing water is advantageous in particular from an ecological point of view, since the waste water is less contaminated and less waste is produced [0019].
Considering claim 8, in Arzt as modified by Hillebrand, Hillebrand discloses the first treatment compartment comprises an evaporator [0019].
Considering claim 9, in Arzt as modified by Hillebrand, Hillebrand discloses treating at least a portion of the catholyte in a second treatment compartment such that dissolved anions (sulfates) are separated (precipitate) from the catholyte [0016].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arzt et al. and Sonntag et al., as applied to claim 1 above, and further in view of further in view of Kovarsky et al. (US 20040026255 A1).
Considering claim 7, Arzt is silent about the distance of the membrane to the anode.
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 at least one anode described by Arzt with wherein the at least one anode has a distance to the at least one membrane in a range from 0.5 mm to 5.0 mm because considering that Artz is silent as to the specific anode distance to the at least one membrane, which presumably is non-critical, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the specific anode distance to the at least one membrane through routine experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
Furthermore, Kovarsky teaches that in a plating system, the membrane 112 generally has a distance from the anode 122 of greater than about 0.1 mm. Preferably, the membrane 112 has a distance from the anode 122 of from about 0.5 mm to about 10 mm (page 2, [0022]).
Claim(s) 1, 4 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arzt et al, as applied to claim 1 above, and further in view of further in view of Brunner et al. (US 20100155257 A1).
Considering claim 1, Arzt discloses a method for depositing a zinc-nickel alloy on a substrate, the method comprising the steps: (a) providing the substrate, (b) providing an aqueous zinc-nickel deposition bath as a catholyte in a deposition compartment, wherein - the deposition compartment comprises at least one anode with an anolyte, and - the anolyte is separated from the catholyte by at least one membrane, and the catholyte [0044] comprises (i) nickel ions [0037], (ii) at least one brightening agent [0040], and (iii) zinc ions [0036], (c) contacting the substrate with the catholyte in the deposition compartment such that the zinc-nickel alloy is electrolytically deposited onto the substrate and thereby obtaining a zinc-nickel coated substrate [0043], wherein after step (c) the at least one brightening agent has a lower concentration than before step (c), characterized in that the method comprises after a step (c) [0050], step (d) adding directly or indirectly a brightening agent source to the catholyte [0044], said source being substantially free of halogen anions [0040].
Arzt discloses aromatic or heteroaromatic brighteners [0019].
Arzt does not disclose the at least one brightening agent selected from the group consisting of N-benzylnicotinates, esters thereof, N-benzylnicotinamides, N-alkylnicotinates, esters thereof, and/or N-alkylnicotinamides; aldehydes; ketons; and sulfonic acids additionally comprising a mercapto group, a disulfide moiety, and/or a thioether moiety.
However, Brunner discloses an electrolytic bath for cationic pyridinium compounds as brighteners and polyamines as complexing agents (abstract). Brunner teaches that N-benzyl nicotinate betaine are well-known brighteners [0015]. Furthermore, Formula I with R1a represent , N-benzylnicotinamides [0019].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have N-benzylnicotinates, amides, N-benzylnicotinamides in the method of Artz, because Arzt only teaches an example of a cationic pyridinium compounds as brightener, and Brunner further teaches more suitable pyridinium compounds used as brighteners in plating bath of zinc alloys, including N-benzylnicotinates as well-known and N-benzylnicotinamides as at least one pyridinium compound as brightener [0019].
Considering claim 4, Arzt does not disclose rinsing step of the zinc-nickel coated substrate with water. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rinse the coated substrate of Arzt, because rinsing is a conventional step, for example disclosed by Brunner [0073]. The rinse water will inherently comprise at least a portion of said at least one brightening agent and/or one or more than one complexing agent for the nickel ions, because the substrate is wet with the electrolyte comprising these ingredients.
Considering claims 10-12, Arzt discloses the catholyte comprising 1.2 g/L of nickel sulfonate [0037], 120 g/L of NaOH [0038], and 5-20 g/L of a soluble zinc salt [0019]. The electrolyte of Arzt will inherently have traces of carbonate ions due to presence of carbon dioxide in air, which will diffuse into the electrolyte and form carbonate ions in alkaline solution.
Arzt does not disclose halogen anions.
However, Brunner teaches that zinc salts can be either zinc chloride [0007].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have zinc chloride as a salt in the electrolyte of Arzt, because generaly teaches using soluble zinc salts, and Brunner teaches that typically zinc salt is zinc chloride.
Based on the total volume of the catholyte,- (i), (iii), and (iv) to (vii) together will have a total concentration within the claimed range of 20 g/L to 260 g/L , and - the halogen anions do not exceed a total concentration of 10 g/L.
Claim(s) 5, 6, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arzt et al. and Brenner et al., as applied to claim 1 above, and further in view of further in view of Hillebrand et al. (EP 1533399 A2, machine translation).
Considering claims 5 and 6, Arzt does not disclose at least a portion of the catholyte, at least a portion of the rinse water, and/or at least a portion of the pre-rinse water is treated in a first treatment compartment such that water is separated therefrom, resulting in separated water and a concentrated aqueous solution, wherein, directly or indirectly, at least a portion of the concentrated aqueous solution is returned into the catholyte.
However, Hillebrand discloses separating water, which is fed to rinsing water [0018] and a concentrated aqueous solution is returned into the electrolyte [0019].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to separate water from the rinse water and reuse the concentrate in the method of Arzt, because Hillebrand teaches that the additional reprocessing of the rinsing water is advantageous in particular from an ecological point of view, since the waste water is less contaminated and less waste is produced [0019].
Considering claim 8, in Arzt as modified by Hillebrand, Hillebrand discloses the first treatment compartment comprises an evaporator [0019].
Considering claim 9, in Arzt as modified by Hillebrand, Hillebrand discloses treating at least a portion of the catholyte in a second treatment compartment such that dissolved anions (sulfates) are separated (precipitate) from the catholyte [0016].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arzt et al. and Brunner et al., as applied to claim 1 above, and further in view of further in view of Kovarsky et al. (US 20040026255 A1).
Considering claim 7, Arzt is silent about the distance of the membrane to the anode.
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 at least one anode described by Arzt with wherein the at least one anode has a distance to the at least one membrane in a range from 0.5 mm to 5.0 mm because considering that Artz is silent as to the specific anode distance to the at least one membrane, which presumably is non-critical, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the specific anode distance to the at least one membrane through routine experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955) [MPEP § 2144.05].
Furthermore, Kovarsky teaches that in a plating system, the membrane 112 generally has a distance from the anode 122 of greater than about 0.1 mm. Preferably, the membrane 112 has a distance from the anode 122 of from about 0.5 mm to about 10 mm (page 2, [0022]).
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered but they are not persuasive. Applicant argues that the selection of a brightener for the disclosure or Brunner is not obvious because Brunner discloses very large number of possible brighteners. This argument is not persuasive, because Brunner discloses functional equivalents for the same purpose, therefore lacking unexpected results, one can select any of the disclosed brighteners with reasonable expectation of success. Furthermore, Brunner explicitly teaches that N-benzylnicotinate betaine is a well-known brightener, and the formulae I and II in combination of R1a, where X1 represents NRxRy meet the claimed N-benzylnicotinamides.
Conclusion
THIS ACTION IS MADE FINAL. 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 Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/Examiner, Art Unit 1794
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