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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-12) in the reply filed on 10/28/2025 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)).
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP22171849.7, filed on 05/05/2022.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 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 1 recites “preferably not comprising”, which makes the claim indefinite because it is not clear if the limitation is required or merely optional. For the purpose of further examination, the limitation will be interpreted as being merely optional.
Claims 2-12 are also indefinite as being dependent on indefinite claim 1.
Claim 5 recites the limitation "the rinse water" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "step (e) as the water" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arzt et al. (US 20090107845 A1).
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].
Considering claim 2, Arzt discloses the brighterner is Pyridinium-N-propane-3-sulfonic acid (N-heteroatomic compound) ([0040], [0050]).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3, 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 3, Arzt does not disclose the at least one brightening agent comprises at least N-benzylnicotinates, esters thereof, N-benzylnicotinamides, N-alkylnicotinates, esters thereof, and/or N-alkylnicotinamides.
However, Brunner dislcsoes an electrolytic bath for cationic pyridinium compounds as brighteners and polyamines as complexing agents (abstract). The brighteners can be readily prepared by reacting the corresponding nicotinic acid amides or nicotinic acid derivatives with the corresponding benzyl halides in a suitable solvent [0033].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to N-benzylnicotinates, amides, N-benzylnicotinamides, N- alkylnicotinates, N-alkylnicotinamides, 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, N-alkylnicotinamides, N-benzylnicotinamides and N- alkylnicotinates [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, 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, as applied to claim 1 above, and further in view of further in view of Kovarsky et al. (US 20040026255 A1).
Considering claims 5 and 6, 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]).
Conclusion
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