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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 dated January 12, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Claim Objections
Claim 1 has been objected to because of minor informalities.
The objection of claim 1 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 1-6 have been rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for electrodepositing, does not reasonably provide enablement for sputtering. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The rejection of claims 1-6 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
I. Claim(s) 1 and 3-5 have been rejected under 35 U.S.C. 103 as being unpatentable over Takayama et al. (US Patent Application Publication No. 2003/0064569 A1) in view of WO 2020/074694 (‘694) in view of Bares et al. (US Patent Application Publication No.
2021/0355593 A1).
The rejection of claims 1 and 3-5 under 35 U.S.C. 103 as being unpatentable over Takayama et al. in view of WO 2020/074694 (‘694) in view of Bares et al. has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 2 has been rejected under 35 U.S.C. 103 as being unpatentable over Takayama et al. (US Patent Application Publication No. 2003/0064569 A1) in view of WO 2020/074694 (‘694) in view of Bares et al. (US Patent Application Publication No. 2021/0355593 A1) as applied to claims 1 and 3-5 above, and further in view of WO 2018/185144 (‘144).
The rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Takayama et al. in view of WO 2020/074694 (‘694) in view of Bares et al. as applied to claims 1 and 3-5 above, and further in view of WO 2018/185144 (‘144) has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 6 has been rejected under 35 U.S.C. 103 as being unpatentable over Takayama et al. (US Patent Application Publication No. 2003/0064569 A1) in view of WO 2020/074694 (‘694) in view of Bares et al. (US Patent Application Publication No. 2021/0355593 A1) as
applied to claims 1 and 3-5 above, and further in view of Mertens et al. (US Patent Application Publication No. 2015/0252487 A1).
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Takayama et al. in view of WO 2020/074694 (‘694) in view of Bares et al. as applied to claims 1 and 3-5 above, and further in view of Mertens et al. has been withdrawn in view of Applicant’s amendment.
Continued Response
Claim Rejections - 35 USC § 103
I. Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017145473 (‘473) in view of Davis JR, editor, “Nickel Coatings,” Nickel, Cobalt, and Their Alloys. ASM international (2000), pp. 106-123), Takayama et al. (US Patent Application Publication No. 2003/0064569 A1) and WO 2018/185144 (‘144).
Regarding claim 1, JP ‘473 teaches a electrodepositing method for producing a plating film, comprising:
• step 1 of forming an electrolytic nickel plating film (= forming a nickel film and can be carried out by a known nickel electroplating method) [ρ [0022]], and
• step 2 of forming an electrolytic (= the cathode current density) [ρ [0044]] trivalent-chromium plating film (= when the chromium plating film formed is a single layer, it may be either a trivalent chromium plating film or a hexavalent chromium plating film) [ρ [0045]] on the electrolytic nickel plating film (= form a nickel plating film, and then forming a chromium plating film on the nickel plating film) [ρ [0008]].
JP ‘473 does not explicitly teach the following:
a. Wherein the electrolytic nickel plating film1 has a compressive stress of 0 to 100
MPa.
JP ‘473 teaches that:
The secondary brightener has a brightening effect and also a function of filling in small scratches in the plating film, i.e., a leveling effect, and examples thereof include formaldehyde, allylsulfonic acid, 2-butyne-1,4-diol, and ethyl cyanohydrin (ρ [0019]).
It is preferable to add a primary brightener and a secondary brightener to the nickel electroplating solution in addition to the nickel electroplating brightener of the present invention, since this will result in a nickel plating film with superior brightness (ρ [0020]).
Davis, like JP ‘473, teaches depositing bright nickel plus chromium (page 106, Fig. 1: 1938). Typical properties of bright nickel deposits are as follows: elongation, 2 to 5%; Vickers hardness, 100 g, load, 600 to 800; internal stress, 12 to 25 MPa (compressive) [page 108, Table 2, subscript (c)].
Nickel chloride: Serving primarily to improve anode corrosion, nickel chloride also increases conductivity and uniformity of coating thickness distribution. Excessive amounts of chloride increase the corrosivity of the solution and the internal stress of the deposits. (Internal stress refers to forces created within the deposit as a result of the electrocrystallization process and/or the codeposition of impurities such as hydrogen, sulfur, and other elements. Internal stress is either tensile [contractile] or compressive [expansive] and may cause plating problems
if excessively high.) [page 108, left column, lines 1-14].
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrolytic nickel plating film taught
by JP ‘473 with wherein the electrolytic nickel plating film has a compressive stress of 0 to 100
MPa. The person with ordinary skill in the art would have been motivated to make this
modification because JP ‘473 teaches electroplating a nickel plating film with superior brightness in [0020] where typical properties of bright nickel deposits include an internal stress of 12 to 25 MPa (compressive) as taught by Davis on page 108, Table 2, subscript (c), and where plating problems can occur if the compressive [expansive] stress is excessively high as taught by Davis on page 108, left column, lines 1-14.
b. Wherein the electrolytic trivalent-chromium plating film2 has a tensile stress of 0 to 50 MPa.
Takayama teaches that:
In the above-described constitution 1, the foregoing first material layer is characterized in that the layer has a tensile stress in a range of 1 to 1x1010 (Dyne/cm2). The foregoing first material layer is not particularly limited if the material has a tensile stress within the foregoing range and a monolayer of any one of a metal material (Ti, Al, Ta, W, Mo, Cu, Cr, Nd, Fe, Ni, Co, Zr, Zn, Ru, Rh, Pd, Os, Ir, Pt and the like), a semiconductor material (e.g. Si, Ge and the like), an insulating material, and an organic material or their laminated layer may be employed. Incidentally, a film having a tensile stress higher than 1x1010 (Dyne/cm2) is easy to cause peeling in the case of heating treatment (page 2, [0016]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolytic trivalent-chromium plating film taught by JP ‘473 with wherein the electrolytic trivalent-chromium plating film has a tensile stress of 0 to 50 MPa. The person with ordinary skill in the art would have been motivated to make this modification because a chromium layer having a tensile stress higher
than 1x1010 (Dyne/cm2) is easy to cause peeling in the case of heating treatment as taught by Takayama in [0016].
c. Wherein the electrolytic trivalent-chromium plating film has a thickness of 5 µm
or more.
JP ‘473 teaches that the trivalent chromium plating was carried out using a Top Fine
Chromium bath manufactured by Okuno Chemical Industries Co., Ltd., at a liquid temperature
of 40°C and a current density of 8 A/dm2 for 5 minutes (ρ [0057]).
WO ‘144 teaches that:
As already mentioned above, in the method of the present invention, the layer obtained in step (c) is preferably a functional chromium or functional chromium alloy layer (also often referred to as a hard chromium layer or hard chromium alloy layer) and not a decorative chromium or chromium alloy layer. Thus, a method of the present invention is preferred, wherein the average layer thickness of the chromium or chromium alloy layer deposited in step (c) is 1 .0 μm or more, preferably 2 μm or more, more preferably 4 μm or more, even more preferably 5 μm or more, most preferably the average layer thickness is in the range from 5 μm to 200 μm, preferably 5 μm to 150 μm. These are typical average layer thicknesses for functional chromium or chromium alloy layers. Such thicknesses are needed to provide the needed wear resistance, which is typically demanded. In some cases the lower limit preferably and specifically includes 10 μm, 15 μm or 20 μm (page 13, line 33 to page 14, line 9).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolytic trivalent-chromium plating film taught by JP ‘473 with wherein the electrolytic trivalent-chromium plating film has a thickness of 5 µm or more. The person with ordinary skill in the art would have been motivated to make this modification because a chromium layer having a thickness in the range from 5 μm to 200 μm provides a functional chromium layer having wear resistance.
Regarding claim 2, JP ‘473 does not explicitly teach wherein the electrolytic trivalent-
chromium plating film has an arithmetic mean roughness Ra of 0.080 µm or less.
WO ‘144 teaches that preferred is a method wherein the layer deposited in step (c) has an average surface roughness Ra of 0.6 μm or less, based on an average layer thickness of at least
20 μm, preferably of 0.5 μm or less, more preferably of 0.4 μm or less (page 14, lines 29-32).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrolytic trivalent-chromium
plating film taught by JP ‘473 with wherein the electrolytic trivalent-chromium plating film has an arithmetic mean roughness Ra of 0.080 µm or less. The person with ordinary skill in the art would have been motivated to make this modification because a chromium layer having an average surface roughness Ra of 0.4 μm or less provides a functional chromium layer having wear resistance.
Regarding claim 3, WO ‘144 teaches wherein the electrolytic trivalent-chromium plating film has a thickness of 200 µm or less (= most preferably the average layer thickness is in the range from 5 μm to 200 μm) [page 14, lines 5-6].
Regarding claim 4, JP ‘473 does not explicitly teach wherein the electrolytic trivalent- chromium plating film has a Vickers hardness of 750 HV or more.
WO ‘144 teaches that:
According to own experiments, the at least one substrate obtained after step (c) exhibits a Vickers Hardness of at least 700 HV (0.05) (determined with 50 g “load”). The wear resistance is comparatively good as the wear resistance obtained from hexavalent chromium based deposition methods (page 7, line 32 to page 8, line 2).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrolytic trivalent-chromium
plating film taught by JP ‘473 with wherein the electrolytic trivalent-chromium plating film has
a Vickers hardness of 750 HV or more. The person with ordinary skill in the art would have been
motivated to make this modification because a chromium layer having a Vickers Hardness of at least 700 HV (0.05) (determined with 50 g “load”) provides a functional chromium layer having
wear resistance.
Regarding claim 6, JP ‘473 teaches wherein the electrolytic nickel plating film has a
thickness of 5 µm or more and 50 µm or less (= the thickness of the nickel plating film is not
particularly limited, and can be, for example, 1 μm or more) [ρ [0026]].
II. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017145473 (‘473) in view of Davis JR, editor, “Nickel Coatings,” Nickel, Cobalt, and Their Alloys. ASM international (2000), pp. 106-123), Takayama et al. (US Patent Application Publication No. 2003/0064569 A1) and WO 2018/185144 (‘144) as applied to claims 1-4 and 6 above, and further in view of WO 2020/074694 (‘694) and Bares et al. (US Patent Application Publication No. 2021/0355593 A1).
Bares et al. is the English equivalent of WO 2020/074694.
Regarding claim 5, JP ‘473 in view of Davis, Takayama et al. and WO ‘144 teaches the method of at least claims 1-4 and 6 as applied above. The references do not explicitly teach wherein step 2 is a step of intermittently forming an electrolytic trivalent-chromium plating film.
WO ‘144 teaches that the electrical current is a direct current (DC), more preferably a
direct current without interruptions during step (c) [page 13, lines 30-31].
Bares teaches the electrolytic reduction of the trivalent chromium into hard metallic chromium occurs in the bath (page 4, [0099]). The current applied between the substrate and the anode may be of the pulsed type (page 4, [0100]).
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 step 2 described by JP ‘473 in view of Davis, Takayama et al. and WO ‘144 with wherein step 2 is a step of intermittently forming an electrolytic trivalent-chromium plating film. The person with ordinary skill in the art would have been motivated to make this modification because intermittent DC is an alternative to non- intermittent DC as taught by WO ‘144 on page 16, lines 30-31, although disclosed as being non-preferred, it would have still provided a functional chromium layer having wear resistance.
All disclosures of the prior art, including non-preferred embodiment, must be considered, In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967). Non-preferred embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ 2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278 (CCPA 1976); In re Kohler, 177 USPQ 399.
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims have been considered but are moot because the new grounds of rejection do not rely on the combination of references applied in the prior rejections of record for any teaching or matter specifically
challenged in the argument.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).
2 A process yielding an unobvious product may nonetheless be obvious where Applicant claims a process in terms of function, property or characteristic and the process of the prior art is the same or similar as that of the claim but the function, property or characteristic is not explicitly disclosed by the reference (MPEP § 2116.01).