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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 13, 2026 has been entered.
This is in response to the Amendment dated July 13, 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 Rejections - 35 USC § 103
Claim(s) 1-4 and 6 have been rejected under 35 U.S.C. 103 as being unpatentable over JP 2017145473 (‘473) in view of WO 2018/185144 (‘144), WO 2020/074694 (‘694), Bares et al. (US Patent Application Publication No. 2021/0355593 A1), Davis JR (editor, “Nickel Coatings,” Nickel, Cobalt, and Their Alloys. ASM international (2000), pp. 106-123) and Takayama et al. (US Patent Application Publication No. 2003/0064569 A1).
The rejection of claims 1-4 and 6 under 35 U.S.C. 103 as being unpatentable over JP 2017145473 (‘473) in view of WO 2018/185144 (‘144), WO 2020/074694 (‘694), Bares et al., Davis JR and Takayama et al. has been withdrawn in view of Applicant’s amendment.
Continued Response
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1
Lines 3-5, recite:
“step 1 of forming an electrolytic nickel plating film, and
step 2 of intermittently forming an electrolytic trivalent-chromium plating film on the electrolytic nickel plating film”.
The “forming” and “intermittently forming” do not automatically mean that an electrochemical reaction is occurring. It only creates the conditions under which one could occur.
It is suggested that “forming an electrolytic nickel plating film” be amended to – electrolytically forming a nickel plating film --.
It is suggested that “intermittently forming an electrolytic trivalent-chromium plating film on the electrolytic nickel plating film” be amended to – electrolytically, intermittently forming a trivalent-chromium plating film on the electrolytic nickel plating film --.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 WO 2020/074694 (‘694), Bares et al. (US Patent Application Publication No. 2021/0355593 A1), Wei (US Patent No. 5,728,426), 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).
Bares et al. is the English equivalent of WO 2020/074694.
Regarding claim 1, JP ‘473 teaches an electrodepositing method for producing a plating film (= an electroplating method) [ρ [0001]], 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 (= the chromium plating solution may contain either hexavalent chromium or trivalent chromium as its chromium component) [ρ [0029]] 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]: Item 6].
JP ‘473 does not explicitly teach the following:
a. Wherein the forming in step 2 is intermittently forming.
JP ‘473 teaches using a trivalent chromium plating solution (ρ [0034]).
In the present invention, there are no particular limitations on the plating conditions when
chromium plating is carried out, and conditions similar to ordinary plating conditions may be adopted depending on the type of chromium plating solution used (ρ [0042]).
Like JP ‘473, Bares teaches the electrolytic reduction of trivalent chromium (page 4, [0099]).
The current applied between the substrate and the anode may be of the pulsed type. In preferred embodiments of the invention, a continuous current is applied between the substrate and the anode (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 the forming in step 2 described by JP ‘473 with wherein the forming in step 2 is intermittently forming. The person with ordinary skill in the art would have been motivated to make this modification because JP ‘473 teaches that there are no particular limitations on the plating conditions when chromium plating is carried out in [0042] where using a pulsed type current1 is one of the suitable forms of current for the electroplating of chromium in a trivalent chromium plating bath as taught by Bares in [0100].
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.
b. Wherein the electrolytic trivalent-chromium plating film is a multilayer film.
JP ‘473 teaches that furthermore, a two-layer chromium plating film can be formed by forming a hexavalent chromium plating film on a trivalent chromium plating film (ρ [0046]).
Bares teaches that the current applied between the substrate and the anode may be of the pulsed type (page 4, [0100]).
Applicant’s specification2 discloses that:
The method for intermittently forming an electrolytic trivalent-chromium plating film may be, for example, a method of repeating a cycle of (1) passing electric current and (2)
stopping electrolysis, or a method of repeating a cycle of (1) passing electric current, (2) stopping electrolysis, and (3) washing with water (pages 22-23, [0095]).
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because Applicant’s specification discloses that the method for intermittently forming an electrolytic trivalent-chromium plating film may be, for example, a method of repeating a cycle of (1) passing electric current and (2) stopping electrolysis, or a method of repeating a cycle of (1) passing electric current, (2) stopping electrolysis, and (3) washing with water in [0095] where using the pulsed type current3 taught by Bares in [0100] in the method taught by JP ‘473 in [0046]4 would have been intermittently forming the electrolytic trivalent-chromium plating film on the electrolytic nickel plating film of JP ‘473 which similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
Also, 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 is a multilayer film. The person with ordinary skill in the art would have been motivated to make this modification because:
(i) The repetition of steps to provide the same results is within the skill of one having ordinary skill in the art. The concept of duplication is not patentable. St. Regis Paper Co. v. Bemis Co. Inc., 193 USPQ 8, 11 (7th Cir. 1977). While this decision relates to the duplication of parts, there is no reason why such duplication cannot be extended to a process step.
(ii) Depositing a second layer of chromium over a first chromium layer would have prevented nickel fogging as taught by Wei in col. 2, lines 32-34.
c. Wherein the electrolytic nickel plating film5 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]).
Like JP ‘473, Davis 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.
d. Wherein the electrolytic trivalent-chromium plating film6 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].
e. 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]).
Like JP ‘473, WO ‘144 teaches depositing a chromium or chromium alloy layer (page 1, lines 7-9).
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]].
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.
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 pulsed current is characterized by intermittent bursts of electrical flow, where the current is switched on and off in a controlled manner.
2 Giving claims their broadest reasonable interpretation in light of the specification (MPEP § 2111).
3 A pulsed current is characterized by intermittent bursts of electrical flow, where the current is switched on and off in a controlled manner.
4 The phrase “can be formed” opens this teaching to include a two-layer chromium plating film formed by forming a trivalent chromium plating film on a trivalent chromium plating film.
5 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).
6 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).
Prosecution Insights