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 .
Response to Amendment
Applicant’s amendments, filed 4/16/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims, the cancellation of claim 8 and the addition of new claims 25-26. Claims 1-7 and 9-26 remain pending.
In view of the amendment to claims 11-13, the examiner has withdrawn the 35 USC 112b rejection over the claims.
Response to Arguments
Applicant’s arguments, filed 4/16/2026, are directed to newly added claim requirements that are specifically addressed in the prior art rejection of record.
Applicant’s arguments related to the amount of stabilizer is noted, arguing that the reference fails to explicitly disclose the amount of antimony. Applicant’s argue the reference does not provide guidance on suitable concentration of antimony. While there is no explicit statement that the stabilizer is added in the range as claimed, the prior art discloses including a stabilizer in the amount that overlaps the range as claimed (see 0.1 mg/L to 5 mg/L) and thus including the antimony stabilizer in this range would have been obvious as predictable. Additionally, the amount of stabilizer would have been recognized as a result effective variable and determination of the optimum concentration of the stabilizer would have been obvious to one of ordinary skill in the art at the time of the invention. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant’s assertions related to the concentration of antimony has a “positive effect on plating rate” is noted, but this is not alleged as unexpected result and therefore the recognition of using the antimony stabilizer and benefits that flow naturally from its inclusion. Additionally, even if there are allegations that is unexpected, the present evidence of such would not support unexpected results for the totality of the claim scope.
Applicant’s reliance on the disclosure of alternative or preferred stabilizers is noted, but A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Here KR 962 explicitly discloses antimony as a known stabilizer for Pd electroless plating baths and thus using the known and described stabilizer would have been obvious to one of ordinary skill in the art.
As for the requirement that the concertation of antimony provides a positive effect on plating rate are noted, but initially, it is unclear if this is an allegation of unexpected results. In the event that such is argued as unexpected, the examiner notes initially, the examples are not commensurate in scope with the broadly drafted claim requirements that include varying antimony compounds as well as any number of additional materials and process conditions that are not specifically called out. Additionally, KR 287 discloses the stabilizers are used for “adjusting the rate of plating film formation” and therefore the mere fact that the applicant’s have recognized the different stabilizers will have different plating rates does not appear to be unexpected, but merely an expected result of the effect of stabilizers.
All other arguments are specifically addressed in the prior art rejection.
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.
Claim(s) 1-7 and 9-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 20180037962, hereinafter KR 962 taken with US Patent Application Publication 20220388279A1 by Tanabe et al. and KR 20220014287, hereinafter KR 287.
Claim 1: KR 962 discloses an electroless deposition of palladium on a substrate, including preparing the substrate to accept electroless palladium deposited thereon (see Figure 1 and 3 and accompanying text, cleaning, activated). KR 962 discloses brining the substrate into contact with an electroless bath that includes palladium ions, complexing agents, reducing agent and a stabilizer, where the stabilizer is selected from the group comprising antimony (see pages 3-4). Here, antimony is disclosed as stabilizer within a group and selecting the known and suitable stabilizer, including antimony, would have been obvious to one of ordinary skill in the art at the time of invention as such is specifically designated by KR 962 as a known component to be included in an electroless Pd plating bath and therefore its inclusion would have been predictable. Additionally, all 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 have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
KR 962 discloses using known electroless palladium stabilizers to stabilize the bath and discloses antimony. The examiner cites here Tanabe, also in the art of electroless plating palladium layers (abstract, 0092-0117) and discloses that electroless palladium baths, including palladium compounds, reducing agent, complexing agents and can include bath stabilizers, and disclosing using known stabilizers (0116), and specifically articulates antimony compounds such as antimony chloride and potassium antimony tartrate (0078-0081) and therefore, taking the level of one of ordinary skill in the art, it would have been obvious to have modified KR 962 to utilize the known palladium bath stabilizers, including antimony chloride and potassium antimony tartrate, as such are specifically articulated by Tanabe as used in palladium electroless deposition baths. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).Additionally, all 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 have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
As for the requirement of a sulfur stabilizer, Tanabe discloses e.g. sulfate stabilizers (see 0078) and also discloses “the stabilizers can be used alone or in combination” and therefore taking the level of one of ordinary skill in the art at the time of the invention, it would have been obvious to have used a combination of stabilizers, including those as specifically articulated by Tanabe, such as antimony stabilizers and sulfur stabilizers, with a reasonable expectation of predictable results.
KR 962 discloses the stabilizer in the amount that overlaps the range as claimed (see 0.1 mg/L to 5 mg/L). Additionally, Tanabe discloses the amount of stabilizer that overlaps the range as claimed (see 0116 in combination with 0081 related to the individual or when two or more stabilizers are used together). Additionally, the amount of stabilizer would have been recognized as a result effective variable and determination of the optimum concentration of the stabilizer would have been obvious to one of ordinary skill in the art at the time of the invention. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As for the reducing agent, Tanabe discloses known substituted for hypophosphite compounds for reducing agents include formic acid or hydrazine (0098-00105) and therefore using the known reducing agents would have been obvious as predictable.
Additionally, the examiner cites here KR 287, which explicitly discloses the known and suitable reducing agents include formic acid, hydrazine or hypophosphite and discloses that the selection of the reducing agent will have an effect on the composition of the deposited Pd layer, specifically stating “For example, when formic acid or its salt, hydrazine or its salt is used as a reducing agent, a pure palladium film is obtained. On the other hand, when a phosphoric acid compound such as hypophosphite or phosphite is used as a reducing agent other than formic acid or a salt thereof, a palladium plating film containing phosphorus is obtained.” Therefore, taking the references for its entire teaching and all that is known to one of ordinary skill in the art, it would have been obvious to have modified KR 962 to use the reducing agent of formic acid or hydrazine in place of hypophosphite with a reasonable expectation of predictable results, that is to deposit a pure Pd electroless layer.
Claim 2: The combination of reference would result in an electroless palladium plating compositions with bismuth and phosphorus that overlap the range as claimed (see discussion with respect to KR 287 related to presence or absence of phosphorus).
Claims 3-4: The source of antimony ions is taught as antimony chloride and potassium antimony tartrate and such meet the claims requirements as evidenced by applicant’s claim 4.
Claims 5-6: KR 962 discloses the temperature that overlaps the range as claimed (see 100F to 150F) and thus makes obvious the range as claimed, see also 120F at page 5. Additionally, the temperature as claimed is a result effective variable, directly affecting energy costs, see page 4 of KR 962, and therefore determination of the optimum temperature would have been obvious to one of ordinary skill in the art at the time of the invention. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim 7: KR 962 discloses immersion (page 4, stating “plating is accomplished by immersing”)
Claim 9-10: KR 962 discloses the stabilizer in the amount that overlaps the range as claimed (see 0.1 mg/L to 5 mg/L). Additionally, the amount of stabilizer would have been recognized as a result effective variable and determination of the optimum concentration of the stabilizer would have been obvious to one of ordinary skill in the art at the time of the invention. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 11-13: KR 962 discloses copper on the PCB has a “uniformly distributed palladium layer of 1µm” and therefore meets the requirements as uniformity of a film meets the coefficient of variation of the palladium plating rate across different size pads (see e.g. Figure 1 and accompanying text stating “The PCB 101 includes a copper component 104 coupled to a substrate 103 that insulates the copper component 104. The copper component may include the pad 106, the electrical contact 108, the through-hole 110, or any other electrical component, including copper”). Additionally, the claims themselves are properties of the electroless plating bath (i.e. “the coefficient of variation” and “the palladium plating rate” are physical properties of the bath), as evidenced by the explicit requirements of claim 1 as supported by the specification, and therefore since the prior art discloses each and every claim limitation, while the prior art does not measure the instantly claimed coefficient of variation on pads of different sizes, the prior art will necessarily have the same results as the prior art discloses the same bath components as instantly claimed and required to achieve the results.
The prior art and the present claims, reflected by claim 1, teach all the same process steps and thus the results obtained by applicants process must necessarily be the same as those obtained by the prior art. Therefore by electroless plating palladium with a source of palladium ions, complexing agent, reducing agent and antimony, it must necessarily result in the claimed coefficient of variation Either 1) the applicant and the prior art have different definitions for electroless palladium, or 2) the applicant is using other process steps or parameters that are not shown in the claims or disclosed as required to achieve the claimed results.
Claim 14-15: KR discloses 0.025 micron/minute (see page 5) and thus meets this claim requirement.
Claim 16-18: KR 962 fails to explicitly disclose that the plating bath is capable of achieving at least 4,6 or 8 metal turnovers; however, this requirement notes the capability and not the actual utilization and therefore because there is no quantification of such, the examiner maintains that the bath as specifically taught by KR 962 is capable of 4, 6, or 8 metal turnovers as desired but not required by the claims. Additionally, the claims themselves (number of metal turnovers) is a property of the electroless plating bath, as evidenced by the explicit requirements of claim 1 as supported by the specification, and therefore since the prior art discloses each and every claim limitation, while the prior art does not measure the instantly claimed capable of achieving a specific number of metal turnovers, the prior art will necessarily have the same results as the prior art discloses the same bath components as instantly claimed and required to achieve the results.
The prior art and the present claims, reflected by claim 1, teach all the same process steps and thus the results obtained by applicants process must necessarily be the same as those obtained by the prior art. Therefore by electroless plating palladium with a source of palladium ions, complexing agent, reducing agent and antimony, it must necessarily result in the claimed capability of achieving the claimed number of metal turnovers. Either 1) the applicant and the prior art have different definitions for electroless palladium, or 2) the applicant is using other process steps or parameters that are not shown in the claims or disclosed as required to achieve the claimed results.
Claims 19-21: KR 962 discloses a plating for a predetermined amount of time (see page 4) and specifically discloses 40 minutes (see Page 6), within the range as claimed (40 minutes is at least 15 minutes or at least 30 minutes) or close to the claimed range (40 minutes is close to 45) to make obvious such. Additionally, KR 962 discloses “the thickness of the palladium layer is controlled by immersing . . . in the bath . until the palladium reaches a predetermined thickness, see page 5, and therefore illustrates that the plating time is a result effective variable, directly affecting the thickness, and thus it would have been obvious to have determined the optimum plating time through routine experimentation to achieve the desired deposition thickness.
Claim 22-24: KR 962 discloses “uniformly distributed palladium layer of 1µm” and therefore meets the thickness requirement of these claims.
Claim 25; KR 287 discloses a sulfur stabilizer for Pd electroless including those as claimed (see e.g. thiol at “, thiadiazole, thiazole, thiazolidine, benzothiazole, thiophene, tetrahydrothiophene, methanethiol, benzenethiol, pentamethylene sulfide, Dimethyl sulfide, methyl mercaptan, ethyl mercaptan, allyl mercaptan, thiopropionic acid, thioacetic acid, ethyl methyl sulfide, 1-propanethiol, 2-propanethiol at page 4
Claim 26: KR 962 with Tanabe et al. alone or with KR 287 discloses all that is taught above. The requirement of phosphorus free is made obvious by Tanabe and KR 287 as specifically addressed above. The electroless palladium bath consisting essentially of the components as claimed, see discussion above, specifically with respect to palladium ions, complexing agent, reducing agent, antimony source and sulfur stabilizer. Additionally, the examiner notes pH adjuster, what can reasonably be considered a buffer, and aminocarboxylic acid (Tanabe at 0115 related to pH, surfactant and 0111 related to aminocarboxylic acids, KR 287 at other ingredients “As such an additive, a pH adjuster, a buffer, surfactant, etc. are mentioned, for example” and “ethylenediamine tetraacetic acid”, KR 962 discloses EDTA, pH ) are each embodied by the prior art and therefore using these well-known components in the Pd bath would have been obvious as predictable.
Claim(s) 2, 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 962 taken with Tanabe et al. and KR 287 as applied above and further with JP H11269658 A, hereinafter JP 658.
Claim 2 and 26: While the examiner maintains the position as set forth above, the examiner cites here JP 658, which explicitly discloses and motivates a palladium free palladium electroless bath (see abstract) including using formic acid and sulfur stabilizer (abstract), pH (“pH of the plating solution may be adjusted”) , and aminocarboxylic acid complexing agent mixtures (see “[t]he aminocarboxylic acids can be used alone or in an appropriate mixture”) and therefore taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have provided a phosphorus free Pd electroless plating bath as such is explicitly taught by JP 658 and one would desire such to reap the benefits as outlined therein (” phosphorus derived from the reducing agent component is mixed in the plating film, and the formed film has a disadvantage that the catalytic ability is inferior to that of a pure palladium film and the melting point is high.”)
Claim 25: JP 658 discloses sulfur stabilizer, such as thiodiglycolic acid, a thiol carboxylic acid as claimed and therefore using this known stabilizer would have been obvious as predictable.
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 962 with Tanabe et al. and KR 287 as applied above and further in view of WO 2017195430, hereinafter WO 430.
KR 962 with Tanabe et al. and KR 287as applied above fails to explicitly state the number of metal turnovers. While the examiner maintains the position as set forth above, the examiner cites here WO 430, which discloses a electroless palladium bath and discloses achieving 10 metal turnovers (“ the electroless palladium plating solution can be subjected to electroless plating without problems even when 10 metal turnover (MTO) is performed”) and therefore taking the references collectively it would have been obvious to one of ordinary skill in the art to have modified KR 962 with Tanabe et al. and KR 287 to achieve the MTOs as claimed to reap the benefits of replenishing the palladium bath via metal turnovers.
Conclusion
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718
