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 without traverse of Group II, claims 9-12, in the reply filed on 12 May 2026, is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 May 2026.
Information Disclosure Statement
It is noted that copies of each of the foreign patent documents and non-patent literature documents listed on the IDS filed 10 April 2025 for the instant application can be found in parent application number 17/703,774. These references have been considered.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US 10,056,707, previously cited) in view of Gray et al. (US 1,779,809, previously cited).
Claim 9: Anderson teaches an electrical contact that includes an electrically conductive base, and a multi-layered coating on an outer surface of the base, wherein the multi-layered coating can include a metallic layer of a noble metal or an alloy of noble metal, a layer of anti-tarnish material on the metallic layer, etc. (Col. 1, l. 61 to Col. 2, l. 3). The metallic layer of noble metal or an alloy of noble metal can be made from gold, silver, a combination thereof, etc. (Col. 7, l. 61 to Col. 8, l. 18). The anti-tarnish material can have any suitable thickness as desired, for instant from about 0.005 micrometers to about 2 micrometers (i.e. about 5-2000 nm), which overlaps the instantly claimed thickness of the layer adjacent the silver/gold layer. The courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. However, Anderson does not specify bismuth as an anti-tarnish material (i.e. as a layer of bismuth adjacent the silver/gold layer).
In a related field of endeavor, Gray teaches tarnish-resisting silver or silver plate alloy and articles consisting of or having a surface consisting of such an alloy (Col. 1, l. 1-5). Gray further teaches that tarnish-resisting silver is accomplished by combining with silver or silver plate a metal that will have a shielding action as to tarnish so that the article having such surface will be tarnish resisting, and wherein metals having this shielding action include bismuth etc. (Col. 1, l. 20-39).
As Anderson and Gray both teach anti-tarnish materials for silver, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the electrical contact of Anderson to include where noble metal layer is silver or silver alloy (i.e. as a specifically named material taught by Anderson) and where the anti-tarnish layer is a layer of bismuth because Gray teaches bismuth to be a conventionally known anti-tarnish material for use with silver (i.e. simple substitution of one known element for another to obtain predictable results), and one would have had a reasonable expectation of success.
Claim 10: Anderson teaches the electrically conductive base of the electrical contact can include an electrically conductive substrate layer made from any suitable electrically conductive material such as copper, a copper alloy, etc. (Col. 7, l. 27-47). Brass is a conventionally well-known copper alloy (i.e. a brass base) and therefore an obvious choice of materials based on the teaching of a copper alloy. Anderson teaches that the base of the electrical contact can further include a barrier layer on the substrate (i.e. adjacent the brass base), wherein the barrier layer can be made from nickel etc. (Col. 7, l. 27-47). The metallic layer of noble metal or an alloy or noble metal is coated on to the base, for instance onto the barrier layer (i.e. the silver/gold layer is adjacent the nickel barrier layer) (Col. 7, l. 61-67).
Claims 11-12: Anderson teaches that the anti-tarnish layer (i.e. the bismuth layer) can have any suitable thickness as desired, for instant from about 0.005 micrometers to about 2 micrometers (i.e. about 5-2000 nm), which overlaps the instantly claimed thickness. See MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shibuya et al. (US 10,530,084) teaches a metallic material for electronic components (Col. 1, l. 9-13). The electronic component includes a lower layer formed on the base material, an intermediate layer formed on the lower layer, an upper layer formed on the intermediate layer, and an outermost layer formed on the upper layer (Col. 9, l. 1-7). The base material may be copper or copper alloys (Col. 9, l. 10-19). The lower layer is one or two or more selected from constituent element group A which includes Ni (i.e. nickel) which prevents the diffusion of the constituent metal(s) of the base material into the upper layer (i.e. the lower layer is a barrier layer) (Col. 12, l. 49-62). The intermediate layer is one or two or more selected from the constituent element group B, which includes Ag, Au, etc. (i.e. silver or gold or alloy of these are clear choices) (Col. 11, l. 6-21). Shibuya teaches an upper layer that is an alloy of one or two or more selected from the constituent element group B, which includes Ag, Au, etc., and one or two selected from the constituent element group C, which includes Sn and In (Col. 9, l. 58-64) (i.e., both the intermediate layer and the upper layer may be layers that include silver alloy or gold alloy). The outermost layer includes one or two selected from a constituent element group C, which includes Sn and In, and has a thickness of 0.005 µm or more and less than 0.30 µm (i.e. about 5-300 nm) (Col. 9, l. 20-57). The content of the metal(s) of the constituent element group C is 50% by mass or more of Sn and In, and the rest of the alloy may be composed of one or two or more selected from Bi, etc. (Col. 13, l. 30-39).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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