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
The amendment and response filed on January 16, 2026 has been entered. Claims 1 and 4-16 are pending.
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.
Claim 12 is 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 12, which depends upon independent claim 1, recites that the contact structure further comprises one or more overlaying layers formed on the finish layer. Claim 1 has been newly amended to require that the finish layer is a top layer of the contact structure. Thus, claim 12 is indefinite in that it is not clear how the finish layer can be the top layer of the contact structure, as now required in claim 1, when there is an overlaying layer formed thereon, as required in claim 12.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1, 4-8, and 11-16 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Clifton et al. (US Pub 2018/0053115).
Regarding the newly added limitation that the finish layer is a top layer of the contact structure, Clifton discloses an embodiment where a silicone substrate contains a first metal oxide layer, i.e., titanium dioxide layer, and a second metal oxide layer which is a conductive ruthenium oxide [0022]. Further, as depicted in Figure 2, Clifton additionally discloses an embodiment wherein an M-layer, which corresponds to the claimed finish layer, is the top layer of the electrical contact structure. As shown in Figure 2, the M-layer contains a ruthenium oxide sub-layer. Alternatively, Clifton discloses that the M-layer “may comprise any one of or a combination of” (emphasis added) conductive metal and metal oxides listed in paragraph [0027]. Several ruthenium oxides are provided in this listing. Thus, it would have been obvious to one of ordinary skill in the art to have used one of the ruthenium oxides specifically disclosed in Clifton as the M-layer, motivated by the desire to obtain an electrical contact structure having the properties associated with the use of a ruthenium oxide conductive layer.
Regarding claims 1, 4, 5, 13, and 15, Clifton discloses an electrical contact structure comprising a substrate and a finish layer of a single oxide layer comprising ruthenium oxide and/or iridium oxide ([0004], [0015], [0022]). Clifton does not mention the contact resistance, L* value, or a* value of the finish layer. However, since Clifton discloses the same materials are being used for the finish layer and the Applicant’s specification does not set forth any unique processing of the finish layer in order to obtain the claimed properties/characteristics of the film, it is reasonable to conclude that the finish layer of Clifton would inherently exhibit the claimed contact resistance , L* value, and a* value. That is, the examples set forth in the specification simply state that the RuO2 finishing film is electrodeposited onto a substrate [0037]. Likewise, the finishing film in Clifton can be electrodeposited onto a substrate [0027]. Accordingly, these properties/characteristics are deemed to be inherent or obvious over the teachings of Clifton. The burden has been shifted to the Applicant to provide evidence that the claimed property/characteristics are not inherent to the finish layer of Clifton. See MPEP 2112, Sections III & V.
Regarding claims 6-8, Clifton discloses that the metal oxide layer can include some amount of unoxidized metal, such as Ru [0016]. One of ordinary skill in the art would understand the disclosure of “some amount of unoxidized metal” to read on the claimed range of 0-90 atomic % of claim 8.
Regarding claims 11 and 12, Figure 2 of Clifton illustrates an embodiment where there are both an intervening layer formed between the substrate and the finish layer and an overlaying layer, i.e., top sub-layer of M-layer, formed on the finish layer. Further, Figure 1 of Clifton discloses an embodiment wherein a I-layer and barrier layer, which corresponds to the claimed overlaying layer, is provided between the conductive metal oxide layer.
Regarding claim 14, ruthenium and iridium oxides are inherently black. See the Chemicalbook website citation provided in the February 14, 2022 Office action.
Regarding claim 16, Clifton discloses that the ruthenium oxide layer is crystalline [0014].
Claim Rejections - 35 USC § 103
Claims 1, 4-11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Curran et al (US 2018/0062294 A1) in view of Clifton et al (US 2018/0083115 A1.
Regarding the newly added limitation that the metal oxide layer is a top layer of the electrical contact structure, Figures 3A and 3B illustrates an embodiment wherein the metal oxide layer is a top layer of the contact structure.
Regarding claim 1, 4-5 and 13-14, Curran discloses an electrical contact (structure) comprising a metal substrate and an electrically conductive metal oxide formed on the metal substrate [0004] and [0005]. Curran discloses the metal oxide layer (one or more metal oxides) provides a color matching the enclosure. Curran discloses the metal oxide material as having a contact resistance of less than 1 ohm (1000 milliohms) [0024] and discloses examples with L* values of less than 60 (Fig. 7).
Curran does not teach the metal oxide (finish) layer as ruthenium or iridium oxide. However, Curran teaches the metal oxide needs to be conductive [0005] and teaches metal oxides such as oxides of chromium, rhenium, and molybdenum, [0023]. Clifton also teaches conductive metal oxides and teaches ruthenium dioxide and iridium oxide as functionally equivalent conductive metal oxides to oxides of chromium, rhenium, and molybdenum (claim 9) and as evidenced by Chemical book website: “ruthenium oxide” and “iridium oxide”, both oxides are black in color and thus would produce a black color match.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to choose to replace the metal oxide of Curran with either a ruthenium oxide or an iridium oxide or both as one of a limited number of possible materials taught by Clifton as a functionally equivalent conductive metal oxide for the electrical contact structure of Curran KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). See MPEP 2143. Since the prior art does disclose the material of ruthenium oxide and iridium oxide which is the same as claimed and the since the conductivity of both ruthenium oxide and iridium oxide are additionally taught by Clifton as being similar to the conductivity of chromium oxide, it is contended that the metal oxides of the prior art are capable of delivering the same contact resistance within the claimed range and the materials being the same would have the same color and thus L* of less than or equal to 60 (as in claim 1) and a* of less than or equal to 20 (as in claim 13) as claimed. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the contact resistance, L* and a*), are necessarily present in the prior art material. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.
Regarding claims 6-8, Curran in view of Clifton discloses all of the limitations of claim 1 and further discloses a metal dopant in trace amounts [0025] (between 0-90 at. %) such as gold [0036] or rhenium [0037] may be included in the metal oxide.
Regarding claim 9, Curran in view of Clifton discloses all of the limitations of claim 1 and further discloses examples with metal oxide (finish) layer thicknesses of at least 100 nm (0.1 micrometers).
Regarding claim 10, Curran in view of Clifton discloses all of the limitations of claim 1 and further discloses the substrate may comprise copper [0037].
Regarding claim 11, Curran in view of Clifton discloses all of the limitations of claim 1 and further discloses there may be (intervening) layers such as a reflective layer between the substrate and the metal oxide (finish) layer [0043].
Regarding claim 15, Curran in view of Clifton discloses all of the limitations of claim 1 and Curran teaches an electrically conductive metal oxide on the metal substrate [0005], indicating that the metal oxide (finish) layer can be a single metal oxide and a single layer.
Regarding claim 16, Clifton discloses that the ruthenium oxide layer is crystalline [0014].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Curran et al (US 2018/0062294 A1) in view of Clifton et al (US 2018/0083115 A1) further in view of Dadvand et al (US 8,445,116 B2).
Curran does not teach one or more overlaying layers formed on the finish layer. However, Dadvand teaches an outer organic, self-assembled monolayer or carbon nanotube layer to provide a lubricant layer. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to add an organic, self-assembled monolayer or carbon nanotube layer as taught by Dadvand to the outside of the metal oxide layer of Curran to provide a lubricant layer.
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive.
The 35 U.S.C. 112(b) rejection over claim 8 is withdrawn in view of the present amendment.
The argument with respect to the newly added limitation of that the finish layer is a top layer of the contact structure is addressed above in paragraphs 10 and 17.
The argument that ruthenium oxide and iridium oxide are only described very briefly in Clifton and as part of a lengthy list of compositions that may be mixed with tungsten oxides is not persuasive. First, Clifton specifically exemplifies the use a ruthenium oxide in paragraphs [0015] and [0022] as the metal oxide layer and depicts this in the embodiment shown in Figure 2. The examiner does not consider this to merely be “described very briefly” as argued. Second, as set forth in MPEP 2131.02, a reference that names a species anticipates that specie no matter how many other species are named. Thus, Curran’s specific disclosure of the use of ruthenium oxide is deemed to be sufficiently specific to lead one skilled in the art to select this equivalent conductive metal oxide component.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781