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 .
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.
Claims 1-3, 5, and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Dobashi et al (WO2005/122297A1). Dobashi is read from an English machine translation which has been placed in the application file.
With regards to claim 1, Dobashi discloses a laminated metal foil with carrier foil formed by an electrolytic method (i.e., a laminated electrolytic foil) comprising a nickel or a nickel alloy layer 6 (i.e., second metal layer formed from Ni or an Ni alloy) laminated to a copper layer 5 (i.e., a first metal layer formed from Cu, the first and second metal layers being laminated together) (Dobashi - Translation: para. [0032] and [0038]-[0039]; claim 1; Figs. 2a-2c). Dobashi discloses a total thickness (i.e., overall layer thickness for the laminated electrolytic foil) of 10 microns or less, which overlaps the claimed range of 3 to 15 microns (Dobashi - Translation: claim 1). Similarly, Dobashi discloses a tensile strength of 50 kgf/mm2 or more (i.e., about 490 MPa or more), which overlaps the claimed range of 700 MPa or higher (Dobashi - Translation: para. [0017]). Instances of overlapping ranges have been held sufficient to establish a prima facie case of obviousness. See MPEP 2144.05. Furthermore, the Ni or Ni alloy layer of Dobashi and the second metal layer of the claims are identical in composition (i.e., both made of only Ni which is formed via a sulfamate/sulfamic acid bath plating process) (see above discussion; Dobashi: para. [0052]). A composition and its properties have been held to be inseparable, per MPEP 2112. Therefore, although Dobashi does not appear to explicitly disclose the claimed crystal orientation indices, claimed crystal orientation index ratio, or claimed conductivity, these properties would have been expected of the Ni layer of Dobashi as it is substantially identical in composition to the claimed layer (see above discussion). It is also clear that the Ni of Dobashi is matte Ni, as paragraph [0107] of the present specification (PGPub) admits that known sulfamate bath processes result in matte nickel plating (i.e., and since Dobashi uses such a process, its nickel must be matte Ni). In further support, the Examiner notes that paragraphs [0061]-[0064] indicate that crystal orientation indices outside the claimed range prevent an increase in strength and leads to pinholes. Since the Ni layer of Dobashi has the claimed tensile strength per present claim 1, the Ni layer of Dobashi should have the claimed crystal orientation index based on the admissions in the present specification (see above discussion). In addition, as best understood from Dobashi, the thickness of the Ni or Ni alloy layer 6 (i.e., second metal layer thickness) has a thickness of 0.5 to 3 microns compared to an overall thickness of 10 microns or less (Dobashi: para. [0034]). This yields a thickness of the Ni or Ni alloy layer relative to the sum of the Ni or Ni alloy layer and Cu layer of 0.05 (i.e., 0.5 microns / 10 microns = 0.05) to about 1 (i.e., the thickness of the overall laminate is essentially the same as the thickness of the Ni or Ni alloy layer). This range overlaps the claimed range of 0.45 or greater but 0.9 or smaller, thereby establishing a prima facie case of obviousness. See MPEP 2144.05.
With regards to claim 2, Dobashi discloses a copper layer 5 located between two separate Ni or Ni alloy layers denoted by numeral 6 (i.e., a three metal layers laminated in order, the first and third metal layers being formed of a second metal layer composition formed of Ni or an Ni alloy, and the second metal layer being formed of a first metal layer composition formed of Cu) (Dobashi: para. [0032]; Fig. 2c). It is noted that both Ni or Ni alloy layers are layers according to Dobashi (i.e., and therefore, identical).
With regards to claim 3, Dobashi further discloses the inclusion of a carrier foil 2 made of a copper foil, which, per Fig. 2c of Dobashi, leads to a laminate having a layer 6 formed of Ni or an Ni alloy located between two copper layers 2 and 5, respectively (i.e., a three metal layers laminated in order, the first and third metal layers being formed of a second metal layer composition formed of Cu alloy, and the second metal layer being formed of a first metal layer composition formed of Ni or an Ni alloy) (Dobashi: para. [0022]). Note that “laminated in order” does not preclude the existence of additional intervening layers located between the claimed layers. In addition, it is noted that both Ni or Ni alloy layers are layers according to Dobashi (i.e., and therefore, identical).
With regards to claim 5, the Ni or Ni alloy layer of Dobashi and the second metal layer of the claims are identical in composition (i.e., both made of only Ni) (see above discussion). A composition and its properties have been held to be inseparable, per MPEP 2112. Therefore, although Dobashi does not appear to explicitly disclose the claimed hardness, the claimed hardness would have been expected of the Ni layer of Dobashi as it is substantially identical in composition to the claimed layer (see above discussion). In further support, the Examiner notes that paragraphs [0081]-[0082] indicate that hardnesses outside the claimed range lead to an inability to obtain a preferred strength and/or difficulty in plating. Since the Ni layer of Dobashi has the claimed tensile strength per present claim 1 and is disclosed as plated, the Ni layer of Dobashi should have the claimed hardness based on the admissions in the present specification (see above discussion).
With regards to claim 7, the Ni alloy may further contain iron (i.e., Fe) (Dobashi: claim 2).
With regards to claim 8, Dobashi discloses a total thickness (i.e., overall layer thickness for the laminated electrolytic foil) of 10 microns or less, which overlaps the claimed range of 4 to 10 microns, thereby establishing a prima facie case of obviousness (Dobashi - Translation: claim 1). See MPEP 2144.05.
With regards to claim 9, the structure of Dobashi is incorporated into a battery (Dobashi: abstract; claim 1).
With regards to claim 10, the Ni or Ni alloy layer of Dobashi and the second metal layer of the claims are identical in composition (i.e., both made of only Ni) (see above discussion). A composition and its properties have been held to be inseparable, per MPEP 2112. Therefore, although Dobashi does not appear to explicitly disclose the claimed crystal orientation index, the claimed crystal orientation index would have been expected of the Ni layer of Dobashi as it is substantially identical in composition to the claimed layer (see above discussion).
With regards to claim 11, the Ni or Ni alloy layer of Dobashi and the second metal layer of the claims are identical in composition (i.e., both made of only Ni) (see above discussion). A composition and its properties have been held to be inseparable, per MPEP 2112. Therefore, although Dobashi does not appear to explicitly disclose the claimed crystal orientation index, the claimed crystal orientation index would have been expected of the Ni layer of Dobashi as it is substantially identical in composition to the claimed layer (see above discussion).
With regards to claim 12, Dobashi discloses a thickness ratio of 0.05 to about 1 (see above discussion). This range overlaps the claimed range of 0.5 or greater but 0.8 or smaller, thereby establishing a prima facie case of obviousness. See MPEP 2144.05.
With regards to claim 13, Dobashi discloses an overall thickness for its foil of 10 microns or less, which overlaps the claimed range of 6 to 15, thereby establishing a prima facie case of obviousness, per MPEP 2144.05. In addition t Ni or Ni alloy layer of Dobashi and the second metal layer of the claims are identical in composition (i.e., both made of only Ni) (see above discussion). A composition and its properties have been held to be inseparable, per MPEP 2112. Therefore, although Dobashi does not appear to explicitly disclose the claimed tensile strength, the claimed tensile strength would have been expected of the Ni layer of Dobashi as it is substantially identical in composition to the claimed layer (see above discussion).
Response to Arguments
Applicant’s arguments/amendments with respect to the grounds of rejection under 35 U.S.C. 112(b) and 35 U.S.C. 112(d) have been fully considered and they are found persuasive. Applicant has clarified the claimed crystal orientation index and ratio, and therefore, the grounds of rejection under 35 U.S.C. 112(b) and 35 U.S.C. 112(d) have been withdrawn.
Applicant’s arguments have been fully considered but they are not found persuasive.
Applicant argues that the claimed invention includes advantageous effects, including the claimed tensile strength and conductivity at the claimed thickness. Applicant argues that the crystal orientation must be controlled to achieve these properties, and there is no reason to believe that the laminated electrolytic foil of Dobashi would inherently have all of the claimed properties. These arguments are not found persuasive since, as best understood, Dobashi still discloses a laminate having the same materials as Applicant’s invention (i.e., nickel as claimed) formed by a substantially identical process (i.e., use of a known sulfamate bath processes to form matte nickel plating on a layer of copper). Therefore, the claimed properties are still expected of the laminate of Dobashi.
Applicant argues that the Examiner’s reasoning is improper with respect to the presence of the claimed crystal index orientation ratio based on Dobashi’s lack of pinholes is improper. Applicant argues that based on the Examiner’s reasoning with respect to pinholes, inherency does not necessarily flow. Applicant presents other factors, such as crystal grain size and residual stress, are also factors. The Examiner agrees. However, ultimately, the claimed properties are still considered inherent to the laminate of Dobashi, as Dobashi forms its electrolytic foil from substantially identical materials using a substantially identical process. Any difference in crystal grain size and/or residual stress would have also been considered inherent.
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.
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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