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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 18th, 2025, has been entered.
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.
Claims 1-3, 5, and 7-10 are 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 1 recites the claimed Ni in the second metal layer as having a crystal orientation index of 0.3 or greater in a (200) plane, and further, a crystal orientation index of 0.5 to 3.7 in the (220) plane. However, later in the claim, the crystal orientation index of the (200) plane and (220) plane are defined as having a value of 0.1 to 5.0. In other words, claim 1 provides two separate ranges for the claimed crystalline orientation index in the (200), and also, two separate ranges for the claimed crystalline orientation index in the (220) plane. It is not clear which ranges are intended in the present claim. In the interest of compact prosecution, if either range is met, the claim will be considered to be met.
Claims 2-3, 5, and 7-10 are rejected as indefinite due to dependence on indefinite claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites crystal orientation indices for the (200) and (220) planes of 3.7 or smaller (i.e., ranges which are unbounded below). However, claim 1 already specifies lower bounds of 0.1 for the crystal orientation indices for the (200) and (220) planes. Therefore, claim 10 fails to include all the limitations of claim 1, from which it depends (i.e., claim 10 fails to include the lower bounds in the ranges of claim 1).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 7-10 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 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). 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 and is not disclosed as containing pinholes, 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). 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 and is not disclosed as containing pinholes, the Ni layer of Dobashi should have the claimed crystal orientation index based on the admissions in the present specification (see above discussion).
Response to Arguments
Applicant’s arguments have been fully considered but they are not found persuasive.
Applicant argues that hard nickel plating, such as that of Dobashi, is bright nickel plating, and not matte nickel plating. Applicant provides several websites in support. These arguments are not found persuasive as the cited websites do not appear to support the entirety of Applicant’s arguments. The cited websites make no mention of hard nickel. Dobashi is found to form its nickel via a sulfamate electroplating process, which, as best understood from Applicant’s specification, results in a matte nickel layer. Applicant’s cited websites further support this assertion (i.e., in the cited websites, the sulfamate nickel plating is described as matte nickel plating). Therefore, the nickel plating of Dobashi is still considered to be, more specifically, matte nickel plating.
Applicant argues that the claimed invention achieves excellent strength while maintaining ductility, and that such features are neither described nor suggested by Dobashi. This argument is not found persuasive as Dobashi describes its nickel plating as having improved strength (i.e., implies that, at least, improved strength is acknowledged by Dobashi). Moreover, although Applicant argues the existence of advantages in the claimed invention, such advantages are not sufficient to rebut a case of obviousness, unless such advantages are considered unexpected (i.e., amount to a showing of unexpected results). Applicant has not provided sufficient evidence indicating that the argued improvements to strength and ductility constitute unexpected results.
Conclusion
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783