DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments to the claims and remarks filed November 5, 2025. Claims 1-8, 10-18, and 20 are pending, with claim 20 remaining withdrawn as directed to non-elected subject matter.
Claim Rejections - 35 USC § 112
Applicants’ amendments to the claims overcome the rejections of claims 10 and 13-18 under 35 U.S.C. 112(b).
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 1-10 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Penneck et al. (US Patent 5,209,987).
Regarding applicants’ claim 1, Penneck et al. discloses a wire and cable including layers comprising a copper substrate having formed thereon, in order, a nickel layer, aluminum, layer, aluminum oxide layer (Al2Ox), and aluminum oxide layer (Al2O3).
The copper substrate is an electrically conductive herterostructure core comprising a first electrically conductive metal where the aluminum layer is a second electrically conductive material. The Al2Ox aluminum oxide layer is a ceramic layer formed on or surrounding the second electrically conductive material (aluminum layer), with the stoichiometric aluminum oxide (Al2O3) layer being a dielectric layer disposed on and surrounding the ceramic layer.
While not explicitly disclosed, an intermetallic layer is understood to be formed by diffusion at the interface between the nickel and aluminum layers, thereby resulting in a intermetallic layer formed on and surrounding the first electrically conductive material. There is a reasonable expectation that an intermetallic layer of aluminum and nickel is inherently formed where deposition processes includes methods such as flame spraying (understood to comprise impacting at least partially molten particles on the surface) (col. 10 lines 59-66) and where Penneck et al. disclose that “Although the layers are clearly demarcated in the drawing by means of lines, it will be appreciated that such boundaries, may, and preferably will, not be formed in practice,…” (col. 20 lines 35-43).
With regards to the cross-sectional area, Penneck et al. exemplify a nickel layer thickness of 1 to 3 micrometers (col. 20 lines 45-48). Penneck et al. do not appear to disclose a thickness for the aluminum layer for this particular embodiment, however Penneck et al. disclose the aluminum layer when deposited in an alternate embodiment to have a thickness of 2 to 10 microns (col. 20 lines 22-26). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to discover a workable range for the thickness of the aluminum layer. There is a reasonable expectation that workable thickness values would include 2 to 10 microns which have been demonstrated to be suitable for the wire of Penneck et al.
Where the nickel layer is plated to 1 to 3 micrometers, and the aluminum layer is plated to 2 to 10 micrometers the resulting cross-sectional areas result in a range overlapping applicants’ claimed values. One of ordinary skill in the art would have found it obvious to select from the thickness values for the nickel and aluminum layer including values which result in a cross-sectional area ratio within the claimed range.
Regarding applicants’ claims 2-4, the timing of the formation of the layers are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. MPEP 2113.
Regardless of the timing during which a layer is formed the sequence of layers disclosed by Penneck et al. conforms to the claimed sequence of layers thereby satisfying the requirements imposed by the claimed process requirement.
Regarding applicants’ claim 5, the stoichiometric aluminum oxide (Al2O3) layer being a dielectric layer is a ceramic material.
Regarding applicants’ claim 6, a layer of aluminum is deposited on the layer of nickel as discussed above with respect to claim 1. The diffused nickel and aluminum layers at the boundary forms an intermetallic layer comprising aluminum and nickel.
Regarding applicants’ claim 7, Penneck et al. disclose that the Al2Ox layer is provided where x varies from 0 in a lower region to 3 at the top (col. 20 lines 26-30). The Al2Ox layer comprises Al2O3 and is formed on the aluminum layer (second electrically conductive layer).
The temperature range in which the intermetallic layer is formed is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. MPEP 2113.
The claimed temperature results in the formation if the intermetallic layer. Penneck et al. disclose nickel and aluminum layers having a boundary which would be composed of a nickel and aluminum intermetallic thereby meeting the requirements imposed by the claimed process.
Regarding applicants’ claim 8-9, Penneck et al. exemplify a nickel layer thickness of 1 to 3 micrometers (col. 20 lines 45-48). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a thickness approximately within the exemplified range including values less than 5 micrometers (claim 8), and values of approximately 1 micrometer which overlaps applicants’ claimed range of less than 1 micron (claim 9). While it is believed that the disclosed range overlaps applicants’ claimed range of less than 1 micron, the lower limit of 1 micrometer is so close to applicants’ claimed range that a nickel layer of 1 micrometer would be expected to have the same properties as applicants’ claimed nickel layer, thereby establishing a prima facie case of obviousness (MPEP 2144.05).
Regarding applicants’ claim 10, Penneck et al. do not appear to disclose a specific embodiment where a nitride layer is present in combination with the nickel layer, however Penneck et al. disclose deposition of a titanium nitride layer to increase toughness of the article followed by an organic polymer layer (col. 20 lines 31-34). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to include the titanium nitride layer and organic polymer layer with the nickel containing example discussed above, in order to provide the wire with increased toughness. Where these layers are provided the titanium nitride layer may be considered the ceramic layer and the organic polymer layer may be considered the dielectric layer.
Regarding applicants’ claim 12, the nickel layer is considered to be the first electrically conductive layer, and the aluminum layer is considered to be the second electrically conductive layer. Nickel is known to have an approximate density of 8.9 g/cm3 where aluminum is known to have a density of approximately 2.7 g/cm3 resulting in a density ratio of approximately 3.3 which falls within the claimed range of 2-4.
Regarding applicants’ claim 13, Penneck et al. discloses a wire and cable having layers comprising a copper substrate having formed thereon, in order, a nickel layer, aluminum, layer, aluminum oxide layer (Al2Ox), and aluminum oxide layer (Al2O3).
The copper substrate is an electrically conductive herterostructure core comprising a first electrically conductive metal where the aluminum layer is a second electrically conductive material. The Al2Ox aluminum oxide layer is a ceramic layer formed on or surrounding the second electrically conductive material (aluminum layer), with the stoichiometric aluminum oxide (Al2O3) layer being a dielectric layer disposed on and surrounding the ceramic layer.
While not explicitly disclosed, an intermetallic layer is formed by diffusion at the interface between the nickel and aluminum layers, thereby resulting in a intermetallic layer formed on, and surrounding, the first electrically conductive material. There is a reasonable expectation that an intermetallic layer of aluminum and nickel is inherently formed where deposition processes includes methods such as flame spraying (understood to comprise impacting at least partially molten particles on the surface) (col. 10 lines 59-66) and where Penneck et al. disclose that “Although the layers are clearly demarcated in the drawing by means of lines, it will be appreciated that such boundaries, may, and preferably will, not be formed in practice,…” (col. 20 lines 35-43).
Penneck et al. do not appear to disclose a specific embodiment where a nitride layer is present in combination with the nickel layer, however Penneck et al. disclose deposition of a titanium nitride layer to increase toughness of the article followed by an organic polymer layer (col. 20 lines 31-34). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to include the titanium nitride layer and organic polymer layer with the nickel containing example discussed above, in order to provide the wire with increased toughness. Where these layers are provided, the titanium nitride layer may be considered to be the ceramic layer, and the organic polymer layer may be considered to be the dielectric layer.
The nickel layer is considered to be the first electrically conductive layer and the aluminum layer is considered to be the second electrically conductive layer. Nickel is known to have an approximate density of 8.9 g/cm3 where aluminum is known to have a density of approximately 2.7 g/cm3 resulting in a density ratio of approximately 3.3 which falls within the claimed range of 2-4.
Penneck et al. exemplify a nickel layer thickness of 1 to 3 micrometers (col. 20 lines 45-48). Penneck et al. do not appear to disclose a thickness for the aluminum layer for this particular embodiment, however Penneck et al. disclose the aluminum layer when deposited in an alternate embodiment to have a thickness of 2 to 10 microns (col. 20 lines 22-26). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to discover a workable range for the thickness of the aluminum layer. There is a reasonable expectation that workable thickness values would include 2 to 10 microns which have been demonstrated to be suitable for the wire in an alternate embodiment.
Where the nickel layer is plated to 1 to 3 micrometers, and the aluminum layer is plated to 2 to 10 micrometers the resulting cross-sectional areas result in a range overlapping applicants’ claimed values. One of ordinary skill in the art would have found it obvious to select from the thickness values for the nickel and alundum layers, including values which result in a cross-sectional area ratio within the claimed range.
Regarding applicants’ claim 14-16, the timing of the formation of the layers are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. MPEP 2113.
Regardless of the timing during which a layer is formed the sequence of layers conforms to the claimed sequence of layers thereby satisfying the requirements imposed by the claimed process requirement.
Regarding applicants’ claim 17, Penneck et al. disclose that the Al2Ox layer is provided where x varies from 0 in a lower region to 3 at the top (col. 20 lines 26-30). The Al2Ox layer comprises Al2O3 and is formed on the aluminum layer (second electrically conductive layer).
The temperature range in which the intermetallic layer is formed is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. MPEP 2113.
The claimed temperature results in the formation if the intermetallic. Penneck et al. disclose nickel and aluminum layers having a boundary which would be composed of a nickel and aluminum intermetallic thereby meeting the requirements imposed by the claimed process.
Regarding applicants’ claim 18, Penneck et al. exemplify a nickel layer thickness of 1 to 3 micrometers (col. 20 lines 45-48). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a thickness approximately within the exemplified range including values less than 5 micrometers (claim 8), and values of approximately 1 micrometers which overlaps applicants’ claimed range of less than 1 micron (claim 9). While it is believed that the disclose range overlaps applicants’ claimed range of less than 1 micron, the lower limit of 1 micrometer is so close to applicants’ claimed range that a nickel layer of 1 micrometer would be expected to have the same properties as applicants’ claimed nickel layer thereby establishing a prima facie case of obviousness (MPEP 2144.05).
Response to Arguments
Applicants’ arguments filed November 5, 2025 have been considered but have not been found to be persuasive.
Applicants argue that none of the examples disclosed by Penneck et al. disclose both Al and Ni layers especially where the aluminum layer is thicker than the Ni layer however i) Penneck et al. do provide for a layer of both nickel and aluminum, ii) the examples do indeed include such embodiments, and iii) applicants have not specifically pointed out where the examiner has erred in concluding that such an embodiment is obvious.
Penneck et al. disclose an embodiment including a nickel layer and an aluminum layer (col. 20 lines 45-48). Penneck et al. do not appear to explicitly limit the thickness of the aluminum layer. When determining the thickness of the aluminum layer one of ordinary skill in the art would have been informed by the teachings of the reference as a whole. There is a reasonable expectation that other embodiments for which the aluminum layer thickness is disclosed includes thickness values that may be successfully employed in the embodiment in question. Penneck et al. disclose one such embodiment where the aluminum layer is deposited to a thickness of 2 to 10 microns (col. 20 lines 22-26).
While applicants suggest that there are no examples that suggest an aluminum layer having a thickness greater than the nickel layer, such examples are found to be present. Example 70 includes a nickel layer of 1.5µm with an aluminum layer of 3µm resulting an a time to failure in propane flame exceeding the testing parameters. Additionally, Examples 72 and 76 also present with aluminum and nickel layers where the aluminum layer is thicker than the nickel layer, both of which show beneficial results.
Given that Penneck et al. disclose the use of a nickel layer of 1-3µm in combination with an aluminum layer, and that the reference supports a reasonable expectation of success in selecting an aluminum thickness of 2 to 10µm including examples where the aluminum layer excretes the thickness of the nickel layer, the claims are not found to distinguish over Penneck et al. Applicants’ amendments to the claims have overcome the rejections under 35 U.S.C. 102 however for those reasons as provided for rejection of claims 11 and 19 (now canceled) the rejections over Penneck et al. are maintained now under 35 U.S.C. 103.
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 ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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/Adam Krupicka/Primary Examiner, Art Unit 1784