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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/10/2026 has been entered.
Election/Restrictions
Newly submitted claim 9 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
New claim 9 requires that a droplet volume of the liquid-state material ejected that is from 0.2 pl to 2 pl, which is a much narrower scope than that which has been previously presented and examined in claims 1-8. This limitation is not required by the examined claims 1-8. Moreover, claim 1 requires that the porous base material be formed of polyimide, which is not required in new claim 9. As such, there is two way distinctness between these two related processes. There would be an undue search burden if these inventions were examined together.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 9 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 of this title, 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Furusawa et al. (US 2003/0213614 A1), in view of Nukada et al. (US 2017/0369665 A1).
Regarding claim 1, Furusawa discloses a method of forming a conductive pattern (Title; Abstract) comprising forming a conductive pattern (“conductive pattern”) by ejecting a liquid-state material containing conductive fine particles onto a porous base material (2: porous silica or alumina) having a first major surface (fig. 1: top, as viewed), an opposite second major surface(fig. 1: bottom, as viewed), and a plurality of side surfaces (fig. 1: at least left and right sides, as viewed) that connect the first major surface to the second major surface (fig. 1; pars. 0052 and 0054), wherein the conductive fine particles have an average particle size of 1 nm to 200 nm (1 nm to 100 nm: par. 0070), and the porous base material is formed of a single material (par. 0054: “at least one of porous silica [and] alumina”, the term “at least one” includes a reasonable interpretation that there is only one of the materials) with a plurality of *cavities (“fine voids”) that are positioned between the first major surface and the second major surface (fig. 1), and the porous base material includes *communication holes (others of the “fine voids”), an average diameter (8 nm to 50 nm or 3 nm to 10 nm: pars. 0055-0056) of the communication holes being less than or equal to the average particle size of the conductive fine particles (3 nm is less than all of 3.0001 nm to 100 nm). Furusawa, however, does not explicitly disclose that the porous base material is formed of polyimide and includes communication holes through which the plurality of cavities are in communication.
*Note: though claimed in such a manner as to imply more structure, the disclosed “cavities and communication holes” are nothing more than cavities in a porous material which are connected to one another, the locations of connection between cavities being the “communication holes”. That is to say, the porous base material is porous according to the commonly understood definition and the “cavities and communication holes” are simply a means of renaming the connected pores of the porous material.
Nukada teaches that it is well known to perform a similar method (Title; Abstract) comprising forming a porous base material (62), wherein the porous base material is formed of polyimide with a plurality of cavities (7) and includes communication holes (marked in annotated fig. 1D, below) through which the plurality of cavities are in communication (fig. 1D; pars. 0006 and 0017).
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Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Furusawa to incorporate the material being selected as polyimide and the communication holes of Nukada. POSITA would have realized that a porous material would naturally have large and small openings therein by virtue of simply being porous. Though Furusawa does not explicitly disclose this limitation, it is obvious that the base material of Furusawa is similar if not effectively identical to that of Nukada and can be easily and readily interchanged with the porous material of Nukada to achieve the desired incorporation of conductive material therein. Moreover, there is no indication in the instant disclosure that any special porous base material was devised or that any surprising results were derived from simply using the old method of Furusawa with the well-known cavities and communication holes of Nukada. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. With respect to the selection of polyimide as the porous material, it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. It is well known to use polyimide in circuit manufacture and as a porous material. In fact, the cited Nukada reference is the U.S. filing which has priority to JP 2017-226777, which was cited by the Applicant and is admitted as being obvious prior art in at least par. [0022] of the instant application. In said paragraph of the instant specification the Applicant has stated that the porous base material as claimed “can be produced, for example, by the production method of JP-A-2017-226777”. Accordingly, this material selection is obvious based upon its known suitability in the art, and as admitted by the Applicant.
Regarding claim 2, Furusawa in view of Nukada teaches the method of claim 1 as detailed above, and Furusawa further discloses that a viscosity of the liquid-state material is from 1mPa•s to 10mPa•s (par. 0080).
Regarding claim 3, Furusawa in view of Nukada teaches the method of claim 1 as detailed above, and Furusawa further discloses that a surface tension of the liquid-state material is from 20 mN/m to 40 mN/m (par. 0077).
Regarding claim 4, Furusawa in view of Nukada teaches the method of claim 1 as detailed above, and Furusawa further discloses that the liquid-state material contains water (par. 0075).
Regarding claim 5, Furusawa in view of Nukada teaches the method of claim 1 as detailed above, and Furusawa further discloses that the porous base material is subjected to a liquid repellent treatment (par. 0066).
Regarding claim 6, Furusawa in view of Nukada teaches the method of claim 1 as detailed above, and Furusawa further discloses that a droplet volume of the liquid-state material ejected that is from 0.2 pl to 20 pl (4pl: par. 0128).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Furusawa in view of Nukada, further in view of Yamamoto (US 2006/0116000 A1).
Regarding claim 7, Furusawa in view of Nukada teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Furusawa, however, does not appear to teach that a nozzle diameter in an ejecting unit that ejects the liquid-state material is from 10 µm to 25 µm.
Yamamoto teaches that it is well known to perform a similar method (Title; Abstract) including ejecting a liquid-state material containing conductive particles, wherein a nozzle diameter in an ejecting unit that ejects the liquid-state material is from 10 µm to 25 µm (par. 0084).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Furusawa to incorporate the preferred diameter nozzle of Yamamoto. POSITA would have realized that Furusawa expressly discloses that the droplets deposited are no more than 25 µm, and thus would very likely and very easily have been deposited by a nozzle of diameter < 25 µm. A nozzle of such diameter can be easily and readily incorporated in the method of Furusawa to achieve the desired droplet size/volume. Moreover, there is no indication in the instant disclosure that any special nozzle was devised or that any surprising results were derived from simply using the old method of Furusawa with the well-known nozzle diameter of Yamamoto. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Furusawa in view of Nukada, further in view of Itaya et al. (US 2013/0286100 A1).
Regarding claim 8, Furusawa in view of Nukada teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Furusawa, however, does not appear to teach that a droplet flying speed of the liquid-state material ejected is from 3 m/s to 15 m/s.
Itaya teaches that it is well known to perform a similar method including ejecting a liquid state material containing conductive particles using a liquid ejecting apparatus (pars. 0039 and 0050-0052), wherein a droplet flying speed of the liquid-state material ejected is from 3 m/s to 15 m/s (pars. 0009 and 0055).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Furusawa to incorporate the preferred droplet flying speed of Itaya. POSITA would have realized that droplets of any preferred speed can be easily and readily employed to achieve the desired pattern complexity or precision as well as manufacturing speed. Moreover, there is no indication in the instant disclosure that any special droplet or droplet ejector was devised or that any surprising results were derived from simply using the old method of Furusawa with the well-known desired droplet speed of Itaya. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The argument generally alleges that Furusawa does not disclose, and Lanning does not teach, the newly added and previously unexamined limitation of the porous material being made of polyimide. This conclusory allegation of patentability is not germane because Furusawa and Lanning are not relied upon for such disclosure or teaching. Please refer to the new prior art rejection of at least claim 1, above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, see at least Hiraoka (CN 1532926 A), which discloses that polyimide porous substrates (figs. 1, 3C, etc.) are well known and can include silica as in the Furusawa reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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