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 .
Claim Objections
Claim 19 is objected to because of the following informalities: “claim 16,, wherein” should instead disclose “claim 16, wherein”. Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1, 5 and 16 are indefinite, because they both now disclose “the one or more features maintain a desired geometry without heat” (lines 8, 7 and 7, respectively; emphasis added). This limitation is indefinite as it is impossible to determine the scope or metes and bounds, and because it discloses a physical impossibility. First, one cannot possibly know how this language would actually limit the product of claim 1 or the system of claim 16. Claims 1-4 and 16-20 are not drawn to a method of use. As such, it is impossible to know how to interpret this language, as the claims are directed to the form of a product at a given time, and at any given point in time any and all product structures “maintain a desired geometry”. How long is this geometry maintained? The method of claim 5 is also rendered indefinite, because again, there is no way to know how this negative limitation is intended to actually define the claimed method. Further, with respect to both claims, this limitation is literally physically impossible. There is no recorded instance of any product or method ever reaching the temperature of “absolute zero”, which is the only instance in which there would be no heat whatsoever (“without heat”). Further still, every heated object must naturally cool down. As such, any formed product, or system for manufacture, or method of making the product would eventually cool/allow the product to cool and therefore these “limitations” in the claim do not understandably further limit, as any solid formed object would maintain its shape even after removal of the heat source. Accordingly, if the prior art product is solid, it is held to anticipate this purported limitation in the product claims, and if the prior art product formed by the method is solid after formation, it is also held to anticipate this purported method limitation.
Claims 2-4, 6-15, and 17-20 are rejected as indefinite by virtue of their dependence upon the indefinite subject matter of claims 1, 5 and 16.
Claim 6 is also held to be indefinite. The claim discloses “cold forming the flex circuit in the planar state into a non-planar state without the use of heat” (lines 4-5; emphasis added). This limitation is indefinite for the same reason regarding the physical impossibility of the limitation (zero heat, absolute zero temperature, is currently unattainable) as detailed above with respect to claim 5.
Claim 16 is further found to be indefinite. The claim discloses: “A system for cold forming a flex circuit, comprising: the flex circuit, comprising: an electronic circuit connected to a planar substrate; and a material selectively plated on one or more areas on the substrate; wherein the one or more areas selectively plated with the material are cold formed into one or more non-planar features in the substrate, and wherein the one or more features maintain a desired geometry without heat; and a machine with a cold die set attached to a clamping mechanism configured to cold form the flex circuit without the use of heat” (lines 1-9; emphasis added). This claim is replete with errors and is ambiguous to the extent that the scope or metes and bounds of the claim cannot be ascertained. As noted above, the “without heat” limitation is indefinite. Additionally, the claim in and of itself makes no logical sense. The preamble clearly indicates that the claim is directed to a “system for cold forming a flex circuit”. The claim is not directed to a product. Accordingly, given that the system is intended to be use to form a flex circuit, the system absolutely cannot comprise the flex circuit itself, which would be paradoxical and indefinite. A system of manufacturing a product cannot comprise the product. Further, the “and a machine…” language is formatted in the same manner as all of the elements of the “flex circuit” recited above it, and therefore it is impossible to know for sure if the “machine” is now part of the flex circuit, or if it is the one and only component of the system. The Examiner is giving the Applicant a great amount of leeway and the benefit of the doubt in interpreting this claim. However, it would be entirely reasonable to interpret the “system” of claim 16 as being nothing more than: “a machine with a cold die set attached to a clamping mechanism configured to cold form the flex circuit without the use of heat”.
NOTE: Claims 1-20 have all been interpreted and examined as best understood according to the 112(b) rejections, above.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-5, 9-10 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nomura et al. (US 2006/0215377 A1).
Regarding claim 1, Nomura discloses a cold formed flex circuit (Title; Abstract), comprising: an electronic circuit (12) connected to a substrate (10) (fig. 1b; pars. 0037 and 0039); and a material (15, 16a-16c) selectively plated on one or more areas (see figs. 3-4) on the substrate (figs. 3-4; pars. 0042-0043); wherein the one or more areas selectively plated with the material are cold formed (folded) into one or more non-planar features in the substrate (fig. 7; par. 0053), and wherein the one or more features maintain a desired geometry without heat (this intended use limitation is anticipated as the product of Nomura is a solid object and is disclosed as being folded for use in its folded state and is not disclosed as returning to planar form: “wiring layer 12 can be secured even when the flexible circuit substrate 12 is folded and mounted”, par. 0056).
NOTE: all claimed instances of elements being “cold formed” or of “cold forming” are being interpreted in light of the state of the art and the original disclosure of the instant application, such that cold forming is apparently simply forming or shaping. In the metal working art, any working or forming that is less than about 1/3 to 1/2 of the melting point of the metal is also considered cold forming. Moreover, there is no special step or device disclosed in the specification for cold forming and there is no discussion of the desired temperature or how cold forming would be distinct from simply shaping or bending or folding or the like without melting the materials being worked. Most importantly, despite the Applicant’s protestations to the contrary, the Applicant has provided no evidence whatsoever to show that their intended product, purportedly produced by cold forming, has any real structural differences than those of the prior art. Instead, Applicant relies on the purported drawbacks of hot forming and purported benefits of cold forming, with no supporting evidence or showing of surprising results. Further still, the “cold forming” of the instant application appears to be nothing more than reshaping the product. There are no special steps required, and no new concepts introduced. As such, the folding of Nomura clearly anticipates both the product and the “method” of cold forming, as it requires no added heat and the product is reshaped in a non-planar geometry.
Regarding claim 3, Nomura discloses the flex circuit according to claim 1, wherein the material comprises copper (par. 0042).
Regarding claim 4, Nomura discloses the flex circuit according to claim 1, wherein the one or more features is a bend, coining, or a shape formed in the substrate (fig. 7; par. 0053).
Regarding claim 5, Nomura discloses a method for cold forming a flex circuit (Title; Abstract), comprising: selectively plating a material (15, 16a-16c) on one or more areas of the flex circuit (12) when the flex circuit is in a planar state (figs. 1b and 3-4; pars. 0037, 0039 and 0042-0043); and cold forming (folding without adding heat) one or more features in the flex circuit at the one or more areas selectively plated with the material such that the flex circuit is moved from the planar state to a non-planar state (fig. 7; par. 0053), wherein the one or more features maintain a desired geometry without heat (this intended use limitation is anticipated as the product of Nomura is a solid object and is disclosed as being folded for use in its folded state and is not disclosed as returning to planar form: “wiring layer 12 can be secured even when the flexible circuit substrate 12 is folded and mounted”, par. 0056).
Regarding claim 9, Nomura discloses the method according to claim 5, wherein the one or more features is a bend, coining, or a shape cold formed in the flex circuit in the non-planar state (fig. 7; par. 0053).
Regarding claim 10, Nomura discloses the method according to claim 5, wherein the flex circuit includes an electronic circuit connected to a substrate (10) (fig. 1b; pars. 0039-0041)
Regarding claim 12, Nomura discloses the method according to claim 5, wherein the material is metal (par. 0042).
Regarding claim 13, Nomura discloses the method according to claim 5, wherein the material is copper (par. 0042).
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 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Nomura, in view of Riesner (DE 4237083 A1).
Regarding claims 2 (and 11), Nomura discloses all of the elements of the current invention as detailed above with respect to claim 1 (and 10). Nomura further discloses that the substrate comprises an adhesive layer (plating power feeding layer), and a metal layer (15) (fig. 3; pars. 0039-0042). Nomura, however, does not explicitly disclose that the substrate comprises a polyamide layer.
Riesner teaches that it is well known to provide a similar cold formed flex circuit and manufacturing method (Title; Abstract) wherein the substrate comprises a polyamide layer, an adhesive layer, and a metal layer (Abstract; figs. 1-2; claim 7).
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 Nomura to incorporate the preferred material layers of the substrate of Riesner. POSITA would have realized that substrate materials can be easily and readily selected based upon their well-known properties and functional capabilities to achieve the desired strength, rigidity, flexibility, dielectric nature, conductivity, or any other well understood materials property. Moreover, there is no indication in the instant disclosure that any special substrate materials or steps of using the substrate were devised or that any surprising results were derived from simply using the old product (claim 2) or method (claim 11) of Nomura with the well-known flex circuit and method of its manufacture of Riesner. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. Additionally, it is not likely that the preferred material and number of substrate layers of the product being formed would have any bearing or effect upon the steps of the method or its outcome. If the material of Riesner were incorporated in the intended product, the method of Nomura would be performed in the exact same manner as originally disclosed by Nomura and would have the same predictable outcome.
Claims 6-8, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nomura, in view of Colella et al. (US 2005/0227410).
Regarding claim 6, Nomura discloses all of the elements of the current invention as detailed above with respect to claim 5. Nomura, however, does not explicitly disclose placing the flex circuit in the planar state on a machine with a cold die set attached to a clamping mechanism; and forcing the cold die set against the flex circuit in the planar state, cold forming the flex circuit in the planar state into a non-planar state without the use of heat.
Colella teaches that it is well known to perform a similar cold forming method (Title; Abstract; fig. 5), including the steps of: placing the flex circuit (20, 22, 44, 46, 48, and 50) in the planar state on a machine (fig. 6: all) with a cold die set (164, 164’) attached to a clamping mechanism (138, 138’); and forcing the cold die set against the flex circuit in the planar state, cold forming the flex circuit in the planar state into a non-planar state without the use of heat (fig. 6; par. 0045).
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 Nomura to incorporate the use of a cold forming machine with dies and clamping mechanism of Colella. POSITA would have realized that forming dies and molds can be easily and readily incorporated in lieu of hand working to achieve the desired speed of processing throughput and manufacturing precision. Moreover, there is no indication in the instant disclosure that any special machine, die or clamping mechanism was devised or that any surprising results were derived from simply using the old method of Nomura with the well-known machine of Colella. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 16, Nomura discloses a system for cold forming a flex circuit (Title; Abstract), comprising: a flex circuit comprising: an electronic circuit (12) connected to a substrate (10) (fig. 1b; pars. 0037 and 0039); and a material (15, 16a-16c) selectively plated on one or more areas (see figs. 3-4) on the substrate (figs. 3-4; pars. 0042-0043); wherein the one or more areas selectively plated with the material are cold formed (folded) into one or more non-planar features in the substrate (fig. 7; par. 0053), and wherein the one or more features maintain a desired geometry without heat (this intended use limitation is anticipated as the product of Nomura is a solid object and is disclosed as being folded for use in its folded state and is not disclosed as returning to planar form: “wiring layer 12 can be secured even when the flexible circuit substrate 12 is folded and mounted”, par. 0056). Nomura, however, does not explicitly disclose a machine with a cold die set attached to a clamping mechanism configured to cold form the flex circuit without the use of heat.
Colella teaches that it is well known to provide a similar cold forming system (Title; Abstract; fig. 5), including: a machine (fig. 6: all) with a cold die set (164, 164’) attached to a clamping mechanism (138, 138’) configured to cold form the flex circuit without the use of heat (fig. 6; par. 0045).
Please refer to the rejection of claim 6, above, regarding the rationale for combination of references.
Regarding claims 7 (and 17), Nomura in view of Colella teaches the method of claim 6 (and 16) as detailed above, and Colella further teaches that it is well known that the cold die set comprises one or more dies (164, 164’), each having one or more complementary features (sloped face) matching the one or more features of the flex circuit in the non-planar state (fig. 6; par. 0045).
Regarding claim 8, Nomura in view of Colella teaches the method of claim 7 as detailed above, and Colella further teaches that it is well known that the step of forcing the cold die set against the flex circuit in the planar state includes the step of cold forming the one or more features in the flex circuit in the non-planar state with the one or more complementary features of the one or more dies (fig. 6; par. 0045).
Regarding claim 18, Nomura in view of Colella teaches the method of claim 16 as detailed above, and Nomura further discloses that the one or more features is a bend, coining, or a shape cold formed in the flex circuit in the non-planar state (fig. 7; par. 0053).
Regarding claim 20, Nomura in view of Colella teaches the method of claim 167 as detailed above, and Nomura further discloses that the material is copper (par. 0042).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura, in view of Rendek, Jr. et al. (US 2009/0185357 A1).
Regarding claim 14, Nomura discloses all of the elements of the current invention as detailed above with respect to claim 5. Nomura, however, does not explicitly disclose that the flex circuit is a battery door flex circuit.
Rendek teaches that it is well known to perform a similar method of manufacturing a flex circuit (Title; Abstract), wherein the flex circuit is a battery door flex circuit (figs. 2 and 8-10; par. 0043).
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 Nomura to incorporate the preferred intended application of the product being formed of Rendek. POSITA would have realized that the method of Nomura can be easily and readily used to manufacture any number of flex circuit devices to achieve the desired functionality, such as manufacturing a custom fitted and small footprint housing or door. Moreover, there is no indication in the instant disclosure that any special step was devised or that any surprising results were derived from simply using the old method of Nomura with the well-known battery door formation of Rendek. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. Additionally, it is not likely that the preferred use of the product as a battery door would have any bearing or effect upon the steps of the method or its outcome. If the battery housing of Rendek were incorporated in the method of Nomura, said method would be performed in the exact same manner as originally disclosed by Nomura and would have the same predictable outcome.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura, in view of Colella, further in view of Lai et al. (US 2024/0074063 A1).
Regarding claim 15, the modified Nomura teaches all of the elements of the current invention as detailed above with respect to claim 6. Nomura and Colella, however, do not apparently teach that cold forming the flex circuit in the planar state into a non-planar state is completed in less than or equal to 30 seconds
Lai teaches that it is well known to perform a cold forming method, wherein in the step of forcing the cold die set against the flex circuit in the planar state, cold forming the flex circuit in the planar state into a non-planar state is completed in less than or equal to 30 seconds (30 seconds: figs. 6-7; par. 0033).
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 Nomura to incorporate the preferred amount of time for cold forming of Lai. POSITA would have realized that the folding of Nomura and of Colella can be easily and readily be achieved in 30 seconds or less to produce the desired formed shape. Moreover, there is no indication in the instant disclosure that any special forming step was devised or that any surprising results were derived from simply using the old method or product of Nomura within the well-known and obvious 30 second timeline of Lai. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Nomura, in view of Colella, further in view of Riesner (DE 4237083 A1).
Regarding claim 19, Nomura in view of Colella teaches all of the elements of the current invention as detailed above with respect to claim 16. Nomura further discloses that the substrate comprises an adhesive layer (plating power feeding layer), and a metal layer (15) (fig. 3; pars. 0039-0042). The modified Nomura, however, does not apparently teach that the substrate comprises a polyamide layer.
Riesner teaches that it is well known to provide a similar cold formed flex circuit and manufacturing method (Title; Abstract) wherein the substrate comprises a polyamide layer, an adhesive layer, and a metal layer (Abstract; figs. 1-2; claim 7).
Please refer to the rejection of claims 2 and 11, above, regarding the rationale for combination of references.
Response to Arguments
Applicant's arguments filed 05/19/2026 have been fully considered but they are not persuasive.
The bulk of the Applicant’s arguments against the prior art rejections have been answered in the updated prior art rejections above, as well as the “NOTE” below the prior art rejection of claim 1.
Applicant has argued that the product of claims 1-4 is manufactured by cold forming and that this would somehow result in a different product than that of the prior art. This argument is not compelling for a number of reasons. The first reason is that the entire argument is based upon limitations (other than the simple recitation of “cold forming”) which are not at all claimed, and instead are recited in the specification as purported advantages of the intended cold forming. It is not proper to attempt to import limitations into the claims from the specification when they are not recited in the claims. Further, the Applicant’s arguments represent nothing more than conclusory statements with no supporting evidence whatsoever. If the product claims disclosed that the cold formed materials had a more consistent grain size or orientation, or that the cold formed materials had a certain expressly disclosed malleability or plasticity or ductility after being worked, then perhaps there would be an evident distinction between the claimed product and the prior art. However, the claims (and the original disclosure in its entirety) do not disclose anything of the sort at all. As such, the Applicant has not in any way satisfied the burden of proving (with factual evidence, not purported benefits) that the claimed product is in any way different from the prior art cited. Even further, and most importantly, Nomura does not disclose anything that indicates that the folding (e.g. cold forming) of the product is done in a heated environment. Accordingly, Nomura expressly anticipates the claimed and argued limitations as cited above and the Applicant’s argument is not compelling.
Applicant has also argued that Nomura does not disclose “that the one or more features maintain a desired geometry (e.g. bend) without heat”. Respectfully, this argument is also not compelling. In the cited portions of Nomura, it is quite clear to any POSITA that the folded (e.g. bent) circuit board is intended to remain folded after manufacture. As such, it is explicitly disclosed by Nomura that the product is expressly intended to maintain its desired geometry, and there is absolutely nothing in Nomura that indicates that the bending is caused in a heated environment, and certainly nothing that requires that the product remain in a heated state forever in order to remain folded. The Applicant’s argument is a prime example of a logical fallacy, known as a false dilemma, wherein a problem is fabricated by the arguer, even though it does not exist in the factual record. Applicant continues by arguing that the folding of Nomura is intended to have certain effects which are different than the intended effects of cold forming in the instant application. This argument is simply not germane. It is not relevant why Nomura folds the product, only that the product is folded, without addition of heat, and remains folded, without further addition of heat. Accordingly, Nomura clearly anticipates the argued limitations and the Applicant’s arguments are not found to be compelling.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Jeziorek (US 9,019,710 B2) is relevant to at least claims 1, 5 and 16 (see, inter alia: Title; Abstract; figs. 6-8A; and col. 6, lines 35-67).
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.
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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