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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Luce et al. (U.S. Patent 3,293,109) optionally in view of Deltombe et al. (“How to select the most relevant 3D roughness parameters of a surface”) and/or Akitoshi et al. (WO 2021/157363 and see also the machine translation).
Luce discloses a method for manufacturing a laminate, comprising providing a copper foil (10/20) having a treated surface (16/21) (and regarding claim 7) wherein the treated surface comprises a plurality of roughening particles (22 of copper-copper oxide) of a nodularized appearance, and attaching or forming a resin film (12) such as polyvinyl butyral (and regarding claim 10 wherein the polyvinyl acetal resin is a polyvinyl butyral resin) on the treated surface of the copper foil to obtain a laminate with a peel strength of 15 to 25 pounds per inch with conventional resinous substrates. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the method for manufacturing a laminate taught by Luce comprises providing the copper foil (10/20) having a treated surface (16/21) comprising a plurality of roughening particles (22 of copper-copper oxide) of a nodularized appearance, and attaching or forming a polyvinyl butyral resin film (12) on the treated surface of the copper foil to obtain a laminate with a peel strength of 15 to 25 pounds per inch as is the express direction in Luce to predictably manufacture the laminate (see Figures 2 and 3 and Column 1, lines 10-14 and 28-30 and 48-57 and Column 2, lines 29-35 and Column 3, lines 14-23 and 45-56 and Column 5, lines 17-22 and Column 6, lines 37-47 and 66-67).
As to the limitations in claim 1 of the “treated surface having a developed interfacial area ratio Sdr of 0.50% or more and 9.00% or less and a root mean square height Sq of 0.010 µm or more and 0.200 µm or less on at least one side” and “wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm” and claims 2-6, Luce teaches the treated surface comprises a plurality of roughening particles of a nodularized appearance wherein such a surface necessarily has a developed interfacial area ratio Sdr, a root mean square height Sq, and a density of peaks Spd. Luce does not expressly measure the Sdr, Sq, and Spd values. The Office is unequipped to measure such values, i.e. wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm and wherein the Spd is a value measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 2 µm, and cutoff of an L-filter is not performed. However, as shown in the instant application when all three of the Sdr, Sq, and Spd values satisfy the claimed ranges (see Examples 1-4) a peel strength of greater than 0.6 kgf/cm is achieved (see Table 1 and Paragraph 0033 “The peel strength between the copper foil and the resin film in the laminate is preferably 0.60 kgf/cm or more, more preferably 1.00 kgf/cm or more, and further preferably 1.20 kgf/cm or more when the circuit height is 12 µm and the circuit width is 3 mm. It is better that the peel strength is high. Its upper limit value is not particularly limited but is typically 3.0 kgf/cm or less.”) as compared to when all three of the values do not satisfy the claimed ranges (see Comparative Examples 5-7) the peel strength is not achieved. Because Luce teaches a peel strength of 2.68 to 4.47 kg/cm (15 to 25 pounds per inch) the evidence of record suggests the treated surface taught by Luce necessarily has as the developed interfacial area ratio Sdr a value of 0.50% or more and 9.00% or less and as the root mean square height Sq a value of 0.010 µm or more and 0.200 µm or less on at least one side wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm including wherein the Sdr is 2.50% or more and 9.00% or less, and the Sq is 0.050 µm or more and 0.180 µm or less and wherein the Sdr is 5.00% or more and 9.00% or less, and the Sq is 0.100 µm or more and 0.140 µm or less and further the treated surface has as the density of peaks Spd a value of 100 mm-2 or more and 26000 mm-2 or less, and wherein the Spd is a value measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 2 µm, and cutoff of an L-filter is not performed including wherein the Spd is 10000 mm-2 or more and 20000 mm-2 or less and wherein the Spd is 10000 mm-2 or more and 15000 mm-2 or less.
Alternatively, as to the limitations in claim 1 of the “treated surface having a developed interfacial area ratio Sdr of 0.50% or more and 9.00% or less and a root mean square height Sq of 0.010 µm or more and 0.200 µm or less on at least one side” and “wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm” and claims 2-6, as noted above Luce does not expressly measure the Sdr, Sq, and Spd values. Luce teaches the surface roughness obtained by the treatment process not only is the exposed surface area greatly increased, improving adhesion to the polyvinyl butyral, but also because of the knobbed structure, the mechanical aspects of adhesion are also enhanced wherein the duration of the process is a critical factor in achieving sufficient bond strength without the layer becoming too thick to be “cemented” (by a coating containing metal) to the surface (Column 2, lines 29-35 and Column 3, lines 14-22 and Column 5, lines 17-22 and Column 6, lines 37-38). It is further well understood by one of ordinary skill in the art of characterization of surface roughness to influence adhesion comprehensive roughness analysis is of many parameters defined by ISO 25178 including Sdr, Sq, and Spd as evidenced by Deltombe (see 1 INTRODUCTION, 2.3 Step 2. The multiscale decomposition, and Table 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the treatment of the plurality of roughening particles to the surface of the copper foil as taught by Luce is determined as directed by Luce such as in duration to achieve sufficient bond strength such as 15 to 25 pounds per inch without the layer too thick to be “cemented” to the surface and including so that the exposed surface area is greatly increased, improving adhesion, but also because of the knobbed structure, the mechanical aspects of adhesion are also enhanced such as the treated surface has a developed interfacial area ratio Sdr of 0.50% or more and 9.00% or less and a root mean square height Sq of 0.010 µm or more and 0.200 µm or less on a least one side, and wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm including wherein the Sdr is 2.50% or more and 9.00% or less, and the Sq is 0.050 µm or more and 0.180 µm or less and wherein the Sdr is 5.00% or more and 9.00% or less, and the Sq is 0.100 µm or more and 0.140 µm or less and wherein the treated surface has a density of peaks Spd of 100 mm-2 or more and 26000 mm-2 or less, and wherein the Spd is a value measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 2 µm, and cutoff of an L-filter is not performed including wherein the Spd is 10000 mm-2 or more and 20000 mm-2 or less and wherein the Spd is 10000 mm-2 or more and 15000 mm-2 or less wherein Luce achieves the same peel strength as in the instant invention and Luce do not teach away from the claimed ranges (see MPEP 2144.05 and “II. ROUTINE OPTIMIZATION” AND “III. REBUTTAL OF PRIMA FACIE CASE OF OBVOIUSNESS”) and optionally further in view of Deltombe wherein parameters related to surface roughness include Sdr, Sq, and Spd and are well understood by one of ordinary skill in the art as result-effective variables to influence adhesion and/or Akitoshi evidencing Sdr of 0.50-7.00% and Spd of 20,000 mm-2 or more are conventional and predictable values to achieve high adhesion (Abstract and Pages 3-5 of the machine translation).
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Isoue et al. (U.S. Patent Application Publication 2020/0023620) in view of Luce and optionally further Deltombe and/or Akitoshi.
Isoue discloses a method for manufacturing a laminate, comprising (it being noted comprising is inclusive or open-ended and does not exclude additional, unrecited elements or method steps see MPEP 2111.03): providing a copper foil (paragraph 0128) having a treated surface on at least one side (surface was roughened see paragraph 0133), and attaching or forming a polyvinyl acetal resin film (and regarding claim 9 wherein the resin film has a thickness of 1 µm or more and 1000 µm or less and regarding claim 10 wherein the polyvinyl acetal resin is a polyvinyl butyral resin see paragraphs 0064 and 0070) on the treated surface of the copper foil to form a laminate (regarding claim 8) wherein attachment of the resin film to the copper foil is performed by thermocompression-bonding the resin film and the copper foil at a temperature of 180°C or less (see paragraphs 0145 and 0149) and a pressure of 0.6 MPa or less (e.g. 0.2 MPa and see Example 7) and then (regarding claim 11) providing the laminate for manufacturing a heating element, processing (by etching see paragraph 0152) the copper foil of the laminate to form a heating wire having a predetermined pattern (and regarding claim 12 wherein the predetermined pattern comprises for example a grid-like or net-like shape considered at least one pattern of a linear shape and/or a lattice shape and/or a net shape or a wavy line shape see paragraph 0124), and attaching or forming an additional polyvinyl acetal resin film on the laminate in which the heating wire is formed, so as to sandwich the heating wire (as a protective film see paragraphs 0122 and 0153 or to form a laminated glass see paragraph 0263), to form a heating element and (regarding claim 13) form a defroster (see paragraphs 0002, 0196, and 0197) comprising a heating element manufactured by the method.
Regarding claim 7, Isoue does not expressly teach or require any particular roughening technique. It is known to improve the adhesion of a copper foil surface (16/21) to polyvinyl butyral (12) such as to a peel strength of 15 to 25 pounds per inch to apply a plurality of roughening particles (22 of copper-copper oxide) to the surface as taught by Luce (Column 1, lines 10-17 and line 44 and Column 2, lines 29-35 and Column 3, lines 5-6 and Column 5, lines 17-22 and Column 6, lines 37-47 and 66-67). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the treated surface taught by Isoue comprises a plurality of roughening particles to roughen the surface and improve the adhesion of the copper foil to the polyvinyl butyral resin film including to a peel strength of 15 to 25 pounds per inch as taught by Luce.
As to the limitations in claim 1 of the “treated surface having a developed interfacial area ratio Sdr of 0.50% or more and 9.00% or less and a root mean square height Sq of 0.010 µm or more and 0.200 µm or less on at least one side” and “wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm” and claims 2-6, as noted above Luce teaches the treated surface comprises a plurality of roughening particles of a nodularized appearance wherein such a surface necessarily has a developed interfacial area ratio Sdr, a root mean square height Sq, and a density of peaks Spd. Luce does not expressly measure the Sdr, Sq, and Spd values. The Office is unequipped to measure such values, i.e. wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm and wherein the Spd is a value measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 2 µm, and cutoff of an L-filter is not performed. However, as shown in the instant application when all three of the Sdr, Sq, and Spd values satisfy the claimed ranges (see Examples 1-4) a peel strength of greater than 0.6 kgf/cm is achieved (see Table 1 and Paragraph 0033 “The peel strength between the copper foil and the resin film in the laminate is preferably 0.60 kgf/cm or more, more preferably 1.00 kgf/cm or more, and further preferably 1.20 kgf/cm or more when the circuit height is 12 µm and the circuit width is 3 mm. It is better that the peel strength is high. Its upper limit value is not particularly limited but is typically 3.0 kgf/cm or less.”) as compared to when all three of the values do not satisfy the claimed ranges (see Comparative Examples 5-7) the peel strength is not achieved. Because Isoue as modified by Luce teaches a peel strength of 2.68 to 4.47 kg/cm (15 to 25 pounds per inch) the evidence of record suggests the treated surface taught by Isoue as modified by Luce necessarily has as the developed interfacial area ratio Sdr a value of 0.50% or more and 9.00% or less and as the root mean square height Sq a value of 0.010 µm or more and 0.200 µm or less on at least one side wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm including wherein the Sdr is 2.50% or more and 9.00% or less, and the Sq is 0.050 µm or more and 0.180 µm or less and wherein the Sdr is 5.00% or more and 9.00% or less, and the Sq is 0.100 µm or more and 0.140 µm or less and further the treated surface has as the density of peaks Spd a value of 100 mm-2 or more and 26000 mm-2 or less, and wherein the Spd is a value measured in accordance with ISO 25178 under conditions is which a cutoff wavelength of an S-filter is 2 µm, and cutoff of an L-filter is not performed including wherein the Spd is 10000 mm-2 or more and 20000 mm-2 or less and wherein the Spd is 10000 mm-2 or more and 15000 mm-2 or less.
Alternatively, as to the limitations in claim 1 of the “treated surface having a developed interfacial area ratio Sdr of 0.50% or more and 9.00% or less and a root mean square height Sq of 0.010 µm or more and 0.200 µm or less on at least one side” and “wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm” and claims 2-6, as noted above Luce does not expressly measure the Sdr, Sq, and Spd values. Luce teaches the surface roughness obtained by the treatment process not only is the exposed surface area greatly increased, improving adhesion to the polyvinyl butyral, but also because of the knobbed structure, the mechanical aspects of adhesion are also enhanced wherein the duration of the process is a critical factor in achieving sufficient bond strength without the layer becoming too thick to be “cemented” (by a coating containing metal) to the surface (Column 2, lines 29-35 and Column 3, lines 14-22 and Column 5, lines 17-22 and Column 6, lines 37-38). It is further well understood by one of ordinary skill in the art of characterization of surface roughness to influence adhesion comprehensive roughness analysis is of many parameters defined by ISO 25178 including Sdr, Sq, and Spd as evidenced by Deltombe (see 1 INTRODUCTION, 2.3 Step 2. The multiscale decomposition, and Table 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the treatment of the plurality of roughening particles to the surface of the copper foil as taught by Isoue as modified by Luce is determined as directed by Luce such as in duration to achieve sufficient bond strength such as 15 to 25 pounds per inch without the layer too thick to be “cemented” to the surface and including so that the exposed surface area is greatly increased, improving adhesion, but also because of the knobbed structure, the mechanical aspects of adhesion are also enhanced such as the treated surface has a developed interfacial area ratio Sdr of 0.50% or more and 9.00% or less and a root mean square height Sq of 0.010 µm or more and 0.200 µm or less, and wherein the Sdr and Sq are values measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 0.55 µm, and a cutoff wavelength of an L-filter is 10 µm including wherein the Sdr is 2.50% or more and 9.00% or less, and the Sq is 0.050 µm or more and 0.180 µm or less and wherein the Sdr is 5.00% or more and 9.00% or less, and the Sq is 0.100 µm or more and 0.140 µm or less and wherein the treated surface has a density of peaks Spd of 100 mm-2 or more and 26000 mm-2 or less, and wherein the Spd is a value measured in accordance with ISO 25178 under conditions in which a cutoff wavelength of an S-filter is 2 µm, and cutoff of an L-filter is not performed including wherein the Spd is 10000 mm-2 or more and 20000 mm-2 or less and wherein the Spd is 10000 mm-2 or more and 15000 mm-2 or less wherein Isoue as modified by Luce achieves the same peel strength as in the instant invention and neither Isoue nor Luce teach away from the claimed ranges (see MPEP 2144.05 and “II. ROUTINE OPTIMIZATION” AND “III. REBUTTAL OF PRIMA FACIE CASE OF OBVOIUSNESS”) and optionally further in view of Deltombe wherein variables related to surface roughness include Sdr, Sq, and Spd and are well understood by one of ordinary skill in the art as result-effective variables to influence adhesion and/or Akitoshi evidencing Sdr of 0.50-7.00% and Spd of 20,000 mm-2 or more are conventional and predictable values to achieve high adhesion (Abstract and Pages 3-5 of the machine translation).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Luce and optionally Deltombe and/or Akitoshi as applied to claims 1-7 and 10 above, and further in view of Isoue.
Luce as optionally modified by Deltombe and/or Akitoshi above teach all of the limitations in claims 8 and 9 except for a specific teaching of the thermocompression-bonding conditions (Luce teaches attachment of the resin film to the copper foil is performed by thermocompression-bonding the resin film and the copper foil see Column 2, lines 61-65) and thickness of the resin film (Luce is not limited to any particular thickness). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the thermocompression-bonding taught by Luce as optionally modified by Deltombe and/or Akitoshi is at a temperature of 180°C or less and a pressure of 0.6 MPa or less as are conventional and predictable conditions for the bonding as evidenced by Isoue (described above in full detail) and further including the resin film has a thickness of 1 µm or more and 1000 µm or less as is conventional and predictable thickness for attachment to copper foil as also evidenced by Isoue (described above in full detail).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/277,673. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of copending Application No. 18/277,673 fully encompass claims 1-13 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/277,681. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of copending Application No. 18/277,681 fully encompass claims 1-13 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746