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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawaga (2015/0027771) in view of Mikura et al. (2007/0085121).
Kagawa discloses a shielding foil (Fig. 4e, layer 12 having a multi-layer structure) comprising a metal foil (non-magnetic metal film) with a thickness of 5 µm or more and 12 µm or less ([0089]) made of a non-magnetic metal; and a magnetic layer (magnetic metal film) with a thickness of 0.05 µm or more and 6 µm or less ([0089]), wherein the metal foil and the magnetic layer are integrally laminated, and the metal foil and the magnetic layer are in direct contact and joined to each other without being interposed by another constituent layer (re-claim 1). Kagawa also discloses the metal foil being made of copper ([0089]) (re-claim 2); the shielding foil further comprising a substrate (11) with a sheet shape containing an organic polymer ([0086]), wherein the metal foil and the magnetic layer are formed on a surface of the substrate (re-claim 3); the magnetic layer having a thickness of 1 µm or less ([0089]) (re-claim 4).
Kagawa does not disclose the magnetic layer being formed as a continuous layer structure and made of an oxide magnetic substance which is ferrite (re-claims 1 and 2).
Mikura et al. discloses a shielded component comprising a magnetic layer (21 or 22) being formed as a continuous layer structure (no particles or binder) and made of an oxide magnetic substance which is ferrite.
It would have been obvious to one skilled in the art to use a continuous ferrite layer structure as taught by Mikura et al. for magnetic layer of Kagawa since such material has excellent magnetic permeability (see abstract).
Re-claims 5 and 10, it has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, oxidizing a metal layer formed through vapor disposition, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Claims 1, 6-9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mayer (4383225) in view of Kagawa and Mikura et al.
Mayer discloses a communication cable comprising a conductor (1); an insulating layer (2) covering an outer circumference of the conductor; a shielding foil (7’, 8) surrounding an outside of the insulating layer and comprising a conducting layer (8) and a magnetic layer (7’), wherein the conducting layer (8) and the magnetic layer (7’) are integrally laminated and in direct contact; a sheath (7”’) that covers an outside of the insulating layer and contains an organic polymer and a powdery magnetic material (col. 3, lines 49-53); and a metal braid (3 or 9) on an inside or outside of the shielding foil, wherein the communication cable is a coaxial cable (re-claims 6-9).
Mayer does not disclose the shielding foil (7’, 8) according to claim 1.
Kagawa and Mikura et al. disclose the shielding foil as claimed in claim 1, see the rejection above. It would have been obvious to one skilled in the art to replace the shielding foil (composed of 7’, 8) of Mayer with the shielding foil taught by Kagawa and Mikura et al. since such shielding foil having improved physical and electrical properties, said shielding foil comprising metal layer and thinner layers.
Re-claim 12, it would have been obvious to one skilled in the art that when replacing the shielding foil of Mayer with the shielding foil taught by Kagawa and Mikura et al., the modified shielding foil is being disposed as a longitudinally lapped manner around the insulating layer to meet the specific use of the resulting cable since a cable having a longitudinally lapped manner around an insulating layer is known in the art.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kawaga in view of Mikura et al. as applied to claim 3 above, and further in view of Hur et al. (2011/0186324).
Claim 11 additionally recites the magnetic layer, the metal foil, and the substrate being laminated in this order. Hur et al. discloses a shielding foil (Fig. 4) comprising a magnetic layer (20), a metal foil (10), and a substrate (40) being laminated in this order. It would have been obvious to one skilled in the art to arrange the modified shielding foil of Kawaga in the order of the magnetic layer, the metal foil, and the substrate, as taught by Hur et al., to meet the specific use of the resulting shielding foil.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in view of new ground of rejection.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
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