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.
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.
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, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Suenaga et al. (2019/0191601) in view of Bhargava (6436206).
Suenaga et al. discloses a differential signal transmission cable comprising an insulating layer (5) that extends in a longitudinal direction of the cable; a pair of signal lines (3a, 3b) that extend in the longitudinal direction and are embedded in the insulating layer; and a shield layer (7) that covers an outer peripheral surface of the insulating layer, wherein the shield layer includes a plating first sublayer and a plating second sublayer ([0075], the shield layer is configured with a plurality of stacked thin films), the plating first sublayer containing copper and an alloy element ([0075], copper alloy) (re-claim 1).
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, electroless plating, 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).
Suenaga et al. does not disclose the type and content of the alloy element being selected such that a tensile stress acts on the shield layer (re-claim 1). Specifically, in the shield layer, the content of copper is greater than or equal to 90% by mass (wt%), and the alloy element is nickel, wherein the content of nickel is greater than or equal to 0.10 wt% and less than or equal to 0.29 wt% (re-claim 2).
Bhargava discloses a copper alloy having mechanical strength, formability, thermal and electrical conductivities, and stress relaxation properties (col. 2, lines 14-17), wherein the content of copper is greater than or equal to 90 wt%, wherein the alloy element is nickel, and wherein the content of nickel is greater than or equal to 0.10 wt% and less than or equal to 0.29 wt% (Example 1, col. 5, lines 56-57).
It would have been obvious to one skilled in the art to use the copper alloy as taught by Bhargava for the plating first sublayer of Suenaga et al. since such material has excellent mechanical and electrical properties.
Re-claim 4, Suenaga et al. discloses the cable further comprising a catalyst particle between the insulating layer and the shield layer, wherein the catalyst particle contains palladium ([0089] and [0100]-[0103]).
Re-claim 5, Suenaga et al. discloses the cable further comprising an intermediate layer (the catalyst particle layer) that covers the outer peripheral surface of the insulating layer, wherein the shield layer covers an outer peripheral surface of the intermediate layer.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Suenaga et al. in view of Ouyang (2022/0253181) and Ioannou (2017/0043569).
Suenaga et al. discloses a differential signal transmission cable comprising an insulating layer (5) that extends in a longitudinal direction of the cable; a pair of signal lines (3a, 3b) that extend in the longitudinal direction and are embedded in the insulating layer; and a shield layer (7) that covers an outer peripheral surface of the insulation layer (re-claim 6).
Suenaga et al. does not disclose the insulating layer having a hardness of greater than or equal to 0.052 GPa, and the shield layer having a hardness of less or equal to 4.0 GPa (re-claim 6).
Ouyang discloses an insulating layer ([0179]) having a hardness of greater than or equal to 0.052 GPa (10 MPa to 200 MPa = 0.01 GPa to 0.20 GPa). It would have been obvious to one skilled in the art to use the insulating layer having the hardness as taught by Ouyang for the insulating layer of Suenaga et al. to meet the specific use of the resulting cable.
Ioannou discloses a copper alloy ([0026]), material used for the shield layer in Suenaga, having a hardness of less or equal to 4.0 GPa ([0026], 400 HV = 3.923 GPa). It would have been obvious to one skilled in the art to use the copper alloy having a hardness of less or equal to 4.0 GPa as taught by Ioannou for the shield layer of Suenaga et al. to meet the specific use of the resulting cable.
Re-claim 7, in the modified cable of Suenaga, a value obtained by diving the hardness of the shield layer by the hardness of the insulating layer is greater than or equal to 20 and less than or equal to 100, see rejection of claim 6 above, 3.923 GPa ÷ 0.06 GPa = 65.38.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Suenaga et al. in view of Ezura et al. (2014/0291156).
Suenaga et al. discloses a differential signal transmission cable comprising an insulating layer (5) that extends in a longitudinal direction of the cable; a pair of signal lines (3a, 3b) that extend in the longitudinal direction and are embedded in the insulating layer; and a shield layer (7) that covers an outer peripheral surface of the insulating layer, wherein the shield layer contains copper ([0075]). Suenaga et al. does not disclose a crystallite size of copper in the shield layer being between 20 nm and 60 nm. Ezura et al. discloses a copper foil, wherein a crystallite size of copper is between 20 nm and 60 nm ([0080]). It would have been obvious to one skilled in the art to use the material containing copper with a crystallite size of copper between 20 nm and 60 nm, as taught by Ezura et al., for the shield layer of Suenaga et al. since such material has high mechanical strength (see abstract).
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, 4, and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 5, and 24 of U.S. Patent No. 12451270 in view of Bhargava.
Claims 2, 5, and 24 of said patent disclose the invention substantially as claimed including the shield layer comprising a plating first sublayer and a plating second sublayer (see claim 24). Claims 2, 5, and 24 of said patent do not disclose the type and content of the alloy element being selected such that a tensile stress acts on the shield layer (re-claim 1). Specifically, in the shield layer, the content of copper is greater than or equal to 90% by mass (wt%), and the alloy element is nickel, wherein the content of nickel is greater than or equal to 0.10 wt% and less than or equal to 0.29 wt% (re-claim 2). Bhargava discloses a copper alloy having mechanical strength, formability, thermal and electrical conductivities, and stress relaxation properties (col. 2, lines 14-17), wherein the content of copper is greater than or equal to 90 wt%, wherein the alloy element is nickel, and wherein the content of nickel is greater than or equal to 0.10 wt% and less than or equal to 0.29 wt% (Example 1, col. 5, lines 56-57).
It would have been obvious to one skilled in the art to use the copper alloy as taught by Bhargava for the shield layer of said patent since such material has excellent mechanical and electrical properties.
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, electroless plating, 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 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 28 and 29 of U.S. Patent No. 12451270 in view of Hoffman et al. (2019/0348249).
Claims 28 and 29 of said patent disclose the invention substantially as claimed except for the shield having a hardness of 4.0 GPa or less. Hoffman et al. discloses a shield layer (11) having a hardness of 4.0 GPa or less ([0056]). It would have been obvious to one skilled in the art to provide the shield layer of said patent with a hardness of 4.0 GPa or less as taught by Hoffman et al. to meet the specific use of the resulting cable. In the modified cable of said patent, a value obtained by diving the hardness of the shield layer by the hardness of the insulating layer is greater than or equal to 20 and less than or equal to 100, etc. 4.0 GPa ÷ 0.1 GPa = 40.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12451270 in view of Ezura et al.
Claim 1 of said patent discloses the invention substantially as claimed except for the shield layer containing copper, wherein a crystallite size of copper in the shield layer is between 20 nm and 60 nm. Ezura et al. discloses a copper foil, wherein a crystallite size of copper is between 20 nm and 60 nm ([0080]). It would have been obvious to one skilled in the art to use the material containing copper with a crystallite size of copper between 20 nm and 60 nm, as taught by Ezura et al., for the shield layer of said patent since such material has high mechanical strength (see abstract).
Allowable Subject Matter
Claim 3 is allowed.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in view of new ground of rejection.
Regarding claim 6, applicant argues that Ouyang and Ioannou are both non-analogous art. Examiner would disagree. Ouyang discloses a cable, [0176], insulating layer disposed on the wires 22. Ioannou does not disclose a cable, but concerns with providing an electroless plating layer containing a copper alloy having improved mechanical properties and a desired hardness, reasonably pertinent to the particular problem with which the inventor was concerned, such that it used without additional protection layer ([0026]). It has been held that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Regarding claim 9, applicant quotes MPEP 2144.05(III)(A) and argues that claim 9 range is critical to the claimed invention. If the crystallite size falls outside of the claim 9 range, at least one drawback arises, such as poor transmission characteristics. Applicant points to Samples 5-4 and 5-5 which demonstrate that the crystallite sizes of 75 nm and 15 nm respectively result in poor transmission characteristics. In contrast, Samples 5-1 to 5-3, each having crystallite sizes with the claim 9 range, between 20 nm and 60 nm, are indicated as “OK.”
Examiner would disagree. MPEP 2144.05(I) states that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Ezura discloses a range of 5 nm to 50 nm, overlapping claimed range of 20 nm to 60 nm. Ezura does teach a crystallite size of 20, 30, 40, or 50 nm (5 nm to 50 nm). Therefore, the modified cable of Suenaga would achieve the unexpected results as indicated by the applicant, and transmission characteristic in the modified cable of Suenaga are “OK.”
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N Hayman can be reached at 571-270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
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