Prosecution Insights
Last updated: July 17, 2026
Application No. 18/287,437

A METHOD AND DEVICE FOR PRODUCING A PRODUCT COMPRISING A SUBSTRATE WITH AT LEAST ONE PATTERNED LAYER

Non-Final OA §103§112
Filed
Oct 18, 2023
Priority
Apr 19, 2021 — SE 2150485-7 +1 more
Examiner
ABRAHAM, JOSE K
Art Unit
Tech Center
Assignee
Dp Patterning AB
OA Round
1 (Non-Final)
83%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 83% — above average
83%
Career Allowance Rate
298 granted / 360 resolved
+22.8% vs TC avg
Strong +34% interview lift
Without
With
+34.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
40 currently pending
Career history
396
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
72.4%
+32.4% vs TC avg
§102
3.9%
-36.1% vs TC avg
§112
23.4%
-16.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 360 resolved cases

Office Action

§103 §112
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 . Information Disclosure Statement The information disclosure statement (IDS) submitted on 17 January 2024, 31 January 2024 and 13 March 2025 were filed prior to the mailing date of this office correspondence. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Objections Claims 1, 2, 20 and 22 are objected to because of the following informalities: In claim 1, line 11: “a first such nip” should read: -- a first nip -- In claim 1, line 14: “a second such nip” should read -- a second nip -- In claim 2, lines 1-2: “wherein said first and second nip is formed by a patterned cliché cylinder and a milling cutter” should read: -- wherein said first nip and second nip are formed by the patterned cliché cylinder and the milling cutter -- In claim 20, line 2: “the first layer has a thickness of about” should read: -- the first layer has a thickness between -- In claim 22, line 2: “wherein the first has” should read: -- wherein the first layer has -- 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 5-7 and 41-42 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 5, the limitation “wherein the first nip is formed by a first patterned cliché cylinder and a first milling cutter, and wherein the second nip is formed by a second patterned cliché cylinder and a second milling cutter.” renders claim indefinite because, claim 1 upon which claim 5 depends, recites “a milling cutter cooperating with a patterned cliché cylinder,”. If there is “a milling cutter” as recited in claim 1, it is unclear what the recited “a second patterned cliché cylinder and a second milling cutter” are as recited in claim 5. As best understood, the limitation “a milling cutter cooperating with a patterned cliché cylinder” in claim 1 has been interpreted as “at least a milling cutter cooperating with at least a patterned cliché cylinder”, or the like. Same issue is there for the limitations “a second patterned cliché cylinder” in claim 6, “a second milling cutter” in claim 7, “a second milling cutter and a second patterned cliché cylinder” in claim 41, and “a second patterned cliché cylinder in claim 42. 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. Claim(s) 1-2, 5, 10-11, 14-15, 17-18, 20, 22, 24, 27, 30, 36, 37 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Horzella (US 20200337154) in view of Laskey (US 20050167035). [AltContent: textbox (second nip)][AltContent: ][AltContent: textbox (first nip)][AltContent: ] PNG media_image1.png 416 649 media_image1.png Greyscale Annotated Fig. 2B, Horzella. Regarding claim 1, Horzella teaches, a method of producing a product (flexible foil with conductive layer, Fig. 1) comprising a substrate (a web of flex foil including a substrate, a first conductive layer arranged on one surface of the substrate, see Abstract) with at least one 2D-patterned layer (see Fig. 1B) from a multilayer material (web of flex foil, Abstract), wherein the multilayer material is passed through at least one nip (see annotated Fig. 2B), provided by a milling cutter (first milling wheel 20-1, Fig. 2B) cooperating with a patterned cliché cylinder (first cliché 25-1, Fig. 2B, the milling system 12 includes a first cliché 25-1…arranged adjacent to a first milling wheel 20-1, para. [0044]), to selectively remove predetermined portions of material from at least a first layer of the multilayer material in accordance with a pattern of the patterned cliché cylinder, whereby the 2D-patterned layer is formed from the first layer (the first cliché 25-1 is arranged on one side of the web 14…The first cliché 25-1 mills the first pattern on the one side, Fig. 1B, para. [0044], raised portions of the pattern on the cliché push the web into the milling wheel and the corresponding portions of the conductive layer and/or outer insulating layer are removed, para. [0034]), the method comprising: providing the multilayer material comprising at least the first layer (conductive layer 5, Fig. 1B) and a second layer (insulating layer 6, Fig. 1B), feeding the multilayer material through a first such nip (see annotated Fig. 2B) to partially, as seen in a thickness direction of the first layer, remove at least some of the predetermined portions of material from at least the first layer (the milling system 12 includes a first cliché 25-1…arranged adjacent to a first milling wheel 20-1 and a second cliché 25-2…The first cliché 25-1 is arranged on one side of the web 14…The first cliché 25-1 mills the first pattern on the one side, para. [0044]), and feeding the multilayer material through a second such nip (see Fig. 2B) to remove a remainder of said at least some of the material (milling system 12 includes a first cliché 25-1…and a second cliché 25-2…and the second cliché 25-2 is arranged on an opposite side of the web 14. The second cliché 25-2 mills the second pattern on the opposite side, para. [0044]). [AltContent: textbox (second nip)][AltContent: arrow][AltContent: textbox (first nip)][AltContent: arrow][AltContent: textbox (2D pattern)][AltContent: ][AltContent: textbox (second layer)][AltContent: arrow][AltContent: ][AltContent: textbox (first layer)] PNG media_image2.png 528 755 media_image2.png Greyscale Annotated Fig. 4, Laskey. Horzella does not teach, the second nip arranged to remove reminder of the predetermined portions. However, Laskey teaches, a method of producing a product comprising a substrate with at least one 2D-patterned layer (see annotated Fig. 4) from a multilayer material, wherein the multilayer material is passed through at least one nip (nip rollers 46, Fig. 4), to selectively remove predetermined portions of material from at least a first layer of the multilayer material in accordance with a pattern (see annotated Fig. 4), whereby the 2D-patterned layer is formed from the first layer, feeding the multilayer material through a first such nip (nip rollers 46, Fig. 4) to partially, as seen in a thickness direction of the first layer, remove at least some of the predetermined portions of material from at least the first layer (see Fig. 4, foil 10 is fed from foil unwind spool 42 at the same line speed as substrate 34, also to the first pair 46 of nip rollers... Since the adhesive is in an activated state and under pressure from the throughput nip,…an area of lacquer layer 13, metallic layer 14 and complementary adhesive layer 15 from foil 10 corresponding to each discrete adhesive pattern 37 is removed from carrier layer 11 and sticks to the adhesive and is thus transferred onto the substrate 34, para. [0070-0072]), and feeding the multilayer material through a second such nip (second pair of nip 48, Fig. 4, the foil, substrate and activated adhesive then pass through the throughput nip formed by second pair 48 of nip rollers, para. [0072]) to remove a remainder of said at least some of the predetermined portions of material. Horzella teaches in Fig. 2B, a first nip removes predetermined portions of the first layer, and a second nip removes a predetermined portions of the second layer. Horzella further teaches, a portion of the web to pass a cutting cylinder multiple times or by arranging multiple cutting cylinders/patterned cylinders after each other (see Nordlinder, (US 7919027), col. 8, lines 60-64, a reference incorporated by Horzella para. [0033]). Laskey teaches in Fig. 4 and para. [0070-0074], a first nip removes a predetermined portions of the first layer and a second nip that removes the remaining portions of the first layer. Therefore, in view of the teachings of Laskey, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing a 2-D patterned layer of Horzella and to place the second cliché 25-2 and the second milling wheel 20-2 on the same side of the first nip roller as Lasker taught in Fig. 4 so that it enables forming 2D-patterned layers by removing the materials corresponding the locations where material is not removed by the first nip as Laskey disclosed in para. [0071-0073]. An obvious modification of Horzella Fig. 2B is to provide the second nip in the same side as the first nip. Moreover, there is no indication in the instant invention that any surprising results were derived, or that any special steps were devised in removing remainder of the predetermined portions of the material. Such a combination would have been done by one of ordinary skill in the art without any need for experimentation and with reasonable expectations of success. Regarding claim 2, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein said first and second nip is formed by a patterned cliche cylinder and a milling cutter, wherein the multilayer material is passed by the patterned cliche cylinder and the milling cutter at least two times to perform at least a first milling step and a subsequent milling step (a portion of the web to pass a cutting cylinder multiple times or by arranging multiple cutting cylinders/patterned cylinders after each other, Nordlinder, (US 7919027), col. 8, lines 60-64, a reference incorporated by Horzella para. [0033]). Regarding claim 5, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the first nip (see annotated Fig. 2B) is formed by a first patterned cliche cylinder (first cliché 25-1) and a first milling cutter (first milling wheel 20-1), and wherein the second nip (see Fig. 2B) is formed by a second patterned cliche cylinder (second cliché 25-2) and a second milling cutter (second milling wheel 20-2). Regarding claim 10, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein in a first milling step, the multilayer material (flexible foil with conductive layer, Fig. 1) is passed through said first nip (see Fig. 2B) and in a subsequent milling step, the multilayer material (flexible foil with conductive layer, Fig. 1) is passed through said second nip (see Fig. 2B). Regarding claim 11, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein, in the first nip, the milling cutter is set to operate with a first cutting depth, and in the second nip, the milling cutter is set to operate with a second cutting depth, wherein the second cutting depth is larger than the first cutting depth (the first conductive layer and the second conductive layer have a thickness in a range from 5 μm to 40 μm, para. [0009], unless otherwise defined, selecting the cutting depth is a design choice). Regarding claim 14, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the method comprises, when feeding the material through the first nip, forming at least one groove (cutting action will result in two or more parallel grooves 48a, 48b, Fig. 9b, Nordlinder, (US 7919027), col. 7, lines 49-52, a reference incorporated by Horzella) in the first layer. Regarding claim 15, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the multilayer material (flexible foil with conductive layer, Fig. 1) is a flexible material, such as a foil or a film. Regarding claim 17, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the first layer (first conductive layer 5, Fig. 1B) is a conductive layer. Regarding claim 18, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the first layer is formed of one or several metals (conductive layers are made of metal such as Al or Cu, para. [0038]), a metal alloy or a polymer. Regarding claim 20, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the first layer has a thickness of about 5-150 μm, 5-100 μm, 5-75 μm, 5-40 μm, 9- 30 μm or 10-20 μm (the conductive layers are made of metal such as Al or Cu and have a thickness in a range from 5 μm to 40 μm, although other metals or thicker or thinner layers can be used, para. [0038]). Regarding claim 22, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the first has a machinability value, measured as specific cutting force, of more than 300 N/mm2 (Horzella teaches conductive layers are made of metal such as Al or Cu, and have a thickness in a range from 5 μm to 40 μm, in which it is obvious to have same cutting force). Regarding claim 24, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the second layer is formed of a dielectric material (a flexible backing or carrier layer 3 of dielectric material, Fig. 1, Nordlinder, (US 7919027), a reference incorporated by Horzella, para. [0033]). Regarding claim 27, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the multilayer material comprises a cover layer (first insulating layer 6, see annotated Fig. 1B, below) covering at least a portion of a first surface of the first layer. [AltContent: textbox (cover layer)][AltContent: ] PNG media_image3.png 194 356 media_image3.png Greyscale Annotated Fig. 1B, Horzella. Regarding claim 30, Horzella in view of Laskey teaches the recited limitations with respect to claim 1. Horzella further teaches, the method according to claim 1, wherein the multilayer material comprises at least one additional conductive layer (second conductive layer 8, Fig. 1B). Regarding claim 36, Horzella teaches, a device (a milling system 12 for milling a flex foil including two conductive layers, Fig. 2B) for producing a product comprising a substrate with at least one 2D-patterned layer from a multilayer material (Figs. 1A and 1B), the device comprising: at least one milling cutter (first milling wheel 20-1, Fig. 2B) configured to cooperate with at least one patterned cliche cylinder (first cliché 25-1, Fig. 2B, the milling system 12 includes a first cliché 25-1…arranged adjacent to a first milling wheel 20-1, para. [0044]) to form a nip, for selectively removing predetermined portions of material from at least a first layer of the multilayer material in accordance with a pattern of the patterned cliche cylinder (the milling system 12 includes a first cliché 25-1…arranged adjacent to a first milling wheel 20-1 and a second cliché 25-2…The first cliché 25-1 is arranged on one side of the web 14…The first cliché 25-1 mills the first pattern on the one side, para. [0044]), so as to form the 2D-patterned layer from the first layer, the device is configured such that it, in use, provides a first such nip (see annotated Fig. 2B) for removing partially, as seen in a thickness direction of the first layer, at least some of the predetermined portions of material from at least the first layer (the first cliché 25-1 mills the first pattern on the one side, para. [0044]), and the device is configured such that it, in use, provides a second such nip (see annotated Fig. 2B). Horzella does not teach, the second nip arranged to remove reminder of the predetermined portions. However, Laskey teaches, a method of producing a product comprising a substrate with at least one 2D-patterned layer (see Fig. 4) from a multilayer material, wherein the multilayer material is passed through at least one nip (nip rollers 46, Fig. 4), to selectively remove predetermined portions of material from at least a first layer of the multilayer material in accordance with a pattern (see annotated Fig. 4), whereby the 2D-patterned layer is formed from the first layer, feeding the multilayer material through a first such nip (nip rollers 46, Fig. 4) to partially, as seen in a thickness direction of the first layer, remove at least some of the predetermined portions of material from at least the first layer (see annotated Fig. 4, foil 10 is fed from foil unwind spool 42 at the same line speed as substrate 34, also to the first pair 46 of nip rollers... Since the adhesive is in an activated state and under pressure from the throughput nip,…an area of lacquer layer 13, metallic layer 14 and complementary adhesive layer 15 from foil 10 corresponding to each discrete adhesive pattern 37 is removed from carrier layer 11 and sticks to the adhesive and is thus transferred onto the substrate 34, para. [0070-0072]), and feeding the multilayer material through a second such nip (second pair of nip 48, Fig. 4, the foil, substrate and activated adhesive then pass through the throughput nip formed by second pair 48 of nip rollers, para. [0072]) to remove a remainder of said at least some of the predetermined portions of material. Horzella teaches, in Fig. 2B, a first nip removes predetermined portions of the first layer, and a second nip removes a predetermined portions of the second layer. Horzella further teaches, a portion of the web to pass a cutting cylinder multiple times or by arranging multiple cutting cylinders/patterned cylinders after each other (see Nordlinder, (US 7919027), col. 8, lines 60-64, a reference incorporated by Horzella para. [0033]). Laskey teaches in Fig. 4 and para. [0070-0074], a first nip removes a predetermined portions of the first layer and a second nip that removes the remaining portions of the first layer. Therefore, in view of the teachings of Laskey, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing a 2-D patterned layer of Horzella and to place the second nip on the same side of the first nip roller as Lasker taught in Fig. 4 so that it enables forming 2D-patterned layers by removing the materials corresponding the locations where material is not removed by the first nip as Laskey disclosed in para. [0071-0073]. Regarding claim 37, Horzella in view of Laskey teaches the recited limitations with respect to claim 36. Horzella further teaches, the device according to claim 36, wherein the first nip (see annotated Fig. 2B) is formed by a first patterned cliche cylinder (first cliché 25-1) and a first milling cutter (first milling wheel 20-1), and the second nip (see Fig. 2B) is formed by the first patterned cliché cylinder (second cliché 25-2) and a second milling cutter (second milling wheel 20-2). Regarding claim 41, Horzella in view of Laskey teaches the recited limitations with respect to claim 36. Horzella further teaches, the device according to claim 36, wherein the first nip (see Fig. 2B) is formed by a first milling cutter (first milling wheel 20-1) and a first patterned cliche cylinder (first cliché 25-1), and the second nip (see Fig. 2B) is formed by a second milling cutter (second milling wheel 20-2) and a second patterned cliche cylinder (second cliché 25-2). Allowable Subject Matter Claims 6-7 and 42 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Claims 13-17 are allowable by virtue of its dependency. The following is an examiner’s statement of reasons for indicating allowable subject matter: Claim 6 would be allowable for disclosing a method of producing a product comprising a substrate with at least one 2D-patterned layer from a multilayer material, wherein the first nip is formed by a first patterned cliche cylinder and a first milling cutter, and wherein the second nip is formed by a second patterned cliche cylinder and the first milling cutter. Claim 7 would be allowable for disclosing a method of producing a product comprising a substrate with at least one 2D-patterned layer from a multilayer material, wherein the first nip is formed by a first patterned cliche cylinder and a first milling cutter, and wherein the second nip is formed by the first patterned cliche cylinder and a second milling cutter. Claim 42 would be allowable for disclosing a device for producing a product comprising a substrate with at least one 2D-patterned layer from a multilayer material, wherein the first nip is formed by a first milling cutter and a first patterned cliche cylinder, and the second nip is formed by the first milling cutter and a second patterned cliche cylinder. Though, prior art of record Horzella and Laskey teach a first milling cutter, a first patterned cliché cylinder, a second milling cutter and a second cliché cylinder, both Horzella and Laskey fail to teach, the first nip is formed by a first patterned cliche cylinder and a first milling cutter, and wherein the second nip is formed by a second patterned cliche cylinder and the first milling cutter; or the first nip is formed by a first patterned cliche cylinder and a first milling cutter, and wherein the second nip is formed by the first patterned cliche cylinder and a second milling cutter. Prior art of record Nordlinder does not teach a second milling cutter and a second cliché cylinder; or the first nip is formed by a first patterned cliche cylinder and a first milling cutter, and wherein the second nip is formed by a second patterned cliche cylinder and the first milling cutter; or the first nip is formed by a first patterned cliche cylinder and a first milling cutter, and wherein the second nip is formed by the first patterned cliche cylinder and a second milling cutter. Therefore, claims 6-7 and 42 would be allowable. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion Prior art Jambor (US 20060246379) teaches, a method of producing a product comprising a substrate with at least one 2D-patterned layer from a multilayer material, comprising feeding the multilayer material through a first nip, to remove at least some of the predetermined portions of material from at least the first layer, and feeding the multilayer material through a second nip to remove a remainder of said at least some of the predetermined portions of material. Prior art Lane (US 20210092854) teaches, a method of producing 2D-patterned layer from a multilayer material, comprising feeding the multilayer material through a first nip, to remove at least some of the predetermined portions of material from at least the first layer, and feeding the multilayer material through a second nip to remove a remainder of said at least some of the predetermined portions of material. Prior art Walsh (US 20160176179) teaches, a method of producing 2D-patterned layer from a multilayer material, including feeding the multilayer material through a first nip, and feeding the multilayer material through a second nip to remove predetermined portions of material. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE K. ABRAHAM whose telephone number is (571)270-1087. The examiner can normally be reached Monday-Friday 8:30-4:30 EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS J. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSE K ABRAHAM/Examiner, Art Unit 3729
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Prosecution Timeline

Oct 18, 2023
Application Filed
Jun 25, 2026
Non-Final Rejection mailed — §103, §112 (current)

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