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 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 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata (JP 2022-078438; translation provided previously by Examiner, citations below are based upon said provided translation), in view of Kawaguchi et al. (US 2011/0147053 A1).
Regarding claim 1, Shibata discloses a wiring circuit board (fig. 1: X1) comprising: a metal supporting board (10); a first metal thin film (21) disposed on one surface (fig. 2: top, as viewed) of the metal supporting board in a thickness direction; an insulating layer (22) disposed on one surface (top) of the first metal thin film in the thickness direction and having a through hole (22a) penetrating in the thickness direction; a second metal thin film (23) disposed on one surface (top) of the insulating layer; and a conductive layer (24) disposed on one surface (top) of the second metal thin film, wherein, in the through hole, the first metal thin film and the second metal thin film are disposed between the metal supporting board and the conductive layer, the other surface of the first metal thin film is in contact with the one surface of the metal supporting board, the other surface of the second metal thin film is in contact with the one surface of the first metal thin film, and the other surface of the conductive layer is in contact with the one surface of the second metal thin film (all of the above: fig. 2; Abstract; pg. 2, “Description of Embodiments” section, lines 1-8; pg. 3, lines 29-35), and wherein, at least, a material of the first metal thin film is an alloy containing chromium (pg. 3, lines 17-19). Shibata, however, does not explicitly disclose that the content ratio of the chromium in the alloy is 50% by mass or less.
Kawaguchi teaches that it is well known to provide a similar wiring circuit board (Title; Abstract; fig. 1), wherein chromium alloy is applied and the content ratio of the chromium in the alloy is 50% by mass or less (par. 0082).
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 Shibata to incorporate the preferred weight percentage of chromium of Kawaguchi since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. POSITA would have realized that lower than 50% chromium alloys can be easily and readily formed and applied by any number well understood techniques and that selecting the weight ratio to achieve the desired conductivity, resistance to corrosion, adhesion, and/or resistance to cracking or other deleterious environmental effects. Moreover, there is no indication in the instant disclosure that any special alloy composition was devised or that any surprising results were derived from simply using the old wiring circuit board of Shibata with the well-known weight percentage of chromium in the alloy of Kawaguchi. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 3, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 1 as detailed above, and Shibata further discloses that the alloy further contains at least one metal selected from the group consisting of nickel, titanium, tungsten, and molybdenum (pg. 3, lines 17-19: nickel and titanium).
Regarding claim 4, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 1 as detailed above, and Shibata further discloses that a material of the second metal thin film is a second alloy containing chromium (pg. 4, lines 4-6).
Regarding claim 5, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 4 as detailed above, and Kawaguchi further teaches that it is well known to provide a similar wiring circuit board (Title; Abstract; fig. 1), wherein chromium alloy is applied and the content ratio of the chromium in the second alloy is 50% by mass or less (par. 0082).
Regarding the rationale for combination of references, please refer to claim 2, above.
Regarding claim 6, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 4 as detailed above, and Shibata further discloses that the second alloy further contains at least one metal selected from the group consisting of nickel, titanium, tungsten, and molybdenum (pg. 4, lines 4-6: nickel and titanium).
Regarding claim 7, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 4 as detailed above, and Shibata further discloses that the alloy and the second alloy are composed of the same composition (e.g. alloys of chromium and nickel or titanium) (pg. 3, lines 17-19; pg. 4, lines 4-6).
Regarding claim 8, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 1 as detailed above, and Shibata further discloses that the first metal thin film includes: a first metal layer; and a first oxidized layer disposed on one surface of the first metal layer in the thickness direction (pg. 8, lines 13-14).
Regarding claim 9, Shibata in view of Kawaguchi teaches the wiring circuit board of claim 1 as detailed above, and Shibata further discloses that the metal supporting board includes: a metal supporting layer (11); and a surface metal layer (12) disposed on one surface of the metal supporting layer in the thickness direction and having higher electrical conductivity than electrical conductivity of the metal supporting layer (figs. 1-2; pg. 6, lines 27-35).
Response to Arguments
Applicant's arguments filed 06/24/2026 have been fully considered but they are not persuasive.
The Applicant has not argued that Kawaguchi does not teach the limitation of previous claim 2 now amended into claim 1. This is held to be an acknowledgement that Kawaguchi does in fact teach chromium alloy is applied and the content ratio of the chromium in the alloy is 50% by mass or less as cited by the Examiner.
The Applicant’s arguments are directed to the assertion that because Shibata and Kawaguchi use their chromium alloys for different intended functions, the combination rejection is not proper. Respectfully, this argument is conclusory and appears to ignore the actual facts at hand. First, it is quite clear that both references are expressly in the same field of endeavor as one another. Accordingly, the commonly understood state of the art is demonstrated in both prior art references and the preferred chromium content would have been well and truly understood prior to the filing of the instant application. Further, it is entirely evident that the instant inventors did not devise any new or special chromium alloy and instead simply used the old and well-known alloy composition or mass percentages of Kawaguchi. Moreover, there is no indication anywhere in the instant application that any surprising results were derived from this simple use of a known preferred alloy composition from the prior art. The use of the preferred composition was clearly a routine matter, requiring no inventive skill to achieve.
Moreover, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Examiner has clearly demonstrated that it was well-known to select the preferred chromium content and that the advantages were understood prior to filing. Proper rationale for combination was previously and is currently provided by the Examiner in the prior art rejection of claim 1. A test for proper rationale for combination is to determine what the combined teachings of the references would have suggested to those of ordinary skill in the art. POSITA would certainly have realized that the alloy from Kawaguchi, which is in the same field of endeavor as the invention of Shibata, would clearly be usable in a predictably advantageous manner as already detailed in the prior art rejection of claim 2 previously and claim 1 currently.
Further still, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Examiner understands that the Applicant would rather that the Kawaguchi teaching were not used to reject claim 1, but that does not negate it’s propriety for such a rejection. It is simply not germane that the two references may have demonstrated multiple reasons to use the chromium alloys or that they disclose different functions for the chromium alloys. Kawaguchi was not cited to disclose the various other limitations of claim 1. Kawaguchi was cited to expressly demonstrate that prior art in the exact same field of endeavor had already disclosed the use of chromium alloys having the claimed chromium mass content. The additional features or limitations which a secondary reference may disclose are simply not germane to the rejection, or to arguments against it, so long as the prior art has been shown to be reasonably pertinent, to disclose the limitation, and to be obvious to combine. The entire burden for a proper 103 rejection has been met in the prior art rejections above, and therefore none of the above noted arguments are found to be compelling.
Applicant continues by arguing that the prior art does not disclose the intended purpose of the chromium alloy layer. Respectfully, this is a strawman argument and does not have any basis in evidentiary fact. First, it is important to note that the argued limitations “a layer used for suppressing the high frequency current” is not claimed and it is entirely irrelevant if that were the purpose for using the layer in one of the prior art listings. The claims are directed to a product and not to a method of using the product. It is simply not germane how the products of the claims or the prior art may be intended to be used if the structures of the claim have been shown to be taught by the prior art. Therefore, according to the updated prior art rejections above, as well as the response to arguments herein, all of the currently disclosed limitations in the claims are held to be properly rejected, and each argument on the merits has been answered and rebutted.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Sugaya et al. (US 2001/0023779 A1) is held to be of particular relevance. Sugaya appears to disclose a wiring circuit board (Abstract) comprising: a metal supporting board (705); a first metal thin film (704) disposed on one surface (fig. 7A: bottom, as viewed) of the metal supporting board in a thickness direction; an insulating layer (706) disposed on one surface (bottom) of the first metal thin film in the thickness direction and having a through hole (707) penetrating in the thickness direction; a second metal thin film (bottom one of 701) disposed on one surface (bottom) of the insulating layer; and a conductive layer (702) disposed on one surface (top) of the second metal thin film, wherein, in the through hole, the first metal thin film and the second metal thin film are disposed between the metal supporting board and the conductive layer (fig. 7B), the other surface of the first metal thin film is in contact with the one surface of the metal supporting board, the other surface of the second metal thin film is in contact with the one surface of the first metal thin film, and the other surface of the conductive layer is in contact with the one surface of the second metal thin film (all of the above: figs. 7A-7C; Abstract; pars. 0254-0278), and wherein, at least, a material of the first metal thin film is an alloy containing chromium (pars. 0127 and 0402).
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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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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