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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 17 April 2026 is acknowledged.
Claims 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 April 2026.
The requirement is still deemed proper and is therefore made FINAL.
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 1-12 and 18 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.
Regarding Claim 1, it is unclear what is meant by “average surface roughness (Sz)”. “Sz” is typically a maximum height parameter, not an “average surface roughness” which could be indicated by “Sa”. Thus, it is unclear what is being claimed. Furthermore, it is unclear what standard testing method is being claimed. Is it that of the Specification at paragraph 69, or not necessarily?
Regarding Claim 1, it is unclear what “ppm” basis is being claimed. Is this a mass basis, or something else, for both ingredients?
Regarding Claim 8, it is unclear what is the antecedent basis of “additive” since previous Claim 7 refers to “additives” (as does previous Claim 1). It is unclear whether this claim precludes other additive, or merely requires that, among whatever additive there is, these must be included.
Regarding Claim 9, for R7 and “, including”, it is unclear whether the group must have each C2-C8 alkylene and C5-10 cycloalkylene, one of these, possibly these, or something else. It is unclear whether the claim means that the linking group must be specifically one of these as opposed to a group that could include these structures, along with other moieties. Analogous rejection applies to A and “, including”.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended 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 2-12 and 18 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Regarding Claims 1-12 and 18, the reviewed prior art does not teach or suggest the subject matter of these claims. Particularly, the reviewed prior art does not teach or suggest copper foil having claimed Sz and properties (i) or (ii) after heat treatment, in the claimed context. For example, Kao USPA 2019/0136397 teaches and suggests copper foil formed by electrolytic plating with claimed ingredients (Table 1) followed by heating for time that could be 2 hrs. (paragraph 50). However, Kao fails to exemplify claimed heating time period and fails to expressly teach or suggest claimed properties (i) or (ii) for the overall foil or provide basis for establishing inherency of these properties. See Kao (Claims 1 and 5; and entire document). For example, Fujisawa WO 2017/051767 teaches and suggests copper foil formed by electrolytic plating with chloride and additive ingredients (paragraphs 44, 45, 51, and 52) followed by heating for time period. However, Fujisawa fails to exemplify claimed heating time period (paragraph 91) and fails to expressly teach or suggest claimed properties (i) or (ii) for the overall foil or provide basis for establishing inherency of these properties. See Fujisawa (entire document).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784 25 June 2026
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