Prosecution Insights
Last updated: October 02, 2026
Application No. 18/355,513

METHOD AND ELECTRICAL CONTACT ELEMENT

Final Rejection §102§103§112
Filed
Jul 20, 2023
Examiner
ABRAHAM, JOSE K
Art Unit
3729
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Rohde & Schwarz GmbH & Co. KG
OA Round
2 (Final)
83%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 83% — above average
83%
Career Allowance Rate
312 granted / 375 resolved
+13.2% vs TC avg
Strong +33% interview lift
Without
With
+32.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
42 currently pending
Career history
405
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
48.5%
+8.5% vs TC avg
§102
16.2%
-23.8% vs TC avg
§112
31.5%
-8.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 375 resolved cases

Office Action

§102 §103 §112
DETAILED ACTION Response to Amendment Amendment filed on 26 June 2026 has been entered. Claims 1 and 3-22 are now pending in the application. Applicant’s arguments to overcome the drawing objections are persuasive. Therefore, drawing objections have been withdrawn. Amendments to the claim 17 to overcome the informalities are acceptable. Therefore, claim objections have been withdrawn. Response to Arguments Applicant's arguments filed on 26 June 2026 have been fully considered but they are not persuasive. Applicant argues on Page 7 that, “the feature 420 in Mathieu is not a structure of the masking layer 435. Instead, the feature 420 is a separate pyramidal depression etched into substrate 410 before layer 435 is deposited. Moreover, the feature 420 lies beneath the mapped basic layer as mapped in the Office Action. Because the relied-upon feature is in a different layer than the mapped structuring layer and on the wrong side of the mapped basic layer, Mathieu does not disclose these limitations arranged as in claim 1. For at least these reasons, Mathieu does not anticipate the recitations of independent claim 1. Independent claim 18 differs in scope from that of independent claim 1 but is patentable at least for similar reasons.” Examiner respectfully submits that, Mathieu teaches in para. [0127], “first masking material layer 435 is patterned to have an opening over feature 420”, in which the opening is a structure of the masking layer 435. This is because, firstly, claim 1 fails to define “a predefined structure”. Secondly, given their broadest reasonable interpretation, masking layer 435 comprising an opening meets the recited “forming a structuring layer with a predefined structure”. See annotated Figs. 15 and 16 below and para. [0124], “masking material having a preferably square opening measuring approximately of 1-4 mils on a side over a semiconductor substrate”. Mathieu teaches in Figs. 15-16 and para. [00126-0017], “structure 400 after the further processing step of depositing and patterning first masking material layer 435 over substrate 410. First masking material layer 435 is, for example, a photoresist… First masking material layer 435 is patterned to have an opening over feature 420…first conductive material 440 is deposited in the opening in first masking layer 435. First conductive material 440 is, in this example, an electroplate alloy such as a nickel-cobalt alloy similar to the electroplate alloy”. [AltContent: textbox (structure)][AltContent: arrow][AltContent: textbox (structuring layer)][AltContent: ][AltContent: textbox (electrical contact)][AltContent: ] PNG media_image1.png 282 484 media_image1.png Greyscale Annotated Figs. 15 and 16, Mathieu. Though, Figs. 15 and 16 show the structuring layer 435 formed as beneath the basic layer, Mathieu teaches in para, [0127], “depositing and patterning first masking material layer 435 over substrate 410”. The substrate 410 comprises release layer 425 and seed layer 430. Unless otherwise defined the claimed “structuring layer”, Mathieu teaches, the recited limitation “forming a structuring layer with a predefined structure on a basic layer”. Therefore, from the teachings of forming a structure 400 in Figs. 15 to 18b of Mathieu, the recited method of manufacturing of an electrical contact as currently claimed in claims 1 and 18 are insufficient to define over the prior art reference Mathieu. Applicant’s arguments, see Page 8, second paragraph, with respect to claim 13 have been fully considered and are persuasive. The rejection of claim 13 has been withdrawn. Claim Objections Claim 22 is objected to because of the following informalities: In claim 22, line 7: “from the basic layer” should read: -- from the basic layer, -- 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. Claim 15 is 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 15, the limitation “the welding sections are provided on opposing outer edges of the electrical contact element and are configured to overlap each other when the electrical contact element is wound around a conductor.” renders claim indefinite because, if the welding sections are provided on opposing edges of the electrical contact element, it is unclear how the welding sections overlap each other, because the welding sections are at opposing edges. Further, it deemed to read as the welding sections overlap when the contact element is would around a conductor. As best understood, it appears that the limitation actually intends that “the welding sections are provided on opposing outer edges of the electrical contact element and are configured to overlap with a conductor”, or the like. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 1, 3, 6-7, 10-12 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mathieu (US 20080115353). [AltContent: textbox (structuring layer)][AltContent: ][AltContent: textbox (electrical contact)][AltContent: ] PNG media_image1.png 282 484 media_image1.png Greyscale Annotated Figs. 15 and 16, Mathieu. Regarding claim 1, Mathieu teaches, a method for manufacturing an electrical contact element (contact element, Figs. 15 to 22b, see annotated Fig. 15 above), the method comprising: forming a structuring layer (masking material layer 435, Fig. 15) with a predefined structure (feature 420, first masking material layer 435 is patterned to have an opening, para. [0127], masking material having a preferably square opening measuring approximately of 1-4 mils on a side over a semiconductor substrate, para. [0124], Figs. 15 and 16) on a basic layer (seed layer 430, alternatively release layer 425, Fig. 15); adding an electrical contact element layer (conductive material 440, Fig. 16) by depositing electrically conductive material on the basic layer via the structuring layer according to the predefined structure (first conductive material 440 is deposited in the opening in first masking layer 435, para. [0128]); removing the structuring layer; and detaching the electrical contact element layer from the basic layer (first masking material layer 435 may be removed…the tip portion of first conductive material 440 may be separated from substrate 410 at release layer 425… first conductive material 440 is separated from substrate 410, see Figs. 18a and 18b, para. [0131-0132]). "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." See MPEP 2113. Regarding claim 3, Mathieu teaches the recited limitations with respect to claim 1. Mathieu further teaches, the method according to claim 1, wherein the basic layer is formed on a carrier substrate (substrate 410, para. [0126]) and the basic layer comprises a separation layer (release layer 425, Fig. 15, para. [0126]) provided on the carrier substrate. Regarding claim 6, Mathieu teaches the recited limitations with respect to claim 3. Mathieu further teaches, the method according to claim 3, wherein the basic layer comprises a seed layer (seed layer 430, Fig. 15) provided on the separation layer. Regarding claim 7, Mathieu teaches the recited limitations with respect to claim 6. Mathieu further teaches, the method according to claim 6, wherein the seed layer is provided by at least one of DC magnetron sputtering (seed layer…deposited by, for example, a blanket sputter deposition process, para. [0099]), and a thermal evaporation process. Regarding claim 10, Mathieu teaches the recited limitations with respect to claim 6. Mathieu further teaches, the method according to claim 6, wherein the seed layer is removed at least in part after removing the structuring layer (see Fig. 18b). Regarding claim 11, Mathieu teaches the recited limitations with respect to claim 1. Mathieu further teaches, the method according to claim 1, wherein forming the structuring layer comprises: depositing a photoresist layer on the basic layer (first masking material layer 435 is, for example, a photoresist, para. [0127]); exposing specific regions of the photoresist layer to a light source (para. [0101]), the specific regions being defined by the predefined structure (feature 420); and developing the photoresist layer (first masking material layer 435 is patterned to have an opening over feature 420, para. [0127], also see para. [0124]). Regarding claim 12, Mathieu teaches the recited limitations with respect to claim 11. Mathieu further teaches, the method according to claim 11, further comprising: hardening the structuring layer (masking material…to modify the material, for example, by baking or exposure to light in order to cross-link, para. [0101]). [AltContent: textbox (welding section)][AltContent: ][AltContent: textbox (fixation section)][AltContent: arrow] PNG media_image2.png 199 335 media_image2.png Greyscale Annotated Fig. 18b, Mathieu. Regarding claim 16, Mathieu teaches the recited limitations with respect to claim 1. Mathieu further teaches, the method according to claim 1, wherein the predefined structure comprises at least one fixation section, wherein the at least one fixation section (see annotated Fig. 18b above) is provided in the center area of the electrical contact element. [AltContent: textbox (2.5-dimensional electrical contact element)][AltContent: ] PNG media_image3.png 276 515 media_image3.png Greyscale Annotated Fig. 26a, Mathieu. Regarding claim 17, Mathieu teaches the recited limitations with respect to claim 1. Mathieu further teaches, the method according to claim 1, further comprising repeating the steps of forming the structuring layer, and adding the electrical contact element layer for creating a 2.5-dimensional electrical contact element (contact elements 740A and 740B are formed simultaneously, spacer portion 731A is patterned and formed at the same time as beam portion 745B of contact element 740B, see Fig. 26a, para. [0154]). 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) 5, 8, 15, 18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mathieu. Regarding claim 5, Mathieu teaches the recited limitations with respect to claim 3. Mathieu further teaches, the method according to claim 3, wherein the separation layer comprises a thickness between 2µm, and 50µm (release layer 425…deposited to a thickness of approximately 5000 angstroms, para. [0126], a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Moreover, the recited thickness is a design choice, unless otherwise defined). Regarding claim 8, Mathieu teaches the recited limitations with respect to claim 6. Mathieu further teaches, the method according to claim 6, wherein the seed layer is formed with a thickness between 5nm and 300nm (seed layer 430 of copper is deposited to a thickness of approximately 5000 angstroms, para. [0126]). Regarding claim 15, Mathieu teaches the recited limitations with respect to claim 1. Mathieu further teaches, the method according to claim 1, wherein the predefined structure comprises two welding sections (see annotated Fig. 18b above, before the tip portion of first conductive material 440 is separated from substrate 410, the tip portion may be combined with a post portion 4650 and a beam portion 4550 as shown in FIG. 18(b) by, for example, brazing, soldering, or welding, para. [0132]), wherein the welding sections are provided on opposing outer edges of the electrical contact element and are configured to overlap each other when the electrical contact element is wound around a conductor (a spring contact element, see Abstract and the welding section in 18b, claim does not positively recite the electrical contact element is wound around a conductor. Therefore, Mathieu teaches the recited limitation). Regarding claim 18, Mathieu teaches, an electrical contact element (contact elements 900A, 900B, 900C, and 900D, Figs. 28a and 28b) manufactured by: forming a structuring layer (masking material layer 435, see annotated Fig. 15) with a predefined structure (feature 420, Figs. 15 and 16, masking material having a preferably square opening measuring approximately of 1-4 mils on a side over a semiconductor substrate, para. [0124]) on a basic layer (seed layer 430, alternatively release layer 425, Fig. 15); adding an electrical contact element layer (conductive material 440, Fig. 16) by depositing electrically conductive material on the basic layer via the structuring layer according to the predefined structure (first conductive material 440 is deposited in the opening in first masking layer 435, para. [0128]); removing the structuring layer (masking material layer 435); and detaching the electrical contact element layer from the basic layer (first masking material layer 435 may be removed… the tip portion of first conductive material 440 may be separated from substrate 410 at release layer 425… first conductive material 440 is separated from substrate 410, see Figs. 18a and 18b, para. [0131-0132), wherein the electrical contact element comprises: at least one mesh structure (see the tip portions 960A, 960B, 960C, and 960D, Figs. 28a and 28b, tip portions 960A, 960B, 960C, and 960D, respectively, are aligned in a y-direction while base portions 930A, 930B, 930C, and 930D are staggered in an x-direction, para. [0159]). From the teaching of Mathieu an axially aligned contact portions and the post portions in Figs. 27a to 28b and para. [0157-0159], one of ordinary skill in the art would have known that using a plurality of contact elements arranged in X and Y directions would improve the contact of an electrical contact. Therefore, in view of the teachings of Mathieu Figs. 27a to 28b, 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 electrical contact in Fig. 18b and to include a mesh structure as Mathieu taught in Fig. 28b so that it enables an electrical contact element having a plurality of contacts structures arranged in ultra-fine pitch and row along a center line as Mathieu disclosed in para. [0158]. Regarding claim 20, Mathieu teaches the recited limitations with respect to claim 18. Mathieu further teaches, the electrical contact element according to claim 18, further comprising at least one fixation section (see annotated Fig. 18b above), wherein the at least one fixation section is provided in the center area of the electrical contact element, wherein a mesh structure is provided on each one of two opposing sides of the fixation section (see Figs. 28a and 28b). Regarding claim 21, Mathieu teaches the recited limitations with respect to claim 18. Mathieu further teaches, the electrical contact element according to claim 18, further comprising a 2.5-dimensional structure (contact elements 740A and 740B are formed simultaneously, spacer portion 731A is patterned and formed at the same time as beam portion 745B of contact element 740B, Fig. 26a, para. [0154]). Regarding claim 22, Mathieu teaches, a method for manufacturing an electrical contact element (contact elements 900A, 900B, 900C, and 900D, Figs. 28a and 28b), the method comprising: forming a structuring layer (masking material layer 435, see annotated Fig. 15) with a predefined structure (feature 420, Figs. 15 and 16, masking material having a preferably square opening measuring approximately of 1-4 mils on a side over a semiconductor substrate, para. [0124]) on a basic layer (seed layer 430, alternatively release layer 425, Fig. 15); adding an electrical contact element layer (conductive material 440, Fig. 16) by depositing electrically conductive material on the basic layer via the structuring layer according to the predefined structure (first conductive material 440 is deposited in the opening in first masking layer 435, para. [0128]); removing the structuring layer; and detaching the electrical contact element layer from the basic layer (first masking material layer 435 may be removed…the tip portion of first conductive material 440 may be separated from substrate 410 at release layer 425…first conductive material 440 is separated from substrate 410, see Figs. 18a and 18b, para. [0131-0132]), wherein the electrical contact element layer is formed such that the electrical contact element layer after being detached is foldable around a conductor (a spring contact element see Abstract). From the teaching of Mathieu a spring-like contact element in Figs. 27a to 28b and para. [0007, 0157-0159], one of ordinary skill in the art would have known that, unless otherwise defined, the spring-like contact element is foldable around a conductor. Further, claim recites a general function “foldable” without positively enabling a step that the electrical contact element layer is folding around a conductor, or the like. Therefore, in view of the teachings of Mathieu Figs. 27a to 28b, 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 electrical contact in Fig. 18b and forming a spring-like foldable contact element as Mathieu taught in Fig. 28b so that it enables an electrical contact element having a plurality of contacts structures arranged in ultra-fine pitch and row along a center line as Mathieu disclosed in para. [0158]. Claim(s) 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mathieu as applied to claim 1 above, and further in view of Trischler (US 20250137159). [AltContent: textbox (photoresist)][AltContent: arrow] PNG media_image4.png 344 713 media_image4.png Greyscale Annotated Fig. 18, Trischler. Regarding claim 4, Mathieu does not teach, separation layer comprises a photoresist material. However, Trischler teaches, a method for manufacturing an electrical contact element (158, 160 or 126, see annotated Fig. 18 above, para. [0187-190]), including: forming a structuring layer (102) with a predefined structure (intensions 108, Fig. 16) on a basic layer (releaser layer 114); adding an electrical contact element layer (electroplating structure, 122, 122′, 118, 110) by depositing electrically conductive material on the basic layer via the structuring layer according to the predefined structure (indentations 108 can be filled with two or more different metallic substructures, see reference signs 122, 122′, 118, 110 which may be made of two or more different metallic materials for fine-tuning the properties of the wiring structures 164, 166, 168), in which, the method according to claim 3, wherein the separation layer comprises a photoresist material (release layer 114 on the carrier 112 may be coated with an NIL imprintable resist, para. [0148]). Therefore, in view of the teachings of Trischler, 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 electrical contact and replace the basic layer with a photoresist layer as Trischler taught in Fig. 18 so that it enables etching and separating the electrical contact element. Regarding claim 9, Mathieu does not teach, seed layer is formed of the same material as the electrical contact element layer. However, Trischler further teaches, the method according to claim 6, wherein the seed layer (seed layer 118 may be a physically deposited, for instance sputtered, titanium and copper layer, para. 0158]) is formed of the same material as the electrical contact element layer (electroplating structure 110 may comprise copper, para. [0183]). Therefore, in view of the teachings of Trischler, 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 electrical contact and form the seed layer same material as the electrical contact layer as Trischler taught in Fig. 18 so that it enables stacking the electrically conductive layers while manufacturing an electrical contact. Allowable Subject Matter Claims 13-14 and 19 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. The following is an examiner’s statement of reasons for indicating allowable subject matter: Claim 13 would be allowable for disclosing a method for manufacturing an electrical contact element, wherein the predefined structure comprises a mesh structure in at least a section of the structuring layer between two welding sections that are provided on opposing outer edges of the electrical contact element. Claim 19 would be allowable for disclosing a method for manufacturing an electrical contact element, further comprising two welding sections, wherein the welding sections are provided on opposing outer edges of the electrical contact element, and the at least one mesh structure is provided between the two welding sections. Though, prior art of record Mathieu teaches, the mesh structure and the welding sections are provided on opposing outer edges of the electrical contact element, Mathieu fails to teach, the predefined structure comprises a mesh structure in at least a section of the structuring layer between two welding sections that are provided on opposing outer edges of the electrical contact element; or at least one mesh structure is provided between the two welding sections. Prior art of record Trischler does not teach a mesh structure; or a welding section. Therefore, claims 13-14 and 19 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 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 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

Jul 20, 2023
Application Filed
Mar 27, 2026
Non-Final Rejection mailed — §102, §103, §112
Jun 26, 2026
Response Filed
Aug 04, 2026
Final Rejection mailed — §102, §103, §112 (current)

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Prosecution Projections

3-4
Expected OA Rounds
83%
Grant Probability
99%
With Interview (+32.9%)
2y 9m (~0m remaining)
Median Time to Grant
Moderate
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