Prosecution Insights
Last updated: October 25, 2026
Application No. 18/359,077

METHOD OF PROVIDING ARTICLE WITH ELECTRICALLY-CONDUCTIVE PATTERN

Final Rejection §103
Filed
Jul 26, 2023
Examiner
LEGASPI, EUGENE REY DEVERA
Art Unit
3729
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Eastman Kodak Company
OA Round
2 (Final)
0%
Grant Probability
At Risk
3-4
OA Rounds
1m
Est. Remaining
0%
With Interview

Examiner Intelligence

Grants only 0% of cases
0%
Career Allowance Rate
0 granted / 1 resolved
-70.0% vs TC avg
Minimal +0% lift
Without
With
+0.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
35 currently pending
Career history
42
Total Applications
across all art units

Statute-Specific Performance

§103
50.5%
+10.5% vs TC avg
§102
22.7%
-17.3% vs TC avg
§112
25.8%
-14.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1 resolved cases

Office Action

§103
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 Status In response to a preliminary amendment filed on 08/05/2026. Claims 1, 15, 17, & 19 have been amended, new claims 21 have been added, and claims 1-21 are pending and under examination. Response to Arguments Applicant’s arguments filed on 08/05/2026 have been fully considered but are not persuasive. Applicant argues (page 9 lines 22 – page 10 line 5) that Kuchiyama’s method uses an adhesive in the second substrate, wherein the second substrate “consists” of a transparent polymeric film Respectfully, the Applicant’s argument is not found to be compelling as Kuchiyama describes the adhesive layer as “preferable” rather than required. Moreover, Kuchiyama discloses that the adhesive is not particularly limited, provided that the adhesive is transparent. Thus, the disclosure of the adhesive does not establish its necessity in the combined embodiment. Applicant also argues (page 10 lines 6-24) that the prior art references do not teach the direct application of the darkening agents, but rather provided with the assistance of intervening/intermediate layers. Respectfully, the argument is not found to be compelling as Tombs discloses the non-opaque substrate 150 that overlaid by the antenna pattern, as mentioned in the original non-final rejection. Tombs also teaches that the substrate is antennas patterns comprise a pattern of interconnected microwires in the conductive regions (para. 50). Thus, when Tombs discloses… “In some configurations, after plating the ink with a metal such as copper, the substrate 150 with the microwires can be put through a second bath to apply a darkening agent. In an exemplary configuration, palladium is used as a darkening agent. This darkening agent covers the second side of the plated metal microwires as well as the edges of the microwires as they are also exposed to the bath with the darkening agent” (para. 47) Accordingly, it is evident that Tombs does disclose that the darkening agent may be applied directly to the surface of the metallic pattern Applicant also argues (page 11 line 1 – page 12 line 4) that Lim teaches an arrangement that is quite different compared to Tombs and Kuchiyama, incorporating an intermediate layer which would reduce light transmission. Respectfully, the Applicant’s argument is not persuasive because they attack the Lim reference individually rather than the combination of Tombs, IVO Kuchiyama and Lim. Tombs and Kuchiyama teaches the method for providing an article with a darkening pattern applied to two surfaces. In other words, the rejection was directed towards the combination of Tombs and Kuchiyama’s arrangement. Lim was then relied upon to teach the composition of a second darkening agent, a composition that is not equivalent to the composition of a first darkening agent. For the reasons explained above, claim 1 is rejected. Furthermore, because claims 2-21 are dependent on claim 1, claims 2-21 are rejected as well. 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. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tombs (U.S. Patent Application Publication 20190109381 A1), in view of Kuchiyama et al (J.P. Patent Publication 6059575 B2) hereinafter Kuchiyama, and further in view of Lim et al (U.S. Patent Application Publication 20150205326 A1) hereinafter Lim. Regarding claim 1, Tombs discloses a method (Title: Method for Fabricating a Transparent Antenna) for providing an article (thin-film antennas 300, ¶40) comprising an electrically-conductive metal-containing pattern (conductive planar antenna pattern 320, ¶40), the method comprising, in order: A) providing a metallic pattern on a surface of a first substrate (¶40, “non-opaque substrate 150 overlaid with a conductive planar antenna pattern 320”)( ¶42, “to plate a layer of metal”); B) applying a first darkening agent (darkening agent, ¶47) directly to a first surface of the metallic pattern to form a first darkened surface of the metallic pattern opposite the surface of the first substrate (second side 152, ¶47) (¶47, “palladium is used as a darkening agent. This darkening agent covers the second side of the plated metal microwires as well as the edges… when they are viewed from the second side 152 of the substrate 150”; refer to [section: response to arguments] regarding how the darkening agent is applied directly to the surface); and However, Tombs fails to disclose the method comprising: C) transferring the metallic pattern to a surface of a second substrate that consists of a transparent polymeric film, so that the first darkened surface is in direct contact with the surface of the second substrate, leaving an undarkened second surface of the metallic pattern exposed to view; and D) applying a second darkening agent directly to the undarkened second surface of the transferred metallic pattern to form a second darkened surface of the metallic pattern opposite the surface of the second substrate, Kuchiyama discloses a method (Title: Method for Producing Substrate with Transparent Electrode, and Laminate) for an electrode, wherein the method comprises: C) transferring the metallic pattern (plurality of layers including the adjustment layer 30, transport electrode 30, and metal wiring 70 depicted in FIG. 1) to a surface of a second substrate (transparent substrate 11, p. 7, ll. 15) that consists of a transparent polymeric film (refer to [section: response to argument] regarding an adhesive layer not being required), so that the first darkened surface (p. 3, ll. 1-3, FIG. 1A depicts the side of the support 20 surface being treated by a transparent electrode layer) is in direct contact with the surface of the second substrate (p. 2, ll. 34-35, “the surface of the laminate 80 on the transparent electrode layer 40 side and the transparent substrate 10 are bonded together so they are in close contact with each other (bonding step: FIG. 1B)”), leaving an undarkened second surface of the metallic pattern exposed to view (p. 2, ll. 35-37, “Thereafter, the laminate 80 is peeled off at the interface between the optical adjustment layer 30 and the support 20 (peeling step: FIG. 1D) to obtain the substrate 100 with the transparent electrode”)(p. 3, ll. 15-17, “As shown in Fig. 1D, the support 20 is a material that is peeled off and removed from the substrate 100 with a transparent electrode”); and PNG media_image1.png 503 430 media_image1.png Greyscale D) applying a darkening agent directly to form a second darkened surface (p. 3, ll. 15-17, “As shown in FIG. 1D, the support 20 is a material that is peeled off and removed from the substrate 100 with a transparent electrode, that is, a process member. Therefore, the support 20 may be transparent or colored”, the surface of support 20 is revealed for further transparent electrode treatment). to provide the electrically-conductive metal-containing pattern on the surface of the second substrate (p. 2, ll. 24-40, FIG. 1A-1D depicts the entire process of transferring and providing a plurality of layers from a support 20 to a surface of a second substrate 10). Tombs discloses a method for manufacturing an article comprising a pattern that is provided onto a substrate and applies a first darkening agent to a first surface of said substrate. Kuchiyama discloses a method for producing a substrate with a transparent electrode laminate with the manufacturing steps of transferring a plurality of layers from a surface of one substrate to a surface of another separate substrate via direct contact of the two substrates, peeling away the first substrate so that the plurality of layers adheres and remain to the second. Though the substrate from Tombs and the substrates from Kuchiyama serve separate purposes, Tombs teaches that the substrate contains the darkening and pattern elements while Kuchiyama teaches that layers can be transferred between different layers (substrates). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to take the transferring method of Kuchiyama and utilize it to expose a second surface of a substrate from the disclosure of Tombs to allow for further processing of the transferring layer, namely, the support (first substrate) to be transparent or colored (p. 3, ll. 16-17). Kuchiyama’s method also allows for excellency in high productivity of the transparent electrode layer and the ability to arbitrarily control the optical characteristics of the substrate with the transparent electrode (p. 2, ll. 5-7). However, both Tombs and Kuchiyama fail to disclose the method wherein the metallic pattern is directly and contiguously sandwiched between the first darkening agent and the second darkening agent. (In view of the combination, using Tomb’s method of applying the darkening agent and Kuchiyama’s method of transferring and exposing an untreated surface, it would have been obvious to a POSITA that the transferred metallic pattern would be “sandwiched” as Tomb’s details a side of the plated microwires is covered by a darkening agent; also refer to [section: response to argument] regarding the arrangement of the claimed subject matter). However, both Tombs and Kuchiyama also fail to disclose a second darkening agent and its application onto the second surface of the substrate/plurality of layers. Both also fail to disclose the method wherein the metallic pattern is directly and contiguously sandwiched between the first darkening agent and the second darkening agent. Lim discloses (¶113) the application of a darkening agent (darkened layer 200, ¶115) to first surface of a metallic pattern (layers comprising 300, 400, & 420, ¶67-68, 74, & 115) (bottom surface of layers comprising 300, 400, & 420), and a darkening agent (darkened layer 220) of the undarkened second surface of the substrate (upper surface of layer comprising 300, 400, & 420) (FIG. 3 depicts darkened layers 200 & 220 on both surfaces of layers comprising 300, 400, & 420); and PNG media_image2.png 354 900 media_image2.png Greyscale The method wherein a metallic pattern is directly and contiguously sandwiched between the first darkening agent and the second darkening agent (FIG. 3 depicts the metallic pattern [300, 400, & 420] sandwiched between darkening layers 200 & 220). Regarding there being a first and second darkening layer, though Lim does not mention that the second darkened layer 220 is made of a second darkening agent, Lim does disclose that the extinction coefficient k value is a variable of light absorption coefficient, defining an index of how strong a structure absorbs light as well as a wide range of absorption coefficient k values ranging from 0.2 – 2.5. Though the k and L* value measures different features, a person of ordinary skill in the art would have understood that altering the darkness, k value would have inversely altered the CIELAB lightness L* value as it is known that absorption directly influences reflectance. Also, a darkening layer’s purpose, hence the name, is widely understood in the art to darken a region to selectively lower amount of light being reflected by a neighboring pattern. Because a darkening layer would be applied to a pattern or conductive layer, it would be understood that the L* value is lower said pattern or conductive layer. The same may be applied to a chroma C* value as a darkening layer, hence the name, has a C* value reduced compared to a conductive layer to appear less chromatic and reflect less or selective light. (as an example of this feature being well known, US 20200088922 A1 Banerjee et al further discloses both the extinction coefficient k, lightness L* value, and chroma C* values, indicated a relationship between the optical absorption properties of a material and its resulting color characteristics). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the wide range of k values between a conductive layer and a darkening layer and/or between two darkening layers, and apply it to the method of Tombs, in view of Kuchiyama’s disclosure, would have led to predictable results, allowing for greater concealing properties of the conductive layer, preventing reflection without affecting conductivity, and improved visibility in a screen panel, to alter the a performance of a conductive layer through routine optimization (¶12). Regarding claim 2, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Tombs further discloses the metallic pattern is electrically-conductive (¶41, “The antenna pattern 320 includes a center conductor signal strip (conductive region 365) and coplanar ground regions (conductive region 360)”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 2 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 3, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Tombs further discloses the method comprising the A) providing the metallic pattern (layer of metal, ¶42) on the surface of the first substrate (non-opaque substrate, ¶150) by printing a metal-containing catalytic ink on the surface of the first substrate (¶42, “In a preferred embodiment, the conductive regions 360, 365 of the thin-film antenna 300 are fabricated by using a printing press, such as the flexographic printing system 100 of FIG. 1, to print a pattern of catalytic ink, and then using a roll-to-roll electroless plating system 200 (FIG. 2) to plate a layer of metal over the catalytic ink”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 3 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 4, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Tombs further discloses the metallic pattern comprises a plurality of features that can be spaced apart or connected (¶43, “the conductive regions 360, 365 consist of microwire meshes formed using the electroless plating method described previously relative to FIGS. 1-2 to deposit thin conductive microwires with sufficient density to achieve the required conductivity and with sufficient spacing between the microwires to achieve the required transparency”), which plurality of features can be the same or different for each metallic pattern (¶43 discloses the various elements of microwire meshes comprised in the conductive regions 360 and 365). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 4 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 5, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and both Tombs and Kuchiyama further discloses during the C) transferring under either or both of heat (heating, p. 8, ll. 10) and pressure (pressure-sensitive adhesive, p. 7, ll. 32), the surface of the second substrate (p. 7, ll. 11-13, “the transparent substrate 10 having the adhesive layer 12 on the surface of the transparent substrate 11 is preferably used”) adheres more strongly to the first darkened surface of the metallic pattern (p. 3, ll. 1-3, discloses the surface being treated by a transparent electrode layer) so that when the first and second substrates are pulled apart, substantially all of the metallic pattern and the first darkened surface remain on the surface of the second substrate instead of on the surface of the first substrate (FIG. 1D, p. 2, ll. 34-37, “The surface of the laminate 80 on the transparent electrode layer 40 side and the transparent substrate 10 are bonded together so that they are in close contact with each other, as described in Tombs (bonding step: FIG. 1B). Thereafter, the laminate 80 is peeled off at the interface between the optical adjustment layer 30 and the support 20 (peeling step: FIG. 1D) to obtain the substrate 100 with a transparent electrode”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 5 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 6, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Lim further discloses the first darkened surface (darkening layer 200, ¶113) of the metallic pattern formed in B) (conductive layer 300, ¶113) has an L* value1 (k value, ¶48; lightness value L*, ¶64) that is reduced by at least 1 unit compared to an L* value of the metallic pattern provided in A) before application of the first darkening agent in B) (¶47-49). (Regarding the reason to why Lim teaches the L* value of the darkening layer having a reduced value compared to the conductive layer, as well as the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 6 in the same manner). Regarding claim 7, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Lim further discloses the second darkened surface (darkening layer 220, ¶113) of the transferred metallic pattern formed in D) (conductive layer 300, ¶113) has an L* value (k value, ¶48; lightness value L*, ¶64) that is reduced by at least 1 unit compared to an L* value of the undarkened surface of the transferred metallic pattern provided in C) before application of the second darkening agent in D) (¶47-49). (Regarding the reason to why Lim teaches the L* value of the darkening layer having a reduced value compared to the conductive layer, as well as the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 7 in the same manner). Regarding claim 8, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Lim further discloses the first darkened surface (darkening layer 200, ¶113) of the metallic pattern formed in B) (conductive layer 300, ¶113) has a C* value (k value, ¶48; achromatic color, ¶71) that is closer to zero compared to a C* value of the metallic pattern provided in A) before application of the first darkening agent in B). (Regarding the reason to why Lim teaches the C* value of the darkening layer having a value closer to zero compared to the conductive layer, as well as the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 8 in the same manner). Regarding claim 9, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Lim further discloses the second darkened surface (darkening layer 220, ¶113) of the transferred metallic pattern formed in D) (conductive layer 300, ¶113) has a C* value (k value, ¶48; achromatic color, ¶71) that is closer to zero compared to a C* value of the transferred metallic pattern provided in C) before application of the second darkening agent in D). (Regarding the reason to why Lim teaches the C* value of the darkening layer having a value closer to zero compared to the conductive layer, as well as the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 9 in the same manner). Regarding claim 10, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Lim further discloses: the first darkened surface (darkening layer 200, ¶113) of the metallic pattern formed in B) (conductive layer 300, ¶113) has an L* value (k value, ¶48; lightness value L*, ¶64) that is reduced by at least 1 unit compared to an L* value of the metallic pattern provided in A) before application of the first darkening agent in B) (¶47-49); the second darkened surface (darkening layer 220, ¶113) of the transferred metallic pattern formed in D) (conductive layer 300, ¶113) has an L* value (k value, ¶48; lightness value L*, ¶64) that is reduced by at least 1 unit compared to an L* value of the undarkened surface of the transferred metallic pattern provided in C) before application of the second darkening agent in D) (¶47-49); and the L* value of the first darkened surface of the metallic pattern and the L* value of the second darkened surface of the transferred metallic pattern are the same values, ±5 L* units (¶47-49). (Regarding the reason to why Lim teaches the L* value and C* value of the darkening layer having a value reduced compared to the conductive layer, variable values between different darkened surfaces, and the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 10 in the same manner). Regarding claim 11, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Lim further discloses: the first darkened surface (darkening layer 200, ¶113) of the metallic pattern formed in B) (conductive layer 300, ¶113) has a C* value (k value, ¶48; achromatic color, ¶71) that is closer to zero compared to a C* value of the metallic pattern provided in A) before application of the first darkening agent in B) (¶47-49); the second darkened surface (darkening layer 220, ¶113) of the transferred metallic pattern formed in D) (conductive layer 300, ¶113) has a C* value (k value, ¶48; achromatic color, ¶71) that is closer to zero compared to a C* value of the transferred metallic pattern provided in C) before application of the second darkening agent in D) (¶47-49); and the C* value of the first darkened surface of the metallic pattern and the C* value of the second darkened surface of the transferred metallic pattern are the same values to within ± 25% (¶47-49). (Regarding the reason to why Lim teaches the L* value and C* value of the darkening layer having a value reduced compared to the conductive layer, variable values between different darkened surfaces, and the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 11 in the same manner). Regarding claim 12, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 10, as detailed above, and Lim further discloses: the first darkened surface (darkening layer 200, ¶113) of the metallic pattern formed in B) (conductive layer 300, ¶113) has a C* value (k value, ¶48; achromatic color, ¶71) that is closer to zero compared to a C* value of the metallic pattern provided in A) before application of the first darkening agent in B) (¶47-49); the second darkened surface (darkening layer 220, ¶113) of the transferred metallic pattern formed in D) (conductive layer 300, ¶113) has a C* value (k value, ¶48; achromatic color, ¶71) that is closer to zero compared to a C* value of the transferred metallic pattern provided in C) before application of the second darkening agent in D) (¶47-49); and the C* value of the first darkened surface of the metallic pattern and the C* value of the second darkened surface of the transferred metallic pattern are the same values to within ± 25% (¶47-49). (Regarding the reason to why Lim teaches the L* value and C* value of the darkening layer having a value reduced compared to the conductive layer, variable values between different darkened surfaces, and the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to claim 12 in the same manner). Regarding claim 13, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Tombs further discloses the metallic pattern comprises copper, gold, aluminum, silver, or platinum, or a combination of two or more of these metals (¶39, “metallic plating substance such as copper, silver, gold, nickel, or palladium”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 13 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 14, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Tombs further discloses the darkening agents comprising palladium or nickel (¶39, “metallic plating substance such as copper, silver, gold, nickel, or palladium”). Lim discloses of the first and second darkening agents. (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 14 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 15, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Kuchiyama further discloses the first substrate is a transparent polymeric film (p. 3, ll. 16-17, “the support 20 may be transparent or colored”) comprising one or more organic polymers (p. 3, ll. 17-20, “the material constituting the support is not particularly limited. Polyester resins such as PET, PBT… can be appropriately used”), and the second substrate consists of the same (transparent substrate 11, p. 7, ll. 15) or different one or more organic polymers as the first substrate (p. 7, ll. 15, “for example, cyclic polyolefin resin, acrylic resin, etc.”); . (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 15 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 16, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 1, as detailed above, and Tombs further discloses wherein A) comprises: providing a pattern of a catalytic ink (catalytic ink, ¶42) on the surface of the first substrate (non-opaque substrate 150, ¶40); electrolessly plating a metal onto the pattern of the catalytic ink to form the metallic pattern on the surface of the first substrate (electroless plating, ¶34, “FIG. 1 is a schematic side view of a flexographic printing system 100 that can be used in some embodiments of the invention for roll-to-roll printing of a catalytic ink on both sides of a substrate 150 for subsequent electroless plating”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 16 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 17, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 16, as detailed above, and both Tombs and Kuchiyama further disclose the transfer of the metallic pattern in step C) to the second substrate is carried out while leaving substantially all of the pattern of catalytic ink pattern on the surface of the first substrate (p. 2, ll. 25-40, FIG. 1A-1D depicts the bonding step and peeling step leaving a plurality of layers (30, 40, and 70) on the second transparent substrate 11). Tombs discloses the specific elements and layers of the article, including the electrically-conductive metal-containing pattern, darkening agents, and substrates used for transferring said layers. Kuchiyama teaches a method for transferring a plurality of layers between a support and a substrate. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to configure the transferring method from Kuchiyama to Tombs method to transfer specific layers from substrate to substrate. As depicted from Kuchiyama FIG. 1A-1D, a plurality of layers (30, 40, 70) are transferred, but leaves behind a layer 22. Any variation of which named layers are transferred, or not, allows one of ordinary skill in the art to achieve routine optimization to influence performance, in this case, leaving a substantial portion of the pattern on the first substrate or support. (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 17 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 18, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 16, as detailed above, and Tombs further discloses the pattern of catalytic ink is cured prior to the A-2) electrolessly plating (¶37, “UV curing stations 116, 126, 136, 146 for curing the printed ink on substrate 150”) (¶42, “the thin-film antenna 300 are fabricated by using a printing press, such as the flexographic printing system 100 of FIG. 1, to print a pattern of catalytic ink, and then using a roll-to-roll electroless plating system 200”, the system 100 cures the ink, then is transported to system 200 for electroless plating). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 18 regarding providing an electrically-conductive metal-containing pattern). Regarding claim 19, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 16, as detailed above, and Kuchiyama further discloses substantially all of the pattern of catalytic ink is transferred together with the metallic pattern to the second substrate in step C) (p. 2, ll. 25-40, FIG. 1A-1D depicts the bonding step and peeling step leaving a plurality of layers (30, 40, and 70) on the second transparent substrate 11). (Regarding the reason to combine references, refer to the rejection of claims 1 and 17, supra, as it is applicable to the rejection of claim 19 regarding providing an electrically-conductive metal-containing pattern as well as transferring of a plurality of layers). Regarding claim 20, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 16, as detailed above, and Tombs further discloses the pattern of catalytic ink is provided in A-1) using a flexographic printing process (flexographic printing system 100, ¶34, “FIG. 1 is a schematic side view of a flexographic printing system 100 that can be used in some embodiments of the invention for roll-to-roll printing of a catalytic ink on both sides of a substrate 150 for subsequent electroless plating”). (Regarding the reason to combine references, refer to the rejection of claim 1, supra, as it is applicable to the rejection of claim 20 regarding providing an electrically-conductive metal-containing pattern). Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Tombs, in view of Kuchiyama and Lim, and further in view of Chen et al (U.S. Patent Application Publication 20220371300 A1) hereinafter Chen. Regarding claim 21, Tombs, in view of Kuchiyama and Lim, teaches the method according to claim 16, as detailed above. However, all fail to further discloses the second substrate consisting of poly(vinyl butyral). Chen discloses (Title: Wedge-Shaped Multi-layer Interlayer with Outer Skin Layers of Varying Thickness) wherein the second substrate consisting of polyvinyl butyral (¶119, “each of the layers of the multi-layer interlayer may be formed of at least one thermoplastic polymers… the thermoplastic polymer can be selected from the group consisting of… polyvinyl butyral resins. It should be understood that one or more of the above polymer resins could be included”). Tombs, in view of Kuchiyama and Lim, discloses of a method for producing an article an electrically conductive metal containing pattern to be provided with darkening agents on two surfaces while using a transferring step to expose the sides of the article. Chen discloses of a multi layered structure, enhanced with optical and acoustic properties, wherein each of the layers can be made up of a plurality of resins, including polyvinyl butyral. Thus, it would have obvious to a person of ordinary skill in the art before the effective filing date to use polyvinyl butyral resin, as disclosed by Chen, and apply it to a layer [substrate] from the method of Tombs, IVO Kuchiyama and Lim, as polyvinyl butyral is commonly used in the manufacture of polymer sheets that can be used as layers in light-transmitting laminates (Chen, ¶2-6). Furthermore, it is well known to have light/infrared absorbing compounds that can be used to control the amount of energy passing though the structure. 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE REY D LEGASPI whose telephone number is (571)272-2956. The examiner can normally be reached Monday-Friday 8-5PM. 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 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. /E.D.L./Examiner, Art Unit 3729 /JEFFREY T CARLEY/Primary Examiner, Art Unit 3729 1 Spec. 9 (“The L* value used herein to describe darkened and undarkened metallic patterns or surfaces is a measure of “lightness” used in the CIELAB color space wherein the measured unit value of “0” is typically black in color and a measured unit value of “100” is typically white in color.”)
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Prosecution Timeline

Jul 26, 2023
Application Filed
Feb 06, 2024
Response after Non-Final Action
May 12, 2026
Non-Final Rejection mailed — §103
Aug 05, 2026
Response Filed
Oct 16, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
0%
Grant Probability
0%
With Interview (+0.0%)
3y 4m (~1m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 1 resolved cases by this examiner. Grant probability derived from career allowance rate.

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