DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a product having the claims weight retention rates when made from an electrolyte solution comprising:
1) A lead concentration of 1-100 ppm
2) An arsenic concentration of 0.5-5 ppm
3) A silver concentration of 0.1-3 ppm
4) A polishing agent in a concentration of 1-15 ppm
5) A non-ionic water-soluble electrodeposition moderator polymer in a concentration of 1-15 ppm
6) A nitrogen-containing hetrocyclic quaternary ammonium salt of a derivative there of as a roughness regulator in a concentration of 1-15 ppm,
the specification does not reasonably provide enablement for a copper foil having the claimed weight retention rate that is made from any other electrolyte solution. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990), otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all components within the scope of the claims can be used as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988), and is discussed in MPEP 2164.01(a). Upon applying this test to claims 1-5, it is believed that undue experimentation would be required because:
(a) Regarding the breath of the claims, the breadth of the claims is large because the claims do not limit the nature of the copper foil in any way beyond specifying a copper content of 99.9 wt% or more.
(b) Regarding the nature of the invention, the invention by nature involves complex chemical interactions between the electrolyte solution, the deposited copper film, and the immersion solution.
(c) Regarding the state of the art, methods for providing a copper film with the claimed weight retention rates appear unknown in the art.
(d) Regarding the level of ordinary skill in the art, although the level of skill in the art is presumed to be high, methods for providing a copper film with the claimed weight retention rates do not appear to be known in the art and would thus be unknown to one of ordinary skill in the art.
(e) Regarding the level of predictability in the art, the invention involves complex chemical interactions, which are by nature unpredictable.
(f) Regarding the amount of direction provided by the inventor, the specification contains no guidance as to how one might go about creating a copper foil with the claimed weight retention rates other than the use of the electrolyte solution discussed above.
(g) Regarding the existence of working examples, no working examples are provided in the specification other than the use of the electrolyte solution discussed above.
(h) Regarding the quantity of experimentation needed, the quantity of experimentation would be large because the invention involves complex chemical interactions.
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.
Claims 1-5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites copper film weight retention rates after “immersion,” but does not specify what the copper film is being immersed in. For the sake of compact prosecution, the Examiner will assume that the copper film is immersed in an aqueous solution of 20% NaOH, in accordance with the specification. Claims 2-5 are rejected for the same reason due to their dependency from claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ian A Rummel whose telephone number is (571)270-5692. The examiner can normally be reached Monday - Thursday and alternating Fridays, 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IAN A RUMMEL/ Primary Examiner, Art Unit 1785
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