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 .
Claim Objections
Claims 1-6 are objected to because of the following informalities:
Re. claim 1: The phrase “to form a conductive pattern on the stretchable substrate” as recited in line 9 appears to be --to form the conductive pattern on the stretchable substrate--.
Re. claim 2: The phrase “which a conductive pattern is to be formed” as recited in line 4 appears to be --which the conductive pattern is to be formed--.
Re. claim 6: The phrase “to form a conductive pattern” as recited in line 10 appears to be --to form the conductive pattern--.
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.
Claims 1-6 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.
Re. claim 1: The phrase “at least a portion of one surface of a stretchable substrate” as recited in lines 3-4 renders the claim vague and indefinite. It is unclear as to whether the stretchable substrate is the same substrate as recited in line 1 or not.
The phrase “a conductive pattern forming step of plating the plating base after performing the bending to form a conductive pattern on the stretchable substrate” as recited in lines 8-9 renders the claim vague and indefinite. According to the limitation as recited in line 3, the plating base is formed on the stretchable substrate. It is, however, unclear as to how the plating the plating base can be formed the conductive pattern. Should the process be like “plating a material on the plating base to form the conductive pattern”? Clarification is required.
Re. claim 2: The phrase “the object” as recited in line 3 lacks antecedent basis.
Re. claim 6: The phrase “at least a portion of one surface of a stretchable substrate” as recited in lines 3-4 renders the claim vague and indefinite. It is unclear as to whether the stretchable substrate is the same substrate as recited in line 1 or not.
The phrase “a conductive pattern forming step of plating the plating base after performing the bending to form a metal layer” as recited in lines 8-9 renders the claim vague and indefinite. According to the limitation as recited in line 3, the plating base is formed on the stretchable substrate. It is, however, unclear as to how the plating the plating base can be formed the metal layer. Should the process be like “plating a material on the plating base to form the metal layer”? Clarification is required.
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, 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Michiwaki (PGPub 2018/0160528 A1).
Michiwaki teaches a process of making a flexible substrate with a conductive pattern, comprising steps of: forming a plating base (3, Fig. 9, paragraphs [0041,[0042] and [0054]) in a desired pattern on at least a portion of a surface of the flexible substrate; bending the flexible substrate as shown in Figs. 13-16 (paragraphs [0056]-[0057]); and plating (or electroless plating) a metal layer on the plating base after performing the bending to form a conductive pattern (21, Fig. 19, paragraph [0061]) on the flexible substrate.
However, Michiwaki fails to teach the flexible substrate, as per claim 1 and claim 6, which has a tensile modulus at 20*C of 0.1 MPa or more and 500 MPa or less, an elongation at break of 100% or more and 1000% or less, and a storage modulus at 250°C of 0.1 MPa or more. Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable rangers involves only routine skill in the art. MPEP 2144.04 (il-A). Therefore, since such a modification would have been an obvious design consideration that is within the purview of one having ordinary skill in the art to provide the well-known benefit of obtaining a desirable flexible substrate in the claimed invention. It is to be expected that a small change in physical attributes would be an unpatentable modification. Under some circumstance, a small change in physical attributes may impact patentability to a process if particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the result of the prior art. Such ranges are termed “critical” ranges, and the applicant has the burden of proving such criticality. However, even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. More particularly, where the general conditions of claims are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In this instance applicant has failed to establish the characteristics of the flexible substrate as claimed are critical and amount to more than a small numerical change from the prior art.
Re. claim 2: The flexible substrate is bent by laminating the flexible substrate on a bent portion on which a conductive pattern is to be formed as shown in Figs. 12-19.
Re. claim 3: The flexible substrate is bent using a mold (12, 13, Fig. 13) having a bent portion, and then the flexible substrate is removed from the mold as shown in Figs. 13-16.
Re. claim 4: The flexible substrate is formed using a cured product or a semi-cured product of a resin composition containing a thermosetting resin, and the thermosetting resin contains an epoxy resin containing two or more epoxy groups in one molecule (paragraphs [0041]-[0042]).
Re. claim 5: Michiwaki also teaches a process of etching the conductive pattern as shown in Fig. 19 (paragraphs [0061]-[0068])
Re. claim 6: Michiwaki also teaches a process of making a flexible substrate with a conductive pattern as applied to claim 1 as set forth above, including processes of plating the plating base after performing the bending to form a metal layer and etching the metal layer to form a conductive pattern as shown in Figs. 12-19.
The Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jeong et al. (PGPub 2018/0090698 A1), Rosenau et al. (PGPub 2005/0012199 A1), Liu (US PAT. 11,119,344), and Lee et al. (US PAT. 12,328,817) are cited to further show the state of the art with respect to a method for forming a circuit or wiring on a three-dimensional object having a curved surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL D KIM whose telephone number is (571)272-4565. The examiner can normally be reached Monday-Friday: 6:00 AM-2:00 PM.
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.
/PAUL D KIM/Primary Examiner, Art Unit 3729
Prosecution Insights