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 .
Status of Amendment
The amendment filed on 15 June 2026 fails to place the application in condition for allowance.
Claims 1, 3, 4, and 7-15 are currently pending and under examination.
Status of Rejections
The rejection of claims 1-4 and 7-15 under 35 U.S.C. 102(a)(1) over Huang is herein withdrawn due to Applicant’s Amendment filed 15 June 2026.
All other rejections are herein maintained.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al (US 2004/0104117 A1) in view of Huang et al (US 2019/0173091 A1).
As to claims 1, 3, and 4, Yang discloses a method for manufacturing an electrolytic copper foil (Title), comprising:
preparing an electrolyte containing copper ion and nickel ion by dissolving copper (Cu) and nickel (Ni) in sulfuric acid ([0033] specific example with copper at 80 g/l and sulfuric acid at 90 g/l which reads on the specific ranges of instant claim 1); and
forming a copper layer by supplying an electric current to a positive plate and a negative electrode rotating drum disposed apart from each other in the electrolyte ([0041] at 60 A/dm2 which falls within the current density).
Yang fails to explicitly disclose wherein a concentration of the nickel ion is 50 ppm to 350 ppm.
Huang discloses the formation of copper foils with the inclusion of nickel in the electrolyte at is 50 ppm to 350 ppm (See table 3 Examples 2/4/6/8 207 ppm which falls within the instantly claimed ranges of instant claim 1 and instant claim 3).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used nickel in the electrolyte at the specific ranges as taught by Huang in the electrolyte of Yang because its inclusion controls the presence of voids in the as formed copper foil ([0023] Huang).
As to the limitations with respect to the curl measurement of instant claim 1 and 4, Yang, as modified by Huang, discloses the method as claimed using the same bath constituents as claimed. The instant specification ties this property to the inclusion of nickel into an electrolyte for manufacturing the electrolytic copper foil into the amounts claimed– see [0013] and [0066] of the as filed specification. Therefore, the property of curl measurement value as claimed is deemed to be an inherent property of the prior art foils due to the inclusion of nickel into the plating baths at the instantly claimed ranges and thus property anticipated. See MPEP 2112.01.
As to claims 7-14, Yang discloses wherein an organic additive is further added when the electrolyte is prepared, and the organic additive includes at least one of an elongation agent, (Table 1 polyethylene glycol at 1 ppm in Embodiment 1 which further reads on instant claims 8, 9, and 10), a tensile strength agent (Table 1 2-imidazolidinethione which also reads on instant claim 8), and a gloss agent (Table 3 SPS which is bis0(3-sulfonylpropyl)-disulfide in an amount 1 ppm in Embodiment 2, 5 ppm in embodiment 4, and 3 ppm in embodiment 7 which further reads on instant claims 13 and 14). Regarding claims 11 and 12, the recitation further limits the optional inclusion of the specific tensile strength agents via dependency on instant claim 7 of “the organic additive includes at least one…” thus since the prior art discloses the other elongation agent and gloss agent, claims 11 and 12 are deemed anticipated via the broadest reasonable interpretation.
As to claim 15, Yang fails to explicitly disclose the thickness of the electrolytic copper foil to be less than 10 µm or less.
Huang discloses thickness of 8 micrometers are appropriate for the inclusion of nickel to prevent voids.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a thickness of 8 micrometers as taught by Huang in the method of Yang because it is a recognized variable as the thickness of a copper foil for the inclusion of nickel within to prevent voids in the copper foil. See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 15 June 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the nickel in the bath is not “nickel ion” in Huang on pg. 6-7, this argument is not persuasive because it is clear the bath that contains nickel is used for electrodeposition which necessarily has to have the nickel in ionic form in order to effect deposition upon application of a potential/current. By Applicant’s own admission, the result of the parameters set out in the claims results in the claimed curl measurement. Yang discloses all those parameters less the nickel concentration, upon which Huang provides motivation and amounts usable for the formation of copper foils that results in less void formation. "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019). (emphasis added).
No further arguments are presented.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 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, Luan Van can be reached at 571-272-8521. 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.
/LOUIS J RUFO/Primary Examiner, Art Unit 1795
Prosecution Insights