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 31 July 2026 fails to place the application in condition for allowance.
Claims 7-16 are currently pending.
Claims 7-16 are currently under examination.
Status of Rejections
Previous rejection of claims 1-8 and 13 are withdrawn due to the cancellation of claims 1-6.
All previous rejections of claims 9-12, 14, and 15 are herein maintained.
New rejections under 35 U.S.C. 112(a) are herein provided via the incorporation of previous limitations found in claims 2-4 into instant claim 9.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the specific description of the correlations found using the process of the specific example beginning at [0084] as the as filed specification, does not reasonably provide enablement for the generic use of a surface glossiness agent in any particular manner in which to form copper foils. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Addressing now the "Wands" factors (MPEP 2164.01 (a)).
(A) The breadth of the claims:
The claim is drawn towards the use of a surface glossiness agent which necessarily controls properties of a copper foil. The claims require generic “control” via use of an equation. The control is not performed in any particular way.
(B) The nature of the invention:
The disclosure is drawn towards formation of electrolytic copper foils for use in a batteries and using a glossiness agent.
(C) The state of the prior art:
The most relevant prior art is cited below with respect to the rejections over prior art.
(D) The level of one of ordinary skill:
One of ordinary skill in the art would have an understanding of electrolytic plating of copper foils and ability to conduct experiments on different additives used and their effects on the resultant properties of a copper foil.
(E) The level of predictability in the art:
Predictably, the amount of a glossiness agent would affect the resulting gloss depending upon the amount used as evidenced by the prior art below. It also stands to reason that as one property is modified, other would change as well.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
The direction provided, particularly to the specific equations used in claims 2-5, is drawn towards a single experiment of exampled 1-9 using a specific starting copper plating bath described in [0086] and performing deposition at specific flow rates, temperature, current density, thickness, and rotating drum speed ([0087]). The examples modified different amount of the specific glossiness agent of SPS throughout each experiment, as well as small changes in copper ion concentration and sulfuric acid concentration (See Table 1).
The equations of claims 2-5 appear to be a best fit curve to the specific results shown in Figs. 1-3 relating different properties to the resulting glossiness of the as formed copper layer. The actual values of the equations are not used in any meaningful way to control any part of the physical properties, outside of inherently showing a change with respect to resulting glossiness. There is no evidence of record showing the equations are applicable to any other system or genetic to the plating of copper foils.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
Because the disclosure and specification are specifically drawn towards electrolytic plating of copper foils and the claims are drawn towards any generic use of any generic gloss agent, a quantity of experimentation cannot be adequately gleaned.
Claim Rejections - 35 USC § 102
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.
Claims 7, 8, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakai et al (US 2009/0095515 A1).
As to claim 16, Sakai discloses a method for manufacturing an electrolytic copper foil, comprising:
adding a surface glossiness agent to the electrolyte and MPS or SPS ([0106] “MPS-Na” which is 3-mercapto-1-propanesulfonic acid or SPS bis-(3-sulfopropyl)-disulfide disodium salt); and to regulate a surface glossiness of the electrolytic copper foil within a range of 34 to 400 GU (60°) (See Table 2 Examples 1-7 which all show a surface glossiness within the instantly claimed range)
controlling the physical properties of the electrolytic copper foil ([0106] “MPS-Na” which is 3-mercapto-1-propanesulfonic acid as required by instant claim 13 or SPS bis-(3-sulfopropyl)-disulfide disodium salt); and
As to Equations 1-3, the equations do not impart further distinction to the instant claim because the equation is merely imparted to the controlling step without specific methodology as to how the control is taking place, but rather a recitation of the property of the claimed copper foil. In other words, Applicant equates the specific use of the specific surface glossiness agents to the specific equations used as such. Since Sakai discloses use of the identical chemicals, in a similar electrolytic deposition process, using a copper electroplating solution the same as those discloses, using the gloss agents in the same amounts as claimed, the prior art properties are deemed to satisfy the instant claims. The prior art discloses using the same glossiness agents in copper electroplating baths to form copper foils at the same concentrations as claimed. Thus, the step of “controlling” is inherently met via the explicit use of same chemicals in the same bath. The claims do not provide a direct framework for how the equations are used to control the glossiness. As stated above, the equations appear to be a best fine line with respect to a very specific plating system described in the Examples. Thus, the recognition of an inherent property equating each property to the gloss of the as formed samples when in the same system is deemed to be inherent in the prior art processes.
Thus, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
As to claims 7 and 8, Sakai discloses the explicit use of 3-mercapto-1-propanesulfopnic acid at a concentration of 15 ppm or 20 ppm (Table 1 example 1 and comparative example 1which reads on instant claims 6-8) and bis-(3-sulfopropyl)-disulfide disodium salt at a concentration of 30 ppm (Table 1 Example 2 thus reading on instant claims 6 and 7).
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 9-12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al in view of Kim et al (US 2004/0104118 A1).
As to claims 9 and 12, Sakai discloses a method for manufacturing an electrolytic copper foil, comprising:
dissolving copper ions in sulfate ions to prepare an electrolyte ([0106] “a copper sulfate solution prepared to contain copper in a concentration of 80 g/L and free sulfuric acid in a concentration of 140 g/L was used”) and adding at least one of an elongation agent ([0106] “DDAC”) for maintaining and improving elongation and a tensile strength agent for maintaining and improving tensile strength to the electrolyte ([0106] “2M-5S” which is 2-mercapto-5-benximidazole sulfonic acid as required by instant claim 12);
controlling the physical properties of the electrolytic copper foil ([0106] “MPS-Na” which is 3-mercapto-1-propanesulfonic acid as required by instant claim 13 or SPS bis-(3-sulfopropyl)-disulfide disodium salt); and
forming the electrolytic copper foil by supplying an electric current while supplying the electrolyte containing additives to a foil manufacturing machine in which a positive plate and a negative electrode are spaced apart from each other. ([0107])
wherein the controlling of the physical properties of the electrolytic copper foild comprises adding a surface glossiness agent to the electrolyte ([0106] “MPS-Na” which is 3-mercapto-1-propanesulfonic acid as required by instant claim 13 or SPS bis-(3-sulfopropyl)-disulfide disodium salt); and to regulate a surface glossiness of the electrolytic copper foil within a range of 34 to 400 GU (60°) (See Table 2 Examples 1-7 which all show a surface glossiness within the instantly claimed range).
Sakai discloses in the cited prior art to use a rotating drum electrode ([0004]).
As to Equations 1-3, the equations do not impart further distinction to the instant claim because the equation is merely imparted to the controlling step without specific methodology as to how the control is taking place, but rather a recitation of the property of the claimed copper foil. In other words, Applicant equates the specific use of the specific surface glossiness agents to the specific equations used as such. Since Sakai discloses use of the identical chemicals, in a similar electrolytic deposition process, using a copper electroplating solution the same as those discloses, using the gloss agents in the same amounts as claimed, the prior art properties are deemed to satisfy the instant claims. The prior art discloses using the same glossiness agents in copper electroplating baths to form copper foils at the same concentrations as claimed. Thus, the step of “controlling” is inherently met via the explicit use of same chemicals in the same bath. The claims do not provide a direct framework for how the equations are used to control the glossiness. As stated above, the equations appear to be a best fine line with respect to a very specific plating system described in the Examples. Thus, the recognition of an inherent property equating each property to the gloss of the as formed samples when in the same system is deemed to be inherent in the prior art processes.
Thus, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
Sakai fails to explicitly use a rotating drum electrode.
Kim discloses using a rotating drum electrode (#100).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a rotating drum electrode as taught by Kim for the cathode in Sakai because it allows for the continuous formation of an electrolytic copper foil (Kim [0006], [0017]).
As to claim 10, Sakai discloses wherein a concentration of copper ions in the electrolyte is 70 g/L to 100 g/L, and a concentration of sulfate ions is 80 g/L to 150 g/L ([0106] 80 g/L and 140 g/L which falls within the claimed ranges).
As to claim 11, Sakai discloses an embodiment using an example of Patent Document 2 which Sakai discloses used HEC (Table 1, [0008]), thus satisfying the claim with a glossiness which falls within the claimed range in comparative example 3.
As to claims 14 and 15, Sakai discloses the explicit use of 3-mercapto-1-propanesulfopnic acid at a concentration of 15 ppm or 20 ppm (Table 1 example 1 and comparative example 1which reads on instant claims 14-15) and bis-(3-sulfopropyl)-disulfide disodium salt at a concentration of 30 ppm (Table 1 Example 2 thus reading on instant claims 14).
Response to Arguments
Applicant's arguments filed 31 July 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument towards the rejections under 35 U.S.C. 112(a) previously applied to claim 1, and now to claim 9 as a result of the incorporation of the equations as claimed, the arguments are not persuasive as the method step of “controlling” is not tied to any particular active control or the like. The actual step provides a surface glossiness agent into the electrolyte in order to enable control. The prior art uses explicitly the same chemicals in the same process as those disclosed which provides a gloss within the range as claimed.
Applicant contends that the instant claims require active controlling on pg.s 7-8 of the response, yet the claim is silent as to “active” controlling or what is required to be considered active. Applicant does not contend that Sakai uses the same method, chemicals, and process as those claimed which results in a gloss value as claimed. Rather, Applicant contends that Sakai does not disclose “active steps or operations to control a concentration of surface glossiness agents”. The generic recitation of “controlling” is met via the addition of surface glossiness agent. Sakai explicitly adds these into the plating baths. Thus, no further control is either explicitly or implicitly implied by the current claim language or the like.
No further arguments are presented.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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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.
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/LOUIS J RUFO/ Primary Examiner, Art Unit 1795
