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. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 101 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception of a scientific principle and natural phenonmenon without significantly more. Claim 1 recites “ the physical propertie s of the electrolytic copper foil including elongation, tensile strength and roughness by regulating a surface glossiness of the electrolytic copper foil through addition of a surface glossiness agent ” (emphasis added) . This judicial exception is not integrated into a practical application because the claim relates using a generic amount of a surface glossiness agent in order to regulate the glossiness. The claim further attempts to regulate other physical properties , ala elongation, tensile strength, and roughness, via the glossiness value . Thus, this is a direct property relation necessarily present via the use of glossiness agents without more. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim recites generic “controlling” without more. The step of controlling is not afforded any particular interpretation or differentiation in light of the broadest reasonable interpretation of the instant claim. In other words, the use of the surface glossiness agent necessarily posses the properties in which it affects the production of the copper foil, where the properties of the copper foil are the only part being claimed within the context of “controlling” absent further description as to how the properties are being controlled. Last, the claim does not recite producing a copper foil, just the generic use of a surface glossiness agent without more. The claims do not recite what the glossiness agent is added to, or parameters in which the method is thereby performed. Claims 2, 3, 4, and 5 each independently recite an equation relating the gloss to a particular property but does not impart the equation any way into the method as claimed. Therefore, the claims does not integrate the judicial exception into a practical application as required by step 2a I in accordance with MPEP 2106.04 and do not recite additional elements to allow the claim as a whole to amount to significantly more than the judicial exception as required by MPEP 2106.05. 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 a generic use of a surface glossiness agent which necessarily controls properties of a copper foil. Realistically, the breadth of the instant claim language includes polishing a copper foil with a polishing agent in order to provide the resulting surface glossiness as claimed. (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. (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 § 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 appl icant regards as his invention. Claims 9-15 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. As to claim 9, the recitation “ controlling the physical properties of the electrolytic copper foil according to the method of Claim 1 by adding a surface glossiness agent for improving surface glossiness ” is indefinite because the claim does not recite what the surface glossiness agent is added to. For examination on the merits, it will be interpreted that the surface glossiness agent is added to the electrolytic bath used to form the electrolytic copper foil. As to claim 11, the recitation “ which are nonionic water- soluble polymers ” is indefinite because it is unclear if the claim includes other non-ionic water soluble polymers other than those listed, or merely reciting the claimed elongation agents are non-ionic water soluble polymer. The Examiner suggest language as follows for clarity “wherein the elongation agent comprises a non-ionic water-soluble polymer selected from the group consisting of…”. As to claim 12, the recitation “ which are thiourea-based compounds or compounds in which a thiol group is linked to a nitrogen-containing hetero ring ” is indefinite because it is unclear if the claim includes other thiourea-based compounds or compounds in which a thiol group is linked to a nitrogen-containing hetero ring other than those listed, or merely reciting the claimed tensile strength agents are thiourea-based compounds or compounds in which a thiol group is linked to a nitrogen-containing hetero ring . The Examiner suggest language as follows for clarity “wherein the tensile strength agent comprises a thiourea-based compound i n which a thiol group is linked to a nitrogen-containing hetero ring selected from the group consisting of…”. As to claim 13, the recitation “ which are sulfonic acids (compounds containing sulfur atoms) ” is indefinite because it is unclear if the claim includes other which are sulfonic acids (compounds containing sulfur atoms) other than those listed, or merely reciting the claimed surface glossiness agents are which are sulfonic acids (compounds containing sulfur atoms) . The Examiner suggest language as follows for clarity “wherein the surface glossine s s agent comprises a sulfonic acids selected from the group consisting of…”. 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. Claim s 1-15 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Sakai et al (US 2009/0095515 A1) . As to claim 1, Sakai discloses A method of controlling physical properties of an electrolytic copper foil, comprising: controlling the physical properties of the electrolytic copper foil including elongation, tensile strength and roughness by regulating a surface glossiness of the electrolytic copper foil through addition of a surface glossiness agent ([0106] inclusion of MPA-Na into the platin gbath as shown in Table 1) , wherein the surface glossiness is within a range of 35 to 400 GU (60°) (See Table 2 Examples 1-7 which all show a surface glossiness within the instantly claimed range) . As to claim s 2 -5 , the equation s do not impart further distinction to the instant claim because the equation is not imparted into any particular method step, 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. Thus, w here 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). As to claims 6-8, 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 1 which 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. Claim s 9-15 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 claim s 9 , 12, and 13 , 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 according to the method of Claim 1 by adding a surface glossiness agent for improving surface glossiness ([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]). Sakai discloses in the cited prior art to use a rotating drum electrode ([0004]). 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 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 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 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). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT LOUIS J RUFO whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7716 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 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, FILLIN "SPE Name?" \* MERGEFORMAT Luan Van can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 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