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 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.
Claims 1-17 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, or for pre-AIA the applicant regards as the invention.
Claim 1 discloses “A method for increasing adhesion strength and/or improved wedge void behavior between a surface of copper, a copper alloy or a copper oxide and a surface of an organic material comprising (i) providing a substrate, comprising the copper, copper alloy or copper oxide on at least one side of the substrate, followed by at least one of the steps of (i-c) treating the substrate yielding a substrate comprising copper oxide on at least one side of the substrate, wherein the copper oxide comprises copper (I) and copper (II) in a ratio of 90:10 or higher (mol/mol), preferably in a ratio of 95:5 or higher (mol/mol), even more preferably in a ratio of 98:2 or higher (mol/mol), most preferably the copper oxide essentially consists of copper (I) oxide; and/or (ii) contacting at least one section of the substrate with (a) at least one silane compound of formula (I);
PNG
media_image1.png
156
276
media_image1.png
Greyscale
wherein the ring structure
PNG
media_image2.png
88
58
media_image2.png
Greyscale
is selected from the group consisting of
PNG
media_image3.png
122
268
media_image3.png
Greyscale
and mixtures thereof;
X and Y are independently selected from the group consisting of NH2, NH(NH2), NH(CH2)oNH2, SH, SCH3, and OCH3;
E is selected from the group consisting of --S- , --NH- and --NH-(CH2)m-NH-;
A is selected from the group consisting of NH, N(NH2) and S;
Z is selected from the group consisting of
PNG
media_image4.png
102
248
media_image4.png
Greyscale
m is an integer in the range from 2 to 12,
n is an integer in the range from 1 to 12,
o is an integer in the range from 2 to 12,
R independently denotes (CH2-CH2-0)p-T, wherein independently
p is 0, 1, 2, 3, or 4, and
T denotes H or C1 to C5 alkyl; or
(b) at least one amino acid; or a mixture of (a) and (b), wherein, if both steps (i-c) and (ii) are performed, step (1-c-) is performed prior to step (ii);
(iii) applying the organic material, with the proviso that, if the ring structure
PNG
media_image2.png
88
58
media_image2.png
Greyscale
in the silane compound of formula (I) is
PNG
media_image5.png
108
70
media_image5.png
Greyscale
,
both steps (i-c) and (ii) are performed.” (emphasis added).
Claim 1 is replete with errors and indefiniteness issues to the extent that it is entirely impossible to ascertain the scope or metes and bounds of the disclosed methods (plural). In fact, claim 1 discloses a literally infinite number of possible methods, which is inherently indefinite. The alternatives recited are not at all even related to Markush alternatives, but instead are directed to reciting literally every possible permutation to the extent that the reader cannot possibly even guess what method is being performed or what product is being worked upon or what product is being modified/produced. In U.S. Patent practice it is not permissible and is indefinite to recite this many possible alternatives. In fact, the Examiner is being quite lenient by not also rejecting the claims under 35 U.S.C. 112(a), because it is without question that the Applicant has not performed every method claimed, and therefore did not actually possess the inventions as claimed at the time of filing.
Even the preamble of the claim is indefinite, as it states that the claimed “method” is actually somewhere between one and three methods, even before any claim limitations have been recited. To disclose that the method is for “increasing adhesion strength and/or improved wedge void behavior” is indefinite and casts serious doubt as to whether the inventors have any idea what method they intend to perform. This preamble continues by stating that the inventors (and therefore the readers) also do not know what material(s) is/are being worked upon. Is the surface a material formed from “copper, a copper alloy, or a copper oxide”? The preamble does not answer this question. In fact, there are at least six methods disclosed as being intended in just the preamble alone.
The claim continues by stating that the “providing” step involves the illogical, paradoxical and impossible limitation wherein “a substrate, comprising the copper, copper alloy or copper oxide [is] on at least one side of the substrate”. The “substrate” cannot comprise a material on the “substrate”. An object cannot modify itself. Further, if the substrate comprises one of the copper materials, then the copper material cannot also be on a side of the substrate, which is comprised of the copper material. This is circular logic and creates a physical impossibility.
The limitation of “at least one of the steps of…” is indefinite because it is ambiguous and the reader cannot possibly know which step(s) is/are performed. If the Applicant actually performed the method, then why can they not positively recite which steps were performed?
The “treating” step is indefinite for the same reasons as the “providing” step, because once again the substrate is being modified by itself. The phrase “treating the substrate yielding a substrate…” is literally meaningless and illogical. Further, the substrate was already (indefinitely) disclosed as comprising the copper material on a side of the substrate, so the treating limitation is also indefinite because it has no apparent meaning beyond repeating an indefinite step which was already disclosed. Even further still, “treating” is so broad as to be vague and indefinite. Treating is not an industry standard term and is not specially defined by the applicant and thus can mean processing of a substrate known to man. The indefiniteness is further enhanced by the “preferably”, “even more preferably” and “most preferably” language which makes it entirely unclear which range is being disclosed as the preferred range of the method.
The overwhelming list of indefiniteness issues continues with the fact that the “treating” step “(i-c)” is not even necessarily required by the method, because the method could instead require step “(ii)”, which also contains an unknown number of alternatives (there are at least several hundred thousand different method possibilities recited in step “(ii)” alone). To be clear, hundreds of thousands of alternatives are not Markush alternatives, but instead are expressly and by their very nature, indefinite disclosures. Each alternative variable limitation compounds and confirms the unarguable fact that the Applicant did not actually perform the infinite number of claimed methods.
Two reasonable interpretations of the indefinite claim 1 are as follows:
Interpretation 1. A method for increasing adhesion strength between a surface of copper, a copper alloy or a copper oxide and a surface of an organic material comprising:
(i) providing a substrate, comprising the copper, copper alloy or copper oxide on at least one side of the substrate, followed by:
(i-c) treating the substrate yielding a substrate comprising copper oxide on at least one side of the substrate, wherein the copper oxide comprises copper (I) and copper (II) in a ratio of 90:10 or higher (mol/mol), preferably in a ratio of 95:5 or higher (mol/mol), even more preferably in a ratio of 98:2 or higher (mol/mol),most preferably the copper oxide essentially consists of copper (I) oxide; and
(iii) applying the organic material.
Interpretation 2. A method for increasing adhesion strength between a surface of copper, a copper alloy or a copper oxide and a surface of an organic material comprising:
(i) providing a substrate, comprising the copper, copper alloy or copper oxide on at least one side of the substrate,
followed by:
(ii) contacting at least one section of the substrate with (b) at least one amino acid; and
(iii) applying the organic material.
Claims 2-17 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 1.
Claim 2 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein step (i-c) comprises contacting at least one section of said copper, copper alloy or copper oxide with an aqueous alkaline solution comprising at least one complexing agent” (lines 1-3; emphasis added). A reasonable interpretation of the infinite number of different methods of claim 1 is that step “(i-c)” does not have to be performed at all. Under that reasonable interpretation, claim 2 then has no apparent weight or meaning and does not understandably further limit the scope of the claim from which it depends. A dependent claim must be definite for all reasonable interpretations of the claim(s) from which it depends, but this is not the case for claim 2, which is therefore indefinite.
Claim 3 is further rejected as indefinite, because the claim discloses “The method according to claim 2, wherein the aqueous alkaline solution in step (i-c) has a pH in the range of from 7.5 to 14.0” (lines 1-2; emphasis added). This claim is indefinite for the same reasons as claim 2.
Claim 4 is further rejected as indefinite, because the claim discloses “The method according to claim 2, wherein step (i-c) is applied as dip application and the contact time is 40 s or longer” (lines 1-2; emphasis added). This claim is indefinite for the same reasons as claim 2. Further the claimed contact time range is indefinite because it is open ended and the reader cannot possibly guess how much time was actually intended in the inventive concept. Accordingly, the scope or metes and bounds of the claim cannot be understood by the reader.
Claim 5 is further rejected as indefinite, because the claim discloses “The method according to claim 2, wherein step (i-c) is applied as spray application and the contact time is 10 s or longer” (lines 1-3; emphasis added). This claim is indefinite for the same reasons as claims 2 and 4.
Claim 6 is further rejected as indefinite, because the claim discloses “The method according to claim 1, comprising the step of (ii) contacting at least one section of the substrate with (a) at least one silane compound of formula (I);
PNG
media_image6.png
106
274
media_image6.png
Greyscale
(I)
wherein the ring structure
PNG
media_image7.png
87
59
media_image7.png
Greyscale
is selected from the group consisting of
PNG
media_image8.png
110
212
media_image8.png
Greyscale
and mixtures thereof; X and Y are independently selected from the group consisting of NH2, NH(NH2), NH(CH2)oNH2, SH, SCH3, and OCH3; E is selected from the group consisting of -S- , -NH- and -NH-(CH2)m-NH-; Z is selected from the group consisting of
PNG
media_image9.png
90
234
media_image9.png
Greyscale
m is an integer in the range from 2 to 12, n is an integer in the range from 1 to 12, o is an integer in the range from 2 to 12, R independently denotes (CH2-CH2-0)p-T, wherein independently p is 0, 1,2, 3, or 4, and T denotes H or C1 to C5 alkyl; or (b) at least one amino acid; or a mixture of (a) and (b)” (emphasis added). This claim is indefinite for the reasons set forth with respect to claim 1, as it is impossible to know the scope of the claim which discloses in infinite number of alternatives. Moreover, claim 6 can be reasonably interpreted to require nothing more than: “The method according to claim 1, comprising the step of (ii) contacting at least one section of the substrate with… (b) at least one amino acid”. This reasonable interpretation does not further limit the method of the claims. Further, “formula (I)”, step “(ii)”, step (ii) (a), etc. are already recited in claim 1, but claim 6 implies that “formula (I)” and step “(ii)”, etc. are either new limitations or are replacing the limitations from claim 1, which is confusing and indefinite by virtue of the ambiguity of this sort of claim language replacement from one claim to another.
Claim 7 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein the organic material applied in step (iii) is an organic polymer.” (lines 1-2; emphasis added). This claim is indefinite for the same reasons as claim 2.
Claim 8 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein the organic material is applied in step (iii) by laminating the organic material onto at least the contacted section of the copper, copper alloy or copper oxide” (lines 1-4; emphasis added). This claim is indefinite for the same reasons as claim 2.
Claim 9 is further rejected as indefinite, because the claim discloses “The method according to claim 1, if a step (ii) is performed, additionally comprising the following step before conducting step (ii): (i-a) contacting the at least one section of said copper, copper alloy or copper oxide with an etch-cleaning solution” (lines 1-5; emphasis added). This claim is indefinite for the same reasons as claim 2.
Claim 10 is further rejected as indefinite, because the claim discloses “The method according to claim 1, if a step (ii) is performed, additionally comprising the following step before conducting step (ii):(i-b) contacting the at least one section of said copper, copper alloy or copper oxide with a (preferably second) etch-cleaning solution” (lines 1-5; emphasis added). This claim is indefinite for the same reasons as claim 2. The “(preferably second)” limitation is also indefinite because the reader is left to guess whether it is required.
Claim 11 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein after step (ii), after step (i-a), after step (i-b) and/or after step (i-c), a rinsing of the at least one section of the copper, copper alloy or copper oxide is performed” (lines 1-4; emphasis added). This claim is indefinite for the same reasons as claim 2. Further, the numerous alternatives are found to be indefinite as in claim 1, because the reader cannot possibly guess what the actual inventive method is intended to be. Further still, there is a lack of antecedent basis for the “at least one section” limitation. Claim 1 does recite “at least one section”; however, it is directed to the “substrate” as a whole, and not to the copper material(s).
Claim 12 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein after step (ii), after step (i-a), after step (i-b) and/or after step (i-c), a drying of the at least one section of copper, copper alloy or copper oxide is performed” (lines 1-4; emphasis added). This claim is indefinite for the same reasons as claims 2 and 11.
Claim 13 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein after step (ii), no baking of the at least one section of copper, copper alloy or copper oxide is performed” (lines 1-3; emphasis added). This claim is indefinite for the same reasons as claim 2 and 11. The claim is further found to be indefinite because it is impossible to understand how the negative limitation of “no baking of the at least one section of copper, copper alloy or copper oxide is performed” is intended to further limit the claimed method. Simply put, in a method invention, not performing a step does not understandably further limit the actual steps of the method.
Claim 14 is further rejected as indefinite, because the claim discloses “The method according to claim 1, comprising after step (iii) the additional step: (iv) subjecting the substrate and the organic material to a heat treatment with a temperature in the range from 142˚C to 420˚C” (lines 1-4; emphasis added). This claim is indefinite for the same reasons as claim 2.
Claim 15 is further rejected as indefinite, because the claim discloses “The method according to claim 1, wherein after step (ii), after step (i-a), after step (i-b) and/or after step (i-c), a rinsing of the at least one section of the copper, copper alloy or copper oxide is performed” (lines 1-4; emphasis added). This claim is indefinite for the same reasons as claim 2.
Claim 16 is further rejected as indefinite, because the claim discloses “The method according to claim 3, wherein step (i-c) is applied as dip application and the contact time is 40 s or longer” (lines 1-2; emphasis added). This claim is indefinite for the same reasons as claims 2 and 4.
Claim 17 is further rejected as indefinite, because the claim discloses “The method according to claim 3, wherein step (i-c) is applied as spray application and the contact time is 10 s or longer” (lines 1-2; emphasis added). This claim is indefinite for the same reasons as claims 2 and 4.
NOTE: All of the examined claims (i.e. claims 1-17) have been interpreted and examined as best understood according to the 112(b) rejections, above.
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 1-2 and 4-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miura et al. (US 2016/0368935 A1).
Regarding claim 1, Miura discloses a method for increasing adhesion strength and/or improved wedge void behavior between a surface of copper, a copper alloy or a copper oxide and a surface of an organic material (Title; Abstract; par. 2) comprising (i) providing a substrate (base material, and metal), comprising the copper, copper alloy or copper oxide on at least one side of the substrate (pars. 25-26, 193-201),
followed by at least one of the steps of
(ii) contacting at least one section of the substrate with
PNG
media_image1.png
156
276
media_image1.png
Greyscale
PNG
media_image2.png
88
58
media_image2.png
Greyscale
PNG
media_image3.png
122
268
media_image3.png
Greyscale
PNG
media_image4.png
102
248
media_image4.png
Greyscale
(b) at least one amino acid (par. 294)
(iii) applying the organic material (pars. 193-195),
PNG
media_image2.png
88
58
media_image2.png
Greyscale
PNG
media_image5.png
108
70
media_image5.png
Greyscale
Regarding claim 2, Miura discloses the method according to claim 1, wherein step (i-c) comprises contacting at least one section of said copper, copper alloy or copper oxide with an aqueous alkaline solution comprising at least one complexing agent (pars. 128, 244, 293-294). Though cited from the prior art as a courtesy, the “limitations” of this claim are not actually expressly required by the claimed method, as step “(i-c)” of claim 1 is optional.
Regarding claim 4, Miura discloses the method according to claim 2, wherein step (i-c) is applied as dip application and the contact time is 40 s or longer (pars. 287-288). Though cited from the prior art as a courtesy, the “limitations” of this claim are not actually expressly required by the claimed method, as step “(i-c)” of claim 1 is optional.
Regarding claim 5, Miura discloses the method according to claim 2, wherein step (i-c) is applied as spray application and the contact time is 10 s or longer (pars. 287-288). Though cited from the prior art as a courtesy, the “limitations” of this claim are not actually expressly required by the claimed method, as step “(i-c)” of claim 1 is optional.
Regarding claim 6, Miura discloses the method according to claim 1, comprising the step of (ii) contacting at least one section of the substrate with
PNG
media_image6.png
106
274
media_image6.png
Greyscale
PNG
media_image7.png
87
59
media_image7.png
Greyscale
PNG
media_image8.png
110
212
media_image8.png
Greyscale
PNG
media_image9.png
90
234
media_image9.png
Greyscale
Regarding claim 7, Miura discloses the method according to claim 1, wherein the organic material applied in step (iii) is an organic polymer (pars. 193-196, 204-205, 235-237 and 242).
Regarding claim 8, Miura discloses the method according to claim 1, wherein the organic material is applied in step (iii) by laminating the organic material onto at least the contacted section of the copper, copper alloy or copper oxide (par. 297).
Regarding claim 9, Miura discloses the method according to claim 1, if a step (ii) is performed, additionally comprising the following step before conducting step (ii): (i-a) contacting the at least one section of said copper, copper alloy or copper oxide with an etch-cleaning solution (pars. 486 and 491). Though cited from the prior art as a courtesy, the “limitations” of this claim are not actually expressly required by the claimed method, as step “(ii)” of claim 1 is optional.
Regarding claim 10, Miura discloses the method according to claim 1, if a step (ii) is performed, additionally comprising the following step before conducting step (ii): (i-b) contacting the at least one section of said copper, copper alloy or copper oxide with a (preferably second) etch-cleaning solution (pars. 486 and 491). Though cited from the prior art as a courtesy, the “limitations” of this claim are not actually expressly required by the claimed method, as step “(ii)” of claim 1 is optional.
Regarding claim 11, Miura discloses the method according to claim 1, wherein after step (ii), after step (i-a), after step (i-b) and/or after step (i-c), a rinsing of the at least one section of the copper, copper alloy or copper oxide is performed (pars. 290-292).
Regarding claim 12, Miura discloses the method according to claim 1, wherein after step (ii), after step (i-a), after step (i-b) and/or after step (i-c), a drying of the at least one section of copper, copper alloy or copper oxide is performed (pars. 290-291).
Regarding claim 13, Miura discloses the method according to claim 1, wherein after step (ii), no baking of the at least one section of copper, copper alloy or copper oxide is performed (pars. 194 and 287-305: no baking is disclosed in the cited method).
Regarding claim 14, Miura discloses the method according to claim 1, comprising after step (iii) the additional step: (iv) subjecting the substrate and the organic material to a heat treatment with a temperature in the range from 142˚C to 420˚C (150˚C: par. 291).
Regarding claim 15, Miura discloses the method according to claim 1, wherein after step (ii), after step (i-a), after step (i-b) and/or after step (i-c), a rinsing of the at least one section of the copper, copper alloy or copper oxide is performed (pars. 290-292).
Claims 1-3 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamaji et al. (US 12,091,430 B2).
Regarding claim 1, Yamaji discloses a method for increasing adhesion strength and/or improved wedge void behavior between a surface of copper, a copper alloy or a copper oxide and a surface of an organic material (Title; Abstract;) comprising (i) providing a substrate (base material, and metal), comprising the copper, copper alloy or copper oxide on at least one side of the substrate (Abstract; cols. 3-4, lines 48-67 and 1-10),
followed by at least one of the steps of
(ii) contacting at least one section of the substrate with
PNG
media_image1.png
156
276
media_image1.png
Greyscale
PNG
media_image2.png
88
58
media_image2.png
Greyscale
PNG
media_image3.png
122
268
media_image3.png
Greyscale
PNG
media_image4.png
102
248
media_image4.png
Greyscale
(b) at least one amino acid (col. 16, lines 35-48; col. 17, lines 7-48);
(iii) applying the organic material (col. 15, lines 11-38),
PNG
media_image2.png
88
58
media_image2.png
Greyscale
PNG
media_image5.png
108
70
media_image5.png
Greyscale
Regarding claim 2, Yamaji discloses the method according to claim 1, wherein step (i-c) comprises contacting at least one section of said copper, copper alloy or copper oxide with an aqueous alkaline solution comprising at least one complexing agent (col. 33, lines 16-47). Though cited from the prior art as a courtesy, the “limitations” of this claim are not actually expressly required by the claimed method, as step “(i-c)” of claim 1 is optional.
Regarding claim 3, Yamaji discloses the method according to claim 2, wherein the aqueous alkaline solution in step (i-c) has a pH in the range of from 7.5 to 14.0 (col. 27, lines 8-10: pH of 1.0-12.0 disclosed, thus encompassing pH of 7.5-12.0 from claimed range).
Regarding claim 16, Yamaji discloses the method according to claim 3, wherein step (i-c) is applied as dip application (immersion) and the contact time is 40 s or longer (col. 31, lines 26-51; col. 32, lines 40-54).
Regarding claim 17, Yamaji discloses the method according to claim 3, wherein step (i-c) is applied as spray application (spraying) and the contact time is 10 s or longer (col. 31, lines 26-51; col. 32, lines 40-54).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Tsuyoshi et al. (JP 2017-048467 A; cited by Applicant) is held to disclose most, if not all, of the limitations of at least claim 1 (see pars. 0009, 0027-0028, 0040, and 0047). The Tsuyoshi reference is not currently applied as an anticipation rejection due to the completeness of the above applied art, and in order to avoid an overly long Office Action or duplicative rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 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, Sunil Singh can be reached at (571)272-3460. 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.
/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
Prosecution Insights