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 .
Response to Amendment
This office action is in response to the Amendment and Remarks filed December 23, 2026 wherein claim 1 was amended. Claims 1-7 are pending and considered below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Matsukawa et al., US 2011/0248892 (hereafter Matsukawa) in view of Coleman et al., US 2009/0199966 (hereafter Coleman).
Regarding claim 1, Matsukawa teaches a process of manufacturing a film antenna that includes the steps of:
binding a conducting layer and a first substrate layer formed of a polymer film to each other with a first adhesive (Abstract and paras [0079]-[0082] and Figs. 1A-1E teaching sticking (i.e., binding) a bonding surface of a bonding sheet 1 (i.e., a first substrate layer) to a metal thin film of a plastic film fitted with the metal thin film (metal film 5 and plastic film 6 combination; i.e., a conducting layer) using a bonding layer 3 (i.e., a first adhesive); at para [0081] the sheet 1 is described as plastic, e.g., PET, polyethylene or polypropylene (i.e., a polymer film);
attaching a layer of second adhesive on the conducting layer (Fig. 1A and para [0082]-[0083] teaching the attachment of an adhesive layer 7 (i.e., layer of second adhesive) to the metal thin film 5/plastic film 6 combination);
patterning boundaries of one or more conductive elements, said patterning cutting the boundaries through the layer of second adhesive and the conducting layer but not through the first substrate layer (Fig. 1B and paras [0084]-[0088] teaching cutting through layers 3, 5- 6 (conducting layer) and 7 (second adhesive) using a pinnacle die 20 to create (i.e., pattern) the shape of an antenna, the patterning does not cut through the base material 2 of the first substrate layer);
removing parts of the conducting layer and parts of the layer of second adhesive outside the boundaries of the one or more conductive elements from the first substrate layer (Fig. 1C and para [0090]); and
binding top surfaces of the one or more conductive elements to a second substrate layer formed of a polymer film with the layer of second adhesive patterned into a same patterned form as a patterned form of the one or more conductive elements (Figs. 1C-1D and paras [0092]-[0094] describing laminating a flexible plastic film 8 (i.e., second substrate layer) made from a polymer, e.g. PET polyimide, polypropylene, polyethylene or naphthalate (PEN) using the now patterned adhesive 7 (i.e., second adhesive) patterned into a same pattern form as a patterned form of the conductive element layer 5/6).
Regarding the recitation of "rolling a layered web on a reel, the layered web including the one or more conductive elements attached to the first substrate layer with the first adhesive, and to the second substrate layer with the layer of second adhesive, which is patterned into the same patterned form as the patterned form of the one or more conductive elements," Matsukawa is silent as to performing its method using a roll-to-roll process. Thus, Matsukawa is silent as to rolling the conductive element bound by the first and second substrate layers into a roll. Matsukawa is also silent as to the polymers of the first and second substrate layers being transparent.
Coleman is also directed to the manufacture of a film antenna (Abstract). Coleman teaches a roll-to-roll process that includes binding a conducting layer and a first substrate layer formed of a transparent polymer film to each other with an adhesive (Abstract; Fig. 4 and paras [0034]-[0036]). Fig. 4 illustrates providing a reinforced foil layer (i.e., conducting layer) on a roll, applying an adhesive to the roll, followed by laminating with a substrate drawn from a carrier roll using the adhesive (paras [0034]-[0035]). The substrate is advantageously made from a polymer film transparent to UV irradiation, allowing for curing of the adhesive after laminating at UV station 90 (para [0036]). A roll die cutter is then used to make a partial die cut, i.e., cut only the foil into a pattern of an antenna, followed by removing parts of the conducting layer outside of the boundaries of the pattern (para [0037]). The patterned foil layer located on the substrate web is then wound at an antenna/carrier rewinder 96 (para [0036]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the film antenna manufacturing method of Matsukawa to utilize transparent polymer layers for its first and second substrates for the advantage taught in Coleman of being able to utilize UV curing adhesives in the process. Also, it would have been obvious to one of ordinary skill in the art to perform each of the process steps of Matsukawa in a roll-to-roll process manner, using rewinder reels at the end of individual process steps as taught by Coleman, as a predictable, adequate alternative manufacturing process for making the film antenna of Matsukawa. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
The claim 1 preamble has been amended to recite that the process comprises "steps in the following order." Matsukawa in view of Coleman is understood to perform all of the steps of the process in the same order as recited in claim 1 with the exception that Matsukawa does not teach the step of attaching a layer of the second adhesive on the conducting layer after the step of binding the conducting layer and the first substrate layer with the first adhesive. Specifically, with reference to Fig. 1A and para [0082] of Matsukawa, Matsukawa teaches that the adhesive layer 7 (i.e., second adhesive) is already present on the film 6 side of the metal film 5/plastic film 6 combination, i.e., the conducting layer, prior to a step of bonding the bonding layer 3 (i.e., first adhesive) of the bonding sheet 1 onto a surface of the metal thin film 5.
The selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); see also Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps); MPEP 2144.04.IV.C. In this instance, Applicant has not shown that performing the process in the recited order produces unexpected or superior results. Thus, it is a mere substitution of one known method for another to achieve a predictable result and therefore obvious.
Regarding claim 2, please see the rejection of claim 1 above, the method taught in Matsukawa of not cutting through the substrate layer 2 is understood as kiss-cutting. Also see Matsukawa at paras [0113]-[0121] teaching an alternative embodiment wherein the pinnacle die cutting of the first embodiment is replaced with laser cutting.
Regarding claim 3, please see the rejection of claim 1 above and the discussion therein that the conducting layer of Matsukawa includes a layer of conductive metal 5 and a polymer layer 6.
Regarding claim 4, see Matsukawa teaching its first adhesive has a low bonding strength (para [0081]) and then teaches peeling away of the unwanted portions of the plastic film fitted with the metal thin film (para [0090] and Fig. 1C), understood to teach/suggest the recitation that "said step of removing the parts of the conducting layer and the parts of the second adhesive by pulling said parts away from the first substrate layer with a force that exceeds adhesion of the first adhesive."
Regarding claim 5, the Matsukawa process converted into a roll-to-roll process as taught by Coleman would necessarily result in a recessed web as recited in claim 5 (see, e.g., Fig. 4 of Coleman Matrix roll 94).
Regarding claim 6, as illustrated in Fig. 1C of Matsukawa, the adhesive 7 is patterned, as compared to the adhesive 3, resulting in less adhesive area and predictably weaker adhesive strength than the adhesive strength provided by the adhesive 3.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Matsukawa in view of Coleman as applied to claim 1 and further in view of Masson et al., US 2018/0201811 (hereafter Masson).
Regarding claim 7, Matsukawa is silent as to the layer of the second adhesive being a pressure-sensitive adhesive.
As discussed above in the rejection of claim 2, Matsukawa teaches an embodiment wherein laser cutting is used to cut through the conductive layer (paras [0113]-[0121]). Masson teaches using a pressure-sensitive adhesive film to protect a metal surface (metals including stainless steel, aluminum and copper (paras [0095]-[0097]) during laser machining (paras [0014]-[0023]). In view of the teachings of Masson, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to utilize a pressure-sensitive adhesive as the adhesive 7 of Matsukawa, as a suitable, predictable adhesive for adhering to the conducting layer of Matsukawa, but also for the advantage taught in Masson of protecting the conducting layer of Matsukawa when the process of Matsukawa/Coleman includes laser cutting through the conducting layer that includes a metal foil.
Response to Arguments
Applicant's arguments filed in the Remarks of December 23, 2026 have been fully considered but they are not persuasive.
With reference to the arguments found on pages 4-5 of the Remarks, the examiner agrees that Matsukawa does not teach a method step order of binding the conducting layer on the first substrate with a first adhesive followed by attaching the layer of the second adhesive on the conducting layer. However, as set forth in the rejection above, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); see also Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps); MPEP 2144.04.IV.C. In this instance, Applicant has not shown that performing the process in the recited order produces unexpected or superior results.
Regarding the arguments at page 6 directed to the teachings of Coleman, the fact that Coleman does not teach a second adhesive attached on the conductive layer does not remove Coleman as a prior art reference properly combinable with Matsukawa. In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. In this instance each of the application, Matsukawa and Coleman are directed to the same art, that of the fabrication of thin conductive elements onto a carrier, e.g., a film antenna. Thus both Matsukawa and Coleman are analogous art, properly combinable in the obviousness rejection.
Applicant has not disputed that Matsukawa teaches the step of attaching a second adhesive on the conductive layer. The fact that Coleman does not teach the same process step is not dispositive. Matsukawa teaches all of the claim limitations with the exception of the substrate layers being transparent and the final step of rolling a layered web on a reel. These features are taught by Coleman. The rejection of claim 1 explicitly states as reasons for rejection that it would have been obvious to one of ordinary skill in the art to modify the film antenna manufacturing method of Matsukawa to utilize transparent polymer layers for its first and second substrates for the advantage taught in Coleman of being able to utilize UV curing adhesives in the process. Also, the rejection states that it would have been obvious to one of ordinary skill in the art to perform each of the process steps of Matsukawa in a roll-to-roll process manner, using rewinder reels at the end of individual process steps as taught by Coleman, as a predictable, adequate alternative manufacturing process for making the film antenna of Matsukawa. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
At the penultimate paragraph of page 6, Applicant argues "Moreover, the Office has failed to articulate a rationale as to why a person having ordinary skill in the art would have modified the disclosures of the combined art of record to include the above-noted feature." It is the examiner's understanding the "the above-noted feature" is the second adhesive layer. As discussed above, the second adhesive layer is taught by Matsukawa. Thus, there is no requirement that such feature also be taught by Coleman for Coleman to be properly combined with Matsukawa. As discussed above, Coleman supplies the deficiencies of Matsukawa, which are a lack of teaching of the substrate layers being transparent and the final step of rolling a layered web on a reel, and the office action sets forth reasons why one of ordinary skill in the art would have modified Matsukawa in view of Coleman as to such deficiencies.
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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746