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 .
Election/Restrictions
In response to amended claim 13, claims 13-19 are now included in Group I and are no longer withdrawn from consideration.
Cla-im 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 applicant regards as his invention.
Claims 13-19 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.
In reference to claim 13, the limitation “the seed layer comprises Cu and has tensile stress with respect to the substrate” is recited in lines 5-6, it is unclear if the Cu is the first metal material or if Cu is included in the seed layer in addition to the first metal material. Similarly, it is unclear if the tensile stress is the first type of stress or in addition to the first type of stress. For the purpose of compact prosecution the limitation will be interpreted as the first metal material is Cu and the first type of stress with respect to the substrate is tensile stress.
The limitation “the first conductive layer comprises Cu and has compressive stress with respect to the substrate” is recited in lines 7-8. It is unclear if the Cu is the first metal material or in addition to the first metal material and the compressive stress is the second type of stress or in addition to the second type of stress. For the purpose of compact prosecution the limitation will be interpreted as the first metal material is Cu and the second type of stress with respect to the substrate is compressive stress.
The limitation “the second conductive layer comprises Ni and has tensile stress” in lines 9-10. It is unclear if the Ni is the second metal material or in addition to the second metal material and the compressive stress is the first type of stress or in addition to the first type of stress. For the purpose of compact prosecution the limitation will be interpreted as the second metal material is Ni and the first type of stress with respect to the substrate is tensile stress. It is suggested to amend lines 5-11 to the first metal material is Cu, the second metal material is Ni, the first type of stress is tensile stress and the second type of stress is compressive stress, in order to ensure clarity and ensure no issue with new matter. However, clarification is requested.
Regarding dependent claims 14-19, these claims do not remedy the deficiencies of parent claim 13 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 102
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 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 1-6, 10, 13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuchida (JP 2019-102572).
The Applicant has provided a copy of JP 2019-102572 with the IDS filed 02/12/2024. It is noted that when utilizing JP 2019-102572, the disclosures of the reference are based on US 2020/0273763 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to JP 2019-102572are found in US 2020/0273763.
In reference to claims 1-6, 10, 13 and 17, Tsuchida teaches a glass core including a glass plate; a first metal layer disposed on the glass plate; a first electrolytic copper plating layer disposed on the first metal layer; a dielectric layer disposed above the first copper plating layer; a second metal layer disposed on the dielectric layer and an electroless nickel plating layer disposed on the second metal layer ([0012]; [0054]) (corresponding to a layered structure, comprising: a substrate comprising glass or glass ceramic; a seed layer; a first conductive layer; a second conductive layer).
The first metal layer includes a laminate of a titanium layer and a copper layer ([0062]). The titanium layer enhances the adhesion with the glass plate and the copper layer enhances the adhesion of the titanium layer and the electrolytic copper plating layer ([0062]) (corresponding to an adhesion layer disposed on the substrate; the adhesion layer comprises Ti; a seed layer disposed on the adhesion layer, the seed layer comprising a first metal material; a first conductive layer disposed on the seed layer, the first conductive layer comprising the first metal material; the first metal material comprises copper). The nickel plating layer is applied over the first copper plating layer (FIG. 1) (corresponding to a second conductive layer disposed on the first conductive layer, the second conductive layer comprising a second metal material; the first metal material is different from the second metal material; the second metal material comprises nickel).
Tsuchida further teaches the thickness of the electroless nickel plating layer is 1 µm or less and the thickness of the first electrolytic copper plating layer is 1 or more and 20 µm or less ([0070]; [0074]). Thus, it is clear a thickness ratio of the first copper plating layer to the nickel plating layer falls within the presently claimed (i.e., 1:1; 20/0.1 = 200:1) (corresponding to the first conductive layer and the second conductive layer have a thickness ratio in a range of from about 10:1 to about 1:1).
Given that the first metal layer having the copper layer (i.e., seed layer), first electrolytic copper plating layer (i.e., first conductive layer) and electroless nickel plating layer (i.e., second conductive layer) of Tsuchida are substantially identical to the present claimed seed layer, first conductive layer and second conductive layer in composition and structure, it is clear the copper layer of the first metal layer and the electroless nickel plating layer of Tsuchida would inherently include a first type of stress with respect to the substrate and the first electrolytic copper plating layer of Tsuchida would inherently include a second type of stress with respect to the substrate, wherein the first type of stress and the second type of stress are selected from tensile stress and compressive stress, and the first type of stress is different from the second type of stress.
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). See MPEP 2112.01 (I).
Claim Rejections - 35 USC § 102/103
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.
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 7 and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsuchida.
In reference to claims 7 and 14, Tsuchida teaches the limitations of claim 1 and claim 13, as discussed above. Tsuchida further teaches the first metal film is a sputtered laminated film of titanium and copper ([0062]) (corresponding to the adhesion layer and the seed layer are sputtered coatings). The nickel plating layer is an electroless nickel plating layer ([0066]) (corresponding to the second conductive layer comprises electroless plated coatings).
Although Tsuchida does not explicitly teach the first copper plating layer is an electroless plated coating as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Tsuchida meets the requirements of the claimed product, Tsuchida clearly meets the requirements of the present claim.
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 1-10 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Masai (US 2006/0222821).
In reference to claims 1-6 and 13, Masai teaches a composite substrate including a substrate and a conductive film thereon ([0002]) (corresponding to a layered structure). The conductive film is formed on the substrate via a seed layer ([0054]). The substrate is made of materials such as glass ([0055]) (corresponding to a substrate comprising glass or glass ceramic). The seed film is a laminate structure made of an adhesion layer made of titanium (Ti) and an electrode film made of copper (Cu) laminated in this order ([0057]) (corresponding to an adhesion layer disposed on the substrate; a seed layer dispose don the adhesion layer; the seed layer comprising a first metal material; the adhesion layer comprises Ti; the first metal material comprises copper).
The conductive film is configured with conductive materials such as copper or nickel ([0058]). The conductive film is a laminate including a main conductive film having an internal stress being a tensile stress and a sub-conductive film having an internal stress being a compressive stress ([0019]; [0058]) (corresponding to a first conductive layer disposed on the seed layer; the first conductive layer having a second type of stress with respect to the substrate; a second conductive layer disposed on the first conductive layer; the second conductive layer having the first type of stress with respect to the substrate; the first type of stress and the second type of stress are selected from tensile stress and compressive stress, and the first type of stress is different from the second type of stress).
Given that Masai teaches the main conductive film and sub-conductive film which overlaps the presently claimed first conductive layer and second conductive layer, including being configured with conductive material such as copper (Cu) or nickel (Ni), it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use nickel as the conductive material of the main conductive film and copper as the conductive material of the sub-conductive film, which is both disclosed by Masai and encompassed within the scope of the present claims (corresponding to the first conductive layer comprising the first metal material; the second conductive film comprising a second metal material; the first metal material is different from the second metal material; the first metal material comprises copper, and the second metal material comprises nickel).
Masai further teaches the seed layer including the electrode film made of Cu can be formed by sputtering ([0057]; [0064]). Given that the Cu film of the seed layer of Masai is substantially identical to the present claimed seed layer in composition, structure and produced by a substantially identical process, it is clear that the Cu film would inherently have a tensile stress with respect to the substrate.
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). See MPEP 2112.01 (I).
Masai further teaches the conductive film includes the main conductive film (i.e., Ni layer having a tensile stress) and the sub-conductive film (i.e., Cu layer having a compressive stress), laminated in this order repeatedly from the side near the substrate (claim 5; [0025]; [0086]). Alternatively, the conductive film is a laminated structure in which the sub-conductive film and the main conductive film are laminate in this order from the side near the substrate (claim 6). Therefore, it is clear the composites substrate includes at least the following layers in the following order the substrate, the adhesion layer made of Ti, the film made of Cu having a tensile stress, the main conductive film, the sub-conductive film of Cu having a compressive stress, the main conductive film of Ni having a tensile stress and the sub-conductive film or the substrate, the adhesion layer made of Ti, the film made of Cu having a tensile stress, the sub-conductive film of Cu having a compressive stress and the main conductive film of Ni having a tensile stress (corresponding to the first type of stress is tensile stress and the second type of stress is compressive stress).
In reference to claims 7 and 14, Masai teaches the limitations of claim 1 and claim 13, as discussed above. Masai teaches the seed film is formed via a sputtering method ([0064]) (corresponding to the adhesion layer and the seed layer comprises sputtered coatings).
Although Masai does not explicitly teach the conductive film is electroless plated coating as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Masai meets the requirements of the claimed product, Masai clearly meets the requirements of the present claim.
In reference to claim 8-9 and 15-16, Masai teaches the limitations of claim 1 and claim 13, as discussed above. Masai teaches the conductive film is a laminated structure including the main conductive film and the sub-conductive film, wherein the main conductive film and sub-conductive film are repeatedly laminated ([0025]; [0058]; [0089]) (corresponding to one or more additional pairs of alternating layers of the first conductive layer and the second conductive layer). Masai further teaches the number of repeating layers is set freely in one or more ranges, such as two ([0089]) (corresponding to the layered structure comprising from 1 to 4 additional pairs of alternating layers of the first conductive layer and the second conductive layer).
In reference to claims 10 and 17-18, Masai teaches the limitations of claim 1 and claim 13, as discussed above. Masai further teaches when the main conductive film (i.e., second conductive layer) has a thickness of 10 µm, a thickness of the sub-conductive film (i.e., first conductive layer) should be 0.15 µm or more ([0073]) (i.e., thickness ratio of at least 0.015:1) (corresponding to the first conductive layer has a thickness in a range of from about 5 microns to about 20 microns and the second conductive layer has a thickness in a range of from about 0.1 micron to about 10 microns). FIGS. 1, 4-5, 13-14 and 16 all show a thickness ratio of the sub-conductive film being to main conductive film being 1:1 (corresponding to the first conductive layer and the second conductive layer have a thickness ratio in a range of from about 10:1 to about 1:1).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida.
In reference to claim 18, Tsuchida teaches the limitations of claim 13, as discussed above. Tsuchida further teaches the thickness of the electroless nickel plating layer is 1 µm or less ([0070]) (corresponding to the second conductive layer has a thickness in a range of from about 0.1 micron to about 10 microns). The second electrolytic copper plating layer has a thickness within the range of 1 or more and 20 µm or less ([0074]) (corresponding to the first conductive layer has a thickness in a range of from about 5 microns to about 20 microns).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 19, Tsuchida teaches the limitations of claim 13, as discussed above. Tsuchida further teaches the electroless nickel plating layer contains phosphorous (P), the P content in the plating film is 0.01 mass% or more and less than 5 mass% ([0066]) (corresponding to the second conductive layer comprises phosphorous having a content of from about 0 to about 20 molar%).
While Tsuchida does not explicitly disclose the amount of P in molar%, however, given that Tsuchida broadly disclose having 0.01 or more and 5 mass% or less of P, it is clear that it would necessarily include the presently claimed (i.e., about 0 to about 20 molar% of P).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Masai as applied to claim 13 above, and further in view of Tsuchida.
In reference to claim 19, Masai teaches the limitations of claim 13, as discussed above.
Masai does not explicitly teach the main conductive film comprises phosphorous having a content of from about 0 to about 20 molar%, as presently claimed.
Tsuchida teaches a glass core including a glass plate and a plurality of layers thereon ([0012]). An electroless nickel plating layer is disposed on the substrate and contains phosphorous (P) ([0066]). The P content in the plating film is 0.1 mass% or more and less than 5 mass% ([0066]). When the P content is in the above range glass corrosion and cracking can be prevented ([0067]).
In light of the motivation of Tsuchida, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include 0.1 mass% or more and less than 5 mass% of P in the nickel conductive film of Masai, in order to ensure the glass substrate is not subject to corrosion or cracking, and thereby arriving at the presently claimed invention.
Response to Arguments
Applicant primarily argues:
“The claim requires the ‘second conductive layer disposed on the first conductive layer’, and the nickel plating layer 60 of Tsuchida is not disposed on the copper plating layer 30 – as a dielectric layer 40 and second metal layer 50 are inbetween.”
Remarks, p. 6
The examiner respectfully traverses as follows:
The claims only require a second conductive layer disposed on the first conductive layer. Nothing in the claims requires the first conductive layer and the second conductive layer be in direct contact. Further, the open language of the claim (i.e., comprising) does exclude the inclusion of additional layers. Therefore, even if Tsuchida includes additional layers between the nickel plating layer (i.e., second conductive layer) and the first electrolytic copper plating layer (i.e., first conductive layer), Tsuchida teaches the nickel plating layer is applied over (i.e., disposed on) the first copper plating layer (FIG. 1) and meets the presently claimed limitations.
Applicant further argues:
“The claim requires that the ‘second conductive layer’ is ‘a second material and having the first type of stress with respect to the substrate’, and the nickel plating layer 60 is not taught to have the ‘first type of stress’ (which is the same type of stress as the claimed seed layer).
Further, there is no teaching or suggestion to so modify the structure of Tsuchida and that would not be obvious to one of ordinary skill in the art- particularly given the very clear and distinctly claimed layering with material choice and stress type configuration.”
Remarks, p. 6
The examiner respectfully traverses as follows:
As discussed in the rejection above, Tsuchida teaches a glass core substantially identical to the presently claimed invention, including all the required layers having the claimed compositions. Given that the first metal layer having the copper layer (i.e., seed layer), first electrolytic copper plating layer (i.e., first conductive layer) and electroless nickel plating layer (i.e., second conductive layer) of Tsuchida are substantially identical to the present claimed seed layer, first conductive layer and second conductive layer in composition and structure, it is clear the copper layer of the first metal layer and the electroless nickel plating layer of Tsuchida would inherently include a first type of stress with respect to the substrate and the first electrolytic copper plating layer of Tsuchida would inherently include a second type of stress with respect to the substrate, wherein the first type of stress and the second type of stress are selected from tensile stress and compressive stress, and the first type of stress is different from the second type of stress.
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). See MPEP 2112.01 (I).
It is not clear how the Tsuchida can disclose the same layers as presently claimed comprising the same types and amount of components as presently claimed and not possess the properties claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the Tsuchida teaches all of the claimed ingredients and claimed amounts. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Applicant further argues:
“The claim requires that the ‘second conductive layer’ is ‘a second metal material and having the first type of stress with respect to the substrate’ and that ‘the seed layer comprises a first metal material and having a first type of stress with respect to the substrate’ – and, thus, the second conductive layer and the seed layer are different materials but have the same type of stress. In Masai, there is no teaching of different materials while having the same stress type between the second conductive layer and the seed layers as interpreted.
Further, there is no teaching or suggestion to so modify the structure of Masai and that would not be obvious to one of ordinary skill in the art – particularly give the very clear and distinctly claimed layers with material choice and stress type configuration.”
Remarks, p. 7
The examiner respectfully traverses as follows:
As discussed in the rejection above, Masai teaches a main conductive film and sub-conductive film which overlaps the presently claimed first conductive layer and second conductive layer, including being configured with conductive material such as copper (Cu) or nickel (Ni). It therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use nickel as the conductive material of the main conductive film and copper as the conductive material of the sub-conductive film, which is both disclosed by Masai and encompassed within the scope of the present claims. The main conductive film has an internal stress being a tensile stress and the sub-conductive film having an internal stress being a compressive stress ([0019]; [0058]). Thus, it is clear Masai teaches a sub-conductive film comprising a first metal material and having a second type of stress with respect to the substrate and a main conductive film comprising a second metal material and having a first type of stress with respect to the substrate.
Masai teaches a seed layer comprising Cu ([0057]), which is the same metal material of the sub-conductive layer. Further, Masai does not exclude the seed layer being made of the same material as the sub-conductive film and having the same internal stress as the main conductive film. Given that the Cu film of the seed layer of Masai is substantially identical to the present claimed seed layer in composition, structure and produced by a substantially identical process (i.e., sputtering), it is clear that the Cu film would inherently have a tensile stress with respect to the substrate.
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). See MPEP 2112.01 (I).
It is not clear how the Masai can disclose the same layer as presently claimed comprising the same types and amount of components and produced by a substantially identical process as presently claimed and not possess the properties claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the Masai teaches all of the claimed ingredients and claimed amounts. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Therefore, Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784