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 .
The amendment of May 12, 2026 has been received and entered. With the entry of the amendment, claim 3 is canceled, claim 5 is withdrawn, and claims 1-2, 4, and 6-8 are pending for examination.
Election/Restrictions
Applicant’s election without traverse of the species of Chemical Formula 4 in the reply filed on December 4, 2025 is acknowledged.
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 4, 2025.
Claim Rejections - 35 USC § 112
The rejection of claim 4 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to the amendments of May 12, 2026 clarifying the claim language.
Claim Objections
The objection to claims 2 and 6 because of the following informalities: (1) in claim 2, lines 3-4, “thereby to selectively” should be “thereby selectively” for proper grammar and (2) in claim 6, in Chemical Formula 4, it should be clarified that “Et” is C2H5 as used in the specification is withdrawn due to the amendments of May 12, 2026 making these clarifications.
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 1-2, 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al (US 2013/0183534) in view of Higashi et al (US 2019/0010608) and Japan 6620277 (hereinafter ‘277).
Claim 1, 4, 6: Mori teaches a production method to provide a plated substrate (note 0054). A substrate/base surface is provided (note 0017) where the substrate can be of polymer containing glass in an amount of up to 200 parts by weight per 100 parts by weight of polymer, for example, and thus can be a majority glass (note 0092, 0101). A photoreactive bonding agent/compound α is provided on a surface of the substrate (note 0056, 0058, 0070, considered bonding agent, note 0014, 0016, 0108). Mori teaches that the bonding agent can be 6-(3-triethoxysilylpropyl)amino-1, 3, 5-triazine -2, 4-diazide (described as TE-DAZ) (note 0139, 0167). This meets the requirements of claim 1, the chemical formula 2 requirements of claim 4, and the chemical formula 4 requirements of claim 6 (note the specification as filed at 0027 indicating that chemical formula 4 has the structure of 6-(3-triethoxysilylpropylamino)-1, 3, 5-triazine -2, 4-diazide). The surface of the substrate is irradiated with light to allow the surface of the substrate and the photoreactive bonding agent provided on the surface of the substrate to be bonded to each other (note 0109, 0058, 0169). A first washing step is provided after the irradiation step to remove by washing the photoreactive bonding agent that is not bonded to the surface of the substrate (note 0169, 0182). Thereafter, a catalyst provision step is provided that provides a catalyst that binds with the photoreactive bonding agent (note 0171, 0121, note impregnation). Thereafter, a plating step is provided for disposing a conductive substance on the photoreactive bonding agent by an electroless plating process, with the catalyst binding to the photoreactive bonding agent (note 0120, 0121, 0171).
As to providing the second washing step,
Higashi teaches a production method to provide a plated substrate (note 0054). A substrate/base material 12 of glass can be provided (note 0073). A photoreactive bonding agent/plated layer forming composition 14 is provided on a surface of the substrate 12 (note 0056, 0112, considered bonding as non-bonded material would be removed, note 0235-0240, 0345, and also bonds the catalyst, note 0251, and photoreactive, note 0229-0230). The surface of the substrate is irradiated with light to allow the surface of the substrate and the photoreactive bonding agent provided on the surface of the substrate to be bonded to each other (note figure 2, 0222-0223, 0345, layer 14 considered bonded with the substrate since non-bonded material would be removed, note 0235-0240, 0345). A first washing step is provided after the irradiation step to remove by washing the photoreactive bonding agent that is not bonded to the surface of the substrate (note 0235-0240, 0245, development with water, for example, can be considered washing that removes unexposed bonding agent). Thereafter, a catalyst provision step is provided that provides a catalyst that binds with the photoreactive bonding agent (note 0248-0251, 0348). Thereafter a second washing step is provided for removing by washing the excess catalyst (note 0279, 0349). Thereafter, a plating step is provided for disposing a conductive substance on the photoreactive bonding agent by an electroless plating process after the second washing step, with the catalyst binding to the photoreactive bonding agent (note 0351-0352, 0274-0275, 0251). As to the second washing step removing catalyst that does not bind to the photoreactive bonding agent, since the second washing removes excess catalyst (note 0279, 0349), and the catalyst is provided to bind with the bonding agent layer 14 (note 0251), it is understood that the removed catalyst does not bind with the bonding agent, or at the least, since the second washing removes excess catalyst (note 0279, 0349), and the catalyst is provided to bind with the bonding agent layer 14 (note 0251), it would at least have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide that the removed catalyst is that which does not bind with the bonding agent, since catalyst needs to remain to catalyze for the plating (note 0274), and since the surface would be exposed the washing liquid, it would have been suggested that the catalyst that is not bonded would be that removed, since bonded catalyst would adhere longer.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mori to provide that in the catalyst application, the catalyst binds with the photoreactive bonding agent, and after applying the catalyst, a second washing step is provided to remove by washing the catalyst that does not bind to the photoreactive bonding agent, leaving catalyst binding to the bonding agent as suggested by Higashi with an expectation predictably acceptable results, since Mori teaches providing a bonding agent on the substrate, irradiating with light to bond the bonding agent to the substrate surface, washing, and then applying catalyst to be followed by electroless plating, and Higashi teaches that in a similar process, it is conventional that in the catalyst application process, the catalyst binds with the photoreactive bonding agent, and after applying the catalyst, a second washing step is provided to remove by washing the catalyst that does not bind to the photoreactive bonding agent, leaving catalyst binding to the bonding agent, before electroless plating.
(B) Further as to specifically using a substrate made of glass of quartz glass or borosilicate glass, for example, as discussed above, Mori teaches that the substrate can contain a majority of glass, and describes that the bonding agent can be 6-(3-triethoxysilylpropyl)amino-1, 3, 5-triazine -2, 4-diazide (described as TE-DAZ) (note 0139, 0167). Higashi notes that the substrate can be glass or resin (note 0073) and the bonding agent include triazine ring, azide groups, etc. (note 0124).
‘277 further describes how 6-(3-triethoxysilylpropylamino)-1, 3, 5-triazine -2, 4-diazide (in this case called P-TES) can be used as a bonding agent applied to a glass substrate and further treated by irradiation with light, and thereafter catalyst application and electroless plating (note 0005-0006, 0011, 0014). The glass substrate can be made of quartz glass or borosilicate glass (note 0011).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mori in view of Higashi to specifically use a simply glass substrate or quartz or borosilicate glass as suggested by ‘277 with an expectation of predictably acceptable results, since Mori notes that the substrate can be a majority glass and the bonding agent can be TE-DAZ/P-TES, and Higashi also teaches the similar use of glass substrates as well as resin, and where ‘277 indicates that in a similar process, using a bonding agent of TE-DAZ/P-TES, the substrate can be simply a glass substrate as well, where the glass can be quartz or borosilicate glass.
Claim 2: Mori teaches that irradiation in the irradiation step is performed by a method that comprises arranging a mask that masks part of the surface of the substrate, and irradiating the mask with light thereby selectively irradiating the surface of the substrate with light (note 0109, 0169). As well, Higashi teaches that irradiation in the irradiation step is performed by a method that comprises arranging a mask 50 that masks part of the surface of the substrate, and irradiating the mask with light thereby selectively irradiating the surface of the substrate with light (note 0222-0224, 0345, figure 2).
Claim 7: Mori provides that light for irradiation can have a wavelength of 254 nm, in the claimed range (note 0110, for example). Additionally, Higashi provides that the light for irradiation in the irradiation step has a wavelength of 200-270 nm, in the claimed range, such as 254 nm, in the claimed range (note 0229, 0345).
Claim 8: Mori provides that the catalyst provided in the catalyst provision step can be Pd or Ag (note 0121). Additionally, Higashi provides that the catalyst provided in the catalyst provision step can be Pd, Ag or Cu (note 0259, 0345). ‘277 also notes using Pd catalyst (note 0016).
The rejection of claims 1, 2, 7 and 8 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Higashi et al (US 2019/0010608) is withdrawn due to the amendment of May 12, 2026 changing the scope of the claims.
Muraoka et al (US 2020/0325294) also the use of photoreactive bonding agents meeting claims 3 and 4 requirements (note 0011, 0028, 0089).
Response to Arguments
Applicant's arguments filed May 12, 2026 have been fully considered.
Note the adjustments to the rejection due to the amendments to the claims.
(B) As to the arguments regarding the 35 USC 102/103 rejection using Higashi, this rejection has been withdrawn due to the amendments changing the scope of the claims.
(C) As to the arguments regarding the 35 USC 103 rejection using Mori as the primary reference, these arguments have been reviewed, however, the rejections above are maintained. (1) As to the arguments that the claimed glass substrate would not be suggested, the Examiner disagrees. With the specific use now of ‘277, this reference would suggest that the same bonding material/process as in Mori can also be used for treating quartz or borosilicate glass substrates as discussed in the rejection above. Applicant argues that combining Mori with ‘277 would not be simple substitution of the glass substrate for the polymer substrate in Mori, where it would include two additional steps that are not required an are in conflict with present claim 1 – including the heat treatment and the accelerator step. However, the Examiner is of the position that these two steps would not negate the invention of Mori or conflict with the present claims. Firstly, as to the present clams, at line 1 of claim 1, it is indicated that the process is “comprising” the listed steps. This allows for additional steps to be present (which would include heat treatment or accelerator treatment) as long as the claimed steps would be present. Secondly, the additional presence of a heat treating step or accelerator step would not be prevented by Mori. Note Mori also would allow for a heat treating step after the applying and irradiating the bonding agent (note 0118). Furthermore, as to the additional use of an accelerator treatment, while Mori does not specifically describe the use of an accelerator treatment, Mori broadly teaches a pretreatment with catalyst before electroless plating (note 0121), and ‘277 notes the conventional additional use of an accelerator treatment after catalyst application and before plating, and Mori even broadly simply requires forming the metal film on the substrate with the bonding agent by a wet-type plating technique (note claim 1), and so there is no indication that some intervening steps between the bonding agent application and the electroless plating would be prevented. Furthermore, while ‘277 describes use of an accelerator treatment, Mori would also indicate the expectation that catalyst can be used over the bonding agent, where such accelerator treatment is not needed.
(2) As to not using Higashi in the combination, while Higashi does not detail the specific bonding agent, it is still relevant and pertinent as to the features providing the second washing step after catalyst application as applicant and the cited references are all providing catalyst application after a bonding agent applied, and Higashi shows conventional treatment when applying such catalyst. As to the irradiation of the bonding agent as claimed, Mori teaches providing irradiation of the bonding agent material as claimed. As to Higashi’s bonding agent bonding to the surface, since the unexposed material is removed, the remaining material stays on the substrate. In any case, Mori providing the bonding of the bonding agent to the substrate (note 0109). As to Higashi citing two different washes, both 0279 and 0349 indicate washing after catalyst applied and before plating. It is the Examiner’s position that as discussed above and in the detailed rejections above, all features of the claims are provided/suggested.
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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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