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
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Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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.
Claims 1-2 and 7-8 are generic, and claims 3-4 are also examined as being inclusive of Chemical Formula 4, and claim 6 has Chemical Formula 4.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is 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.
Claim 4, line 6, “others are arbitrary groups” is confusing and indefinite as worded since at least one of two groups (-Q1 and -Q2) must be -NiR1(R2) or -SR1(R2), so it is unclear how there can be plural “others” that can be arbitrary groups. For the purpose of examination, it is understood that “if only one of-Q1 or -Q2 is -NiR1(R2) or -SR1(R2), the other of -Q1 or -Q2 is an arbitrary group”, but applicant should clarify what is intended, without adding new matter.
Claim Objections
Claims 2 and 6 are objected to because of the following informalities: (1) in claim 2, lines 3-4, “thereby to selectively” should be “thereby selectively” for proper grammar. (2) in claim 6, in Chemical Formula 4, it should be clarified that “Et” is C2H5 as used in the specification.
Appropriate correction is required.
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.
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, 7 and 8 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 Higashi et al (US 2019/0010608).
Claim 1: 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, (1) under 35 USC 102(a)(1), 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 (2) alternatively under 35 USC 103, 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.
Claim 2: 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: 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:Higashi provides that the catalyst provided in the catalyst provision step can be Pd, Ag or Cu (note 0259, 0345).
Claims 1-4 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), EITHER alone OR further in view of Japan 6620277 (hereinafter ‘277).
Claim 1: 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, and thus considered a substrate made of 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). 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.
Optionally, further in view of ‘277, as to specifically using a substrate made of glass (without polymer), 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).
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 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, 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.
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).
Claims 3, 4, 6: 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 3, 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). When used, ‘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).
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).
Muraoka et al (US 2020/0325294) also the use of photoreactive bonding agents meeting claims 3 and 4 requirements (note 0011, 0028, 0089).
Conclusion
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