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
Applicant's election with traverse of Invention I. Claims 1-5 and 10-18 in the reply filed on 07/17/2026 is acknowledged.
The traversal is on the ground(s) that “(1) there are overlapping or related technical features among the three groups of claims and (2) there would be no undue burden on the Examiner to examine all three groups of claims.”
This is not found persuasive because the initial Restriction Requirement establishes several reasons for determining the distinct nature of the plural inventions claimed. Namely (A) the inventions have separate classification in the art, (C) Examination of the inventions requires a different field of search. That is, Invention I would be classified in USPC 342/01 and Inventions II and III would be classified in USPC 75/10.67. And while the inventions are related as a product and process of making it has been established in the Restriction Requirement that (1) the process as claimed can be used to make another and materially different product and (2) that the product as claimed can be made by another and materially different process. For these reasons, the examination of the plural inventions together would constitute a serious and undue burden on the Examiner.
Applicant’s arguments for traverse amount to merely stating that this is not so without supplying any supporting reasoning that “distinctly and specifically points out supposed errors in the restriction requirement”.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-5 and 10-18 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.
The term “large numbers” in claim 1 and 10 is a relative term which renders the claim indefinite. The term “large numbers” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification, in an attempt perhaps to define “large numbers”, provides for nominal widths and interval spacings of the scratches. However, dimensional information of such features is insufficient to ascertain the scope of what would constitute a “large number” of scratches. For the purpose of examination, Examiner will interpret large number to mean “more than 1 scratch in each of the two directions”
Claim 1 and 10 further recites “high-density regions” and “low-density regions”. Such limitations render the claim indefinite as it is impossible to ascertain whether the claim is referring to a material density such as of the thin metallic film, or rather a density of the number of scratches per unit area. Examiner suggest that Applicant amend the claim to indicate whether the claim limitation is drawn to the density of a material in which the scratches are made, or instead to the number of scratches formed per unit area of the thin metal film. For the purpose of examination, Examiner will interpret this limitation to mean number of scratches per unit area.
Further, “high” and “low” in claim 1 and 10 are relative terms which renders the claim indefinite. The terms “high” and “low” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, Examiner will interpret this limitation to mean that a high-density region is any region with more scratches per unit area than a low-density region.
Claim 3 and 16 recites “the crossing angle”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 from which claim 3 depends recites “the crossing of linear scratches” but fails to recite “the crossing angle”
Claim 4 and 12 recites “the length ratio”. There is insufficient antecedent basis for this limitation in the claims. Claim 1 from which claim 4 depends fails to recite any limitations drawn to length.
Claim 4 and 12 recites “the length ratio of said high-density regions to said low-density regions”. No claim limitations can be found which define what is meant by length and which dimension this would constitute in the claimed structure. For the purpose of examination, Examiner will interpret this to mean a ratio of any dimension of the high-density region compared to the corresponding dimension of the low-density regions.
Additional claims are rejected at least for their dependence upon a rejected base claim.
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(s) 1-5, 10-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kagawa (US 2013/0285846).
Claim 1: Kagawa discloses An electromagnetic-wave-absorbing film comprising a plastic film and a thin metal film formed on a surface of said plastic film, said thin metal film being provided with large numbers of substantially parallel linear scratches with irregular widths and intervals in two directions, said linear scratches having high-density regions and low-density regions alternately in each direction, and said high-density regions being distributed in a lattice pattern by the crossing of linear scratches in both directions (para 0007, 0008, 0045-0055, figures 2, 3a-3c showing intersecting scratches which based on the above claim interpretation shows a higher density of scratches per area in regions where the different directional scratches cross, and a lower density of scratches per area in regions where only one direction of scratches is present)
Claim 2: Kagawa discloses said high-density regions have surface resistivity of 30-200 Ω/square, and said low-density regions have surface resistivity of 0-20 Ω/square (para 0010, 0049)
Claim 3: Kagawa discloses the crossing angle of linear scratches in two directions is 30-90° (para 0012, 0055)
Claim 4: Kagawa discloses the length ratio of said high-density regions to said low-density regions is 5/1-1/5 in each direction (para 0054 showing a range of scratch lengths wherein ratios of between 5/1 and 1/5 are achievable)
Claim 5: Kagawa discloses said linear scratches have widths in a range of 0.1-100 μm and 2-50 μm on average, and intervals in a range of 0.1-500 μm and 10-100 μm on average (para 0012, 0051-0053)
Claim 10: Kagawa discloses A near-field electromagnetic wave absorber comprising at least one plastic film and first and second thin metal films, said first thin metal film being provided with large numbers of substantially parallel linear scratches with irregular widths and intervals in two directions, having high-density regions in which said linear scratches are formed at a high density and low-density regions in which said linear scratches are formed at a low density alternately in each direction, said high-density regions being distributed in a lattice pattern by the crossing of said linear scratches in both directions, and said second thin metal film being provided with large numbers of substantially parallel, intermittent, linear scratches with irregular widths and intervals in two directions on the entire area (para 0007, 0008, 0045-0055, 0076, figures 2, 3a-3c, 11a, 12a-12c showing intersecting scratches which based on the above claim interpretation shows a higher density of scratches per area in regions where the different directional scratches cross, and a lower density of scratches per area in regions where only one direction of scratches is present)
Claim 11: Kagawa discloses said high-density regions have surface resistivity of 30-200 Ω/square, and said low-density regions have surface resistivity of 0-20 Ω/square (para 0010, 0049)
Claim 12: Kagawa discloses said first thin metal film, the length ratio of said high-density regions to said low-density regions is 5/1-1/5 in each direction (para 0054 showing a range of scratch lengths wherein ratios of between 5/1 and 1/5 are achievable)
Claim 13: Kagawa discloses a first electromagnetic-wave-absorbing film having said first thin metal film on one surface of a plastic film is adhered to a second electromagnetic-wave-absorbing film having said second thin metal film on one surface of a plastic film (fig 9a, 9b)
Claim 14: Kagawa discloses said first and second electromagnetic-wave-absorbing films are adhered to each other with said first and second thin metal films disposed inside (fig 9a, 9b)
Claim 15: Kagawa discloses said first and second thin metal films are formed on both sides of a plastic film (fig 10a, 10b)
Claim 16: Kagawa discloses the crossing angle of linear scratches in two directions is 30-90° in each of said first and second thin metal films. (para 0012, 0055, 0076, fig 11a, 12a-12c)
Claim 17: Kagawa discloses in said first and second thin metal films, said linear scratches have widths in a range of 0.1-100 μm and 2-50 μm on average, and intervals in a range of 0.1-500 μm and 10-100 μm on average (para 0012, 0051-0053, fig 11a, 12a-12c)
Claim 18: Kagawa discloses said first linearly-scratched thin metal film has a first linear scratch group comprising said high-density regions of linear scratches and said low-density regions of linear scratches alternately in a first direction, and a second linear scratch group comprising said high-density regions of linear scratches and said low-density regions of linear scratches alternately in a second direction different from said first direction, said first and second linear scratch groups overlapping each other, forming overlapping portions of said high-density regions, overlapping portions of said high-density regions and said low-density regions, and overlapping portions of said low-density regions on said thin metal film, said overlapping portions of said high-density regions being distributed in a dot pattern, a combination of said overlapping portions of said high-density regions and said overlapping portions of said high-density regions and said low-density regions constituting a lattice pattern, and said overlapping portions of said low-density regions being distributed in a dot pattern (para 0012, 0051-0053, 0076, fig 11a, 12a-12c, showing intersecting and overlapping scratches which based on the above claim interpretation shows a higher density of scratches per area in regions where the different directional scratches cross, and a lower density of scratches per area in regions where only one direction of scratches is present)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER M BYTHROW whose telephone number is (571)270-1468. The examiner can normally be reached on Monday-Friday 830am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Resha Desai can be reached at (571) 270-7792. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER M BYTHROW/Primary Examiner, Art Unit 3648
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