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 . 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/25/2026 has been entered.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2023054850A1 - corresponding U.S PG Pub 20240206062A1 used for citations), and Takeuchi (JP2022180020A – see machine translation attached).
Regarding claim 1, Yang, drawn also to the art of manufacturing a copper foil substrate (Abstract), discloses the steps of plating a release layer (300) onto a carrier foil [0038]; [0089-0093] and then plating a copper foil on the release layer (claim 12; [0077-0079]). Yang discloses that the release layer is a co-plating process which forms a copper-nitrogen composite layer [0089-0093]. Yang has also disclosed current being passed through during the co-plating process (see example 1 of Yang [0063-0083]). Further, it is noted that for the plating to actually take place, a current would necessarily have to pass through the plating bath, and thus this would by definition take place during the plating process. Regardless, it is also noted that rearrangement of methods steps, making steps simultaneous or sequential, is held to be obvious in the absence of new or unexpected results (MPEP 2144.04 IV (C)).
Yang has not explicitly disclosed the specific nitrogen containing compound as claimed and has also not disclosed the concentration of the nitrogen containing compound as claimed, however, these limitations are known from Takeuchi, as explained below.
Takeuchi, drawn also to the art of a copper plating method [0001], discloses the copper plating process containing a nitrogen containing compound which is 5-chlorobenzotriazole [0037] (see also generally [0005 & 0036]). Takeuchi also discloses the concentration of the nitrogen containing compound to be between 0.05 to 100 ppm (which overlaps and obviates the instant range (MPEP 2144.05(I))), and that such a concentration allows for suppression of the generation of voids and seams in the copper plating process [0039]. Takeuchi also discloses that the selection of the above nitrogen-containing compound leads to suppression of voids and seams in the copper plating process [0036].
It would have been obvious to an ordinarily skilled artisan to have modified the nitrogen containing compound of Yang, with the nitrogen containing compound being one as claimed in a concentration as claimed, in order to suppress occurrence of voids and seams in the copper plating process.
Regarding claim 3, Yang discloses the copper plating solution to contain sopper sulphate (copper and sulphuric acid when in a plating bath will form copper sulphate) [0091]. Further, Yang also discloses the copper sulphate being the plating bath solution for plating the copper foil layer [0078].
Regarding claim 2, Yang discloses the copper ion concentration to be 5-15g/L, which forms an overlapping and encompassing range with the instantly claimed range and thus obviates the instantly claimed range. The courts have held that in the case where the claimed ranges "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) (MPEP 2144.05(I)).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2023054850A1 - corresponding U.S PG Pub 20240206062A1 used for citations), Takeuchi (JP2022180020A – see machine translation attached). and Kohiki (U.S PG Pub 20160212846A1).
Regarding claim 6, Yang discloses a co-plating time to be 30 seconds [0079 & 0092], thus satisfying one of the prongs of the and/or limitation of the instant claim. Yang also discloses the temperature to be 40oC [0092]. Thus, Yang discloses a temperature and time duration that overlaps with the instantly claimed range and obviates them as a result. The courts have held that in the case where the claimed ranges "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) (MPEP 2144.05(I)). The examiner notes that the present limitations are interpreted as being met when one of the prongs of the and/or prongs are satisfied, thus in the instant case, given that the prior art has disclosed the co-plating time, it is considered that the instant claim 6 limitations are thus disclosed. It is also noted that Yang further discloses a temperature for the plating bath as well.
Regardless, in order to facilitate compact prosecution, the current density is a known prior art element, as disclosed by Kohiki. Kohiki, drawn also to the art of manufacturing a copper foil on carrier (Abstract), discloses a plating solution which contains nitrogen and wherein the nitrogen containing compound is present in concentration of 1 to 30ppm [0153]. Kohiki, discloses that current density has an effect on the fineness/roughness of particles [0101], with high current density providing fine particles [0101].
Thus, Kohiki establishes current density as a result effective variable and it is within the purview of an ordinarily skilled artisan to appropriately modify the current density of the plating bath in order to influence the fineness/roughness of the particles, and the courts have held that the routine optimization of result effective variables is obvious (MPEP 2144.05 (II)). Further, Kohiki discloses a plating bath for a copper layer with a current density in the instantly claimed range [0167], thus obviating the range. The courts have held that in the case where the claimed ranges "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) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the method of Yang and Takeuchi, with the plating current density as disclosed by Kohiki, in order to appropriately modify the fineness/roughness of the particles, and further to form an extremely fine circuit and to suppress the disconnection of a circuit well [0008].
Response to Arguments
Applicant's arguments filed 06/25/2026 have been fully considered but they are not persuasive.
Applicant argues that Takeuchi (secondary reference) is drawn to an electroless copper plating process and thus an ordinarily skilled artisan would not look to combine the teachings of Yang (drawn to a electrolyte plating bath copper plating process) since these are two different processes.
The examiner disagrees. While it is correct that Takeuchi is drawn to an electroless plating process, whereas Yang is drawn to an electrolyte plating process and that these two processes are different, these two processes are well-known plating processes to an ordinarily skilled artisan and achieve the same end result i.e. plating. Takeuchi has been specifically referenced to teach the specific nitrogen compound and the concentration, and the specific advantages to the nitrogen compound and concentration, as disclosed by Takeuchi (see claim 1 rejection above) are regardless of the type of plating process being carried out. The explicit advantages as taught by Takeuchi would be present regardless of which plating process is being undertaken, as they are advantages tied directly to the nitrogen compound and not the process. Takeuchi specifically discloses in [0036 & 0039] that the nitrogen compound and concentration are helpful in preventing the generation of voids and seams in the copper plating process [0039 & 0036]. Thus, to an ordinarily skilled artisan, it would be obvious to avail of the advantages of the nitrogen compound as disclosed by Takeuchi, in a copper plating process, regardless of whether it is an electrolyte or electroless plating process.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Yang and Takeuchi are drawn to different copper plating processes, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/CARSON GROSS/Primary Examiner, Art Unit 1746
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