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 .
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 1-20 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 claim 1, the term “metal mesh” is unclear. Does this require that metal lines intersect one another? Or, is a mesh formed by metal lines in overlying layers that intersect in projections of the lines into a single plane? For purposes of the rejection, the claim is not interpreted as requiring intersecting metal lines.
In claim 2, line 2, the term “the dielectric layer” is confusing because the claim already recites a “first dielectric layer” and “a second dielectric layer”. This same confusion occurs in claim 11, lines 2 and 10. It is unclear whether this term refers to the first dielectric layer, the second dielectric layer, or both.
In claim 9, the term “high” is a relative term which renders the claim indefinite. The term “high” 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. This rejection may be overcome by simply deleting the term.
Claims 3-8 and 10-20 fail to cure the indefiniteness of the base claim and are therefore also rejected.
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 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liang et al (US 12,164,733 B2) .
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Liang discloses providing a base substrate (claim 1, line 7); forming a dielectric layer on the base substrate (claim 1, lines 10-11), and performing dry etching on the dielectric layer by an inductively coupled plasma device (claim 2, lines 4-5) to form a meshed groove (claim 1, lines 13-15).
Claims 1-2 and 11-15 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Jia et al (US 2024/0241610 A1).
The applied reference has a common applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Jia discloses providing a base substrate 10 [0056]; forming a dielectric layer 200 [0059] on the base substrate (Fig. 3), and performing dry etching on the dielectric layer by an inductively coupled plasma device [0061] to form a meshed groove 21 (Fig.1).
As to claims 2 and 11-15, see Jia at claims 4-5, 7, 9-11, 20.
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.
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 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al (WO 2022/222123 A1) in view of CN 115458392 A.
For purposes of the rejection, reference is made to the U.S. equivalent, US 2024/0047863 A1, of WO 2022/222123 A1.
Zhou discloses a method for preparing a metal mesh (see abstract), comprising:
providing a base substrate 100 (Fig. 5, [0061]);
forming a dielectric layer 200 (“second dielectric layer” [0062]) on the base substrate (Fig.5, steps S121), and performing dry etching on the dielectric layer (S123, Fig. 5, [0067]) to form a meshed groove (because mask 50 has a first hollow out pattern 501 in a mesh shape, [0065]).
Zhou fails to disclose that the dry etching process is performed by an inductively coupled plasma device. Rather, Zhou only broadly recites a “dry etching” process. The second dielectric layer comprises organic materials such as resin materials including polyimide, epoxy, acryl, polyester, photoresist, polyacrylate, polyamide, siloxane, and the like [0062]. The second dielectric layer is patterned by using a mask 50 such as silicon nitride [0065].
CN 115458392 A teaches that materials such as polyimide (step S2) may be patterned by dry etching using an ICP (“inductively coupled plasma”) device (step S6). CN 392 A teaches that the polyimide has improved verticality (“Advantage”) when used in combination with a silicon nitride mask. Accordingly, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use an inductively coupled plasma device in the method of Zhou because CN 115458392 A teaches that to do so is a useful technique for patterning polyimide, with the advantage of verticality, and such is expected to give the predictable result of a patterned layer.
As to claim 2, Zhou discloses
forming the first dielectric layer 200 on the base substrate 100 (Fig. 5, step S121);
forming the second dielectric layer 50 (stacked on the first dielectric layer) on a side of the first dielectric layer away from the base substrate (step S122, [0064]);
forming a first photoresist layer (“In some examples, step S122 may include successively depositing the third dielectric material layer [50] and a photoresist on a side of the second dielectric material layer 200 away from the base substrate” [0065]) on a side of the second dielectric layer away from the first dielectric layer [0065], and exposing and developing the first photoresist layer to form a second mesh pattern 501 [0065];
performing dry etching on the second dielectric layer to remove exposed material of the second dielectric layer and form a second mesh pattern (“…then performing the etching, and finally, stripping the photoresist to form the pattern of the third dielectric layer 50 including the first hollow out pattern 501 in a mesh shape” [0065]);
taking the second mesh pattern as a mask to perform dry etching on dry etching on the first dielectric layer (S123, [0066]) to remove exposed material of the first dielectric layer to form a third mesh pattern (as shown in Fig. 5, step S123), wherein the second mesh pattern and the third mesh pattern are stacked together to form the meshed groove [0067]; and
removing a residual part of the first photoresist layer (stripping, [0065]).
Zhou fails to disclose etching by an inductively coupled plasma device. Rather, Zhou simply discloses dry etching. The discussion of CN 115458392 A from above is repeated here. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to perform dry etching by the inductively couple plasma device in the modified method of Zhou because CN 115458392 A teaches that to do so is a useful technique for patterning polyimide, with the advantage of verticality, and such is expected to give the predictable result of a patterned layer.
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Zhou. Fig. 5 of US 2024/0047863 A1 (U.S. equivalent of WO 2022/222123 A1)
As to claims 3-4, Zhou discloses that the first dielectric layer comprises an organic material such as polyimide [0062]. Zhou fails to disclose the composition of the etching gas. CN ’392 A teaches that during the ICP etching, a useful etching gas is oxygen gas (see description of “S6” and claim 3). It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use oxygen gas for etching as cited in the method of Zhou because CN ’392 A teaches that it is useful for etching organic materials and such is expected to give the predictable result of a patterned layer.
As to claim 5, Zhou discloses a thickness of 4 μm [0062], which is within the cited range.
As to claims 6-7, Zhou discloses that the second dielectric layer comprises an inorganic material such as silicon nitride [0065]. Zhou fails to disclose the composition of the etching gas. CN ’392 A teaches that during the ICP etching, a useful etching gas is tetrafluoromethane (see description of “S5”). It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use tetrafluoromethane for etching as cited in the method of Zhou because CN ’392 A teaches that it is useful for etching silicon nitride and such is expected to give the predictable result of a patterned layer.
As to claim 8, Zhou fails to disclose the thickness of the second dielectric layer. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited thickness in the modified method of Zhou because the thickness can be optimized according to the etching conditions and desired etching results for a thickness to serve as an effective etch mask.
As to claim 9, Zhou discloses forming through a coating process and curing as cited [0063].
As to claim 10, Zhou fails to disclose how to deposit the silicon-nitride-second dielectric layer. CN ’392 A teaches that PECVD (plasma enhanced chemical vapor deposition) is a useful technique for depositing silicon nitride (see description of “S1”). It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use a plasma chemical vapor deposition device to deposit the second dielectric layer as cited in the method of Zhou because CN ’392 A teaches that it is useful for deposition technique and such is expected to give the predictable result of a deposited layer.
As to claim 13, Zhou discloses, subsequent to forming the meshed groove, the method further comprises:
removing the second mesh pattern (etching and stripping the photoresist so as to form the metal mesh 40 [0074]);
forming a first metal film on a side of the meshed groove away from the base substrate [0075], [0078] and taking the first metal film as a seed layer [0077]; and
electroplating the seed layer [0077] to enable growth of the first metal film; and
removing a part of the first metal film outside the meshed groove [0079]-[0080] to form a metal mesh.
As to claim 14, Zhou discloses to form the first metal film of copper [0076].
As to claim 15, Zhou discloses that the meshed groove has a width of not greater than 1.5 μm [0070].
As to claim 16, Zhou discloses a method for preparing an antenna [0102], comprising:
forming a first dielectric substrate 100 (Fig. 2, [0057]) comprising a first surface (upper surface) and a second surface (lower surface) opposite to each other in a thickness direction of the first dielectric substrate (as depicted in Fig. 2, [0051]);
forming a reference electrode layer 102 on the first surface of the first dielectric substrate (Fig. 1, Fig.2, [0051]); and
forming a radiation part 101 on the second surface of the first dielectric substrate (Fig. 1, Fig.2, [0051]); wherein
at least one of the reference electrode layer or the radiation part comprises the metal mesh prepared by the method according to claim 1 [0054].
As to claim 17, as depicted in Fig. 1 and Fig. 2, the reference electrode layer and the radiation part are both metal meshes, and orthographic projections of hollowed-out portions are overlapped, as cited.
As to claims 18-20, see the rejection of claim 2 (first dielectric sublayer 100, first bonding layer 200, and a second dielectric layer sublayer 50 stacked together, metal meshes forming the reference electrode and radiation part on opposite sides (Fig. 2) and polyimide organic material (see rejection of claim 4 above).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al (WO 2022/222123 A1) in view of CN 115458392 A, as applied to claim 2 and further in view of Haba et al (US 2007/0287289 A1).
As to claim 11, Zhou discloses forming a first metal film on the base substrate (broadly interpreted, any overlying layer is also “on” the substrate) [0075] and that the first metal film may be formed as a seed layer (S142, [0077]), and
subsequent to forming the meshed groove, the method further comprises:
removing the second mesh pattern (etching and stripping the photoresist so as to form the metal mesh 40 [0074]);
electroplating the seed layer [0077] to enable growth of the first metal film in the groove; and
removing the dielectric layer and a part of the first metal film on a side of the dielectric layer close to the base substrate (the metal layer etching is not infinitely selective, and will remove the underlying dielectric layer to some extent, [0079]-[0080]) to form a metal mesh.
Zhou fails to disclose that the first metal film is formed prior to forming the dielectric layer on the base substrate. Zhou electroplates the meshed groove pattern without using an underlying seed layer. Haba teaches that electroplating through a patterned mask using a metal seed layer deposited on the substrate before forming the patterned mask is a known and useful technique. More specifically, Haba teaches to
providing a base substrate 21 [0047];
forming a first metal film 22 on the base substrate, and taking the first metal film as a seed layer (Fig. 2a, [0047]); and
electroplating the seed layer to enable growth of the first metal film in the groove (Fig. 2c, [0047]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the seed layer prior to forming the dielectric layer in the modified method of Zhou because Haba teaches that this is a known and useful technique for electroplating, and such is expected to give the predictable result of a plated metal film.
As to claim 12, Zhou discloses to form the first metal film of copper [0076].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,164,733 B2 (“Liang”). Although the claim at issue are not identical, they are not patentably distinct from each other because the claims are fully encompassed by Liang. Liang discloses providing a base substrate (claim 1, line 7); forming a dielectric layer on the base substrate (claim 1, lines 10-11), and performing dry etching on the dielectric layer by an inductively coupled plasma device (claim 2, lines 4-5) to form a meshed groove (claim 1, lines 13-15).
Claims 1-2, 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 7, 9-11 and 20 of 18/016,707 (“Jia”) in view of CN 115458392 A. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are fully encompassed by Jia. Jia discloses providing a base substrate (claim 1, line 3, claims filed 3/8/26); forming a dielectric layer on the base substrate (claim 1, line 3, the “dielectric substrate”), and performing dry etching on the dielectric layer (claim 4) to form a meshed groove (claim 1 “mesh shape”). As to claims 2-15, see Jia at claims 4-5, 7, 9-11, 20. The discussion of CN 115458392 A from above is repeated here. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use an inductively coupled plasma device in the method of Jia because CN 115458392 A teaches that to do so is a useful technique for patterning polyimide, with the advantage of verticality, and such is expected to give the predictable result of a patterned layer.
Claims 1 and 1-2, 11-15 are directed to an invention not patentably distinct from claims 1, 4-5, 7, 9-11 and 20 of commonly assigned Liang and Jia. Specifically, see the rejections above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Liang and Jia, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/Primary Examiner, Art Unit 1713