Prosecution Insights
Last updated: August 16, 2026
Application No. 18/720,825

SHIELD MEMBER

Non-Final OA §103
Filed
Jun 17, 2024
Priority
Dec 27, 2021 — JP 2021-213261 +1 more
Examiner
HARCUM, MARCUS E
Art Unit
Tech Center
Assignee
Sumitomo Electric Industries Ltd.
OA Round
1 (Non-Final)
89%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
95%
With Interview

Examiner Intelligence

Grants 89% — above average
89%
Career Allowance Rate
514 granted / 576 resolved
+29.2% vs TC avg
Moderate +6% lift
Without
With
+5.7%
Interview Lift
resolved cases with interview
Fast prosecutor
1y 12m
Avg Prosecution
22 currently pending
Career history
590
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
55.3%
+15.3% vs TC avg
§102
32.2%
-7.8% vs TC avg
§112
10.9%
-29.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 576 resolved cases

Office Action

§103
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 . Information Disclosure Statement The information disclosure statement (IDS) submitted on 06/17/2024 was filed on the mailing date of the application. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Specification The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. 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. Claim(s) 1, 2, 4, 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Weber et al. US7473130 in view of Kotani et al. US2019/0136398. Regarding claim 1, Weber discloses a shield member, comprising: a die-cast member (fig. 1; 7); and a plating layer (Col 4 Ln 43-46; copper, nickel and tin layers) provided on a surface of the die-cast member (7), the die-cast member (7) containing zinc (Col 4 Ln 43-46; zinc alloy), the plating layer (copper, nickel and tin layers) including a third layer (tin) provided in an outermost surface of the plating layer (copper, nickel and tin), the third layer (tin) being made of pure tin (tin is not an alloy). Regarding claims 1 and 4, Weber does not disclose a thickness of the third layer being less than 5 µm [claim 1]; wherein a thickness of the third layer is 1 µm or more [claim 4]. Regarding claims 1 and 4, Kotani teaches a thickness of the tin layer (fig. 1; 14) being less than 5 µm but greater than 1 µm (Par [0027] Ln 3-4; 0.4-3 µm). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate a thickness of the third layer being in between 1-5 µm as suggested by Kotani since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233, and also for the benefit of optimizing EMI shielding for a compact electrical shielding component. Regarding claim 2, Weber modified by Kotani has been discussed above. Weber discloses the plating layer (copper, nickel and tin) includes at least one of a first layer (copper) and a second layer (nickel), the first layer (copper), the second layer (nickel) and the third layer (tin) are provided in this order from a position near the die-cast member (zinc alloy of 7), the first layer is made of pure copper, and the second layer is made of pure nickel (Col 4 Ln 43-46; there is no disclosure of copper, nickel or tin alloys). Regarding claim 5, Weber discloses a shield member, comprising: a die-cast member (fig. 1; 7); and a plating layer (Col 4 Ln 43-46; copper, nickel and tin layers) provided on a surface of the die-cast member (7), the die-cast member (7) containing zinc (Col 4 Ln 43-46; zinc alloy), the plating layer (copper, nickel and tin layers) including at least one of a first layer (copper), a second layer (nickel) and a third layer (tin), the first layer (copper), the second layer (nickel) and the third layer (tin) are provided in this order from a position near the die-cast member (zinc alloy of 7), the first layer containing copper (Col 4 Ln 43-46; copper), and the second layer containing nickel (Col 4 Ln 43-46; nickel), the third layer (tin) being made of pure tin (tin is not an alloy). Regarding claims 5 and 10, Weber does not disclose a thickness of the third layer being 0 µm or more and less than 3 µm [claim 5]; wherein the thickness of the third layer is 0.5 µm or more [claim 10]. Regarding claims 5 and 10, Kotani teaches a thickness of the tin layer (fig. 1; 14) being between .5-3 µm or less (Par [0027] Ln 3-4; 0.4-3 µm) Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate a thickness of the third layer being in between 0-3 µm as suggested by Kotani since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233, and also for the benefit of optimizing EMI shielding for a compact electrical shielding component. Claim(s) 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Weber et al. US7473130 and Kotani et al. US2019/0136398 as applied to claims 2 and 5 above, and further in view of Sassaman et al. US9905345. Regarding claim 3, Weber and Kotani disclose all of the claim limitations except the plating layer includes the second layer and a fourth layer provided between the second layer and the third layer, and the fourth layer is made of pure copper. However, Sassaman teaches the plating layer includes the second layer (fig. 8; 864) and a fourth layer (fig. 8; 865) provided between the second layer (864) and the third layer (fig. 8; 866), and the fourth layer is made of pure copper (865, Cu is not an alloy). Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate the plating layer includes the second layer and a fourth layer provided between the second layer and the third layer, and the fourth layer is made of pure copper as suggested by Sassaman for the benefit of providing optimized plating configuration that will allow for improved conduction and increased oxidation suppression. Regarding claim 9, Weber and Kotani disclose (Weber) wherein: the plating layer (copper, nickel and tin) includes the first layer (copper), the second layer (nickel), the first layer is pure copper (copper), the second layer (nickel layer) includes a pure metal layer made of pure nickel (nickel is not an alloy). Weber and Kotani do not disclose a fourth layer provided right on the second layer, first layer being an alloy containing zinc and copper, fourth layer being an alloy containing tin and copper. However, Sassaman teaches a fourth layer (865) provided right on the second layer (864), fourth layer (865) being copper. Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate a fourth layer provided right on the second layer, first layer being an alloy containing zinc and copper, fourth layer being an alloy containing tin and copper because it would have been an obvious matter of design choice to have the first layer being a zinc and copper alloy and the fourth layer being a tin and copper alloy since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416, and it appears that the invention would perform equally well with the first layer being pure copper and the fourth layer being pure copper; it would have also been obvious for the benefit of further optimizing the longevity of a shielding member by substantially increasing oxidation protection. Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al. US7473130 and Kotani et al. US2019/0136398 as applied to claim 5 above, and further in view of WO 2015/181970. Weber and Kotani disclose (Weber) wherein the plating layer (copper, nickel and tin layers) includes the first layer (copper) and the second layer (nickel), and a second pure metal layer (nickel layer) made of pure nickel, the second pure metal layer (nickel) is provided right on the first layer (copper). Weber and Kotani do not disclose the first layer is an alloy layer containing zinc and copper, the second layer includes: a second alloy layer containing tin and nickel; and the second alloy layer is provided right on the second pure metal layer. However, WO ‘970 teaches the first layer (fig. 2; 1) is an alloy layer containing zinc and copper (translation Pg 6 Ln 13-14; copper alloy), the second layer (fig. 2; 3, 2) includes: a second alloy layer (3) containing tin and nickel (Pg 6 Ln 10; Sn-Ni alloy layer); and the second alloy layer (3) is provided right on the second pure metal layer (2). Therefore, it would have been further obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate the first layer is an alloy layer containing zinc and copper, the second layer includes: a second alloy layer containing tin and nickel; and the second alloy layer is provided right on the second pure metal layer as suggested by WO ‘970 for the benefit of having addition layers that further suppress oxidation by significantly reducing the diffusion rate of elements that could oxidize on the surface of a the shielding member. Allowable Subject Matter Claims 6 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: regarding claim 6, the prior art of record fails to disclose, teach, provide or suggest the first layer includes: a first alloy layer containing zinc and copper; and a first pure metal layer made of pure copper, the first alloy layer is provided right on the die-cast member, the first pure metal layer is provided right on the first alloy layer, the second layer includes: a second alloy layer containing tin and nickel; and a second pure metal layer made of pure nickel, the second pure metal layer is provided right on the first pure metal layer, and the second alloy layer is provided right on the second pure metal layer combined with the remaining limitations of the claim and any preceding claims. The following is a statement of reasons for the indication of allowable subject matter: regarding claim 8, the prior art of record fails to disclose, teach, provide or suggest the first layer includes: a first alloy layer containing zinc and copper; and a first pure metal layer made of pure copper, the first alloy layer is provided right on the die-cast member, the first pure metal layer is provided right on the first alloy layer, the second layer includes a pure metal layer made of pure nickel, and the fourth layer is an alloy layer containing tin and copper combined with the remaining limitations of the claim and any preceding claims. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCUS E HARCUM whose telephone number is (571)272-9986. The examiner can normally be reached Mon-Fri. 8am-5pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abdullah Riyami can be reached at 571-270-3119. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MARCUS E HARCUM/ Examiner, Art Unit 2831
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Prosecution Timeline

Jun 17, 2024
Application Filed
Jul 22, 2026
Non-Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
89%
Grant Probability
95%
With Interview (+5.7%)
1y 12m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 576 resolved cases by this examiner. Grant probability derived from career allowance rate.

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