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 .
Preliminary Amendment
The preliminary amendment filed on June 26, 2024 has been entered. Claims 1-18 are pending.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 8, and 10-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO2021/132191. An English translation of WO ‘191 is attached to this Office action and relied upon in the below rejections.
Regarding claim 1, WO ‘191 discloses an organic film disposed on a metal surface, wherein the organic film comprises a silane coupling agent, and the organic film has protrusions to a side opposite the metal (Figure 1, [0008]-[0010], [0012]).
Regarding claim 2, Figure 1 depicts that the protrusions have a porous shape, i.e., open cellular shape.
Regarding claim 8, Figure 1 depicts some areas of the organic film contain a flat portion, at a microscopic level, and the protrusions are formed of an aggregate containing the silane coupling agent.
Regarding claims 10-13, WO ‘191 discloses that the metal can be copper and part of a printed circuit board that can further contain a resin layer deposited on the metal layer [0035].
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.
Claims 3-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021/132191.
Regarding claims 3-7, WO ‘191 discloses that the organic film has surface roughness, i.e., Ra and Rz, protrusion length, and protrusion ratios that overlap with the presently claimed ranges. MPEP 2144.05.I, states “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). And, MPEP 2144.05.II, states “"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, since these claimed surface unevenness properties overlap with WO ‘191, these properties are prima facie obvious. Alternatively, it would have been obvious to have optimized and discovered workable ranges of surface roughness, protrusion length, and protrusion ratio, motivated by the desire to obtain an organic film having desired bonding properties to the metal surface.
Regarding claim 9, WO ‘191 does not disclose that the flat portion has a thickness of 10 to 300 nm. However, as set forth above, discovering workable ranges is within the level of ordinary skill in the art. In the present application, it would have been obvious to the skilled artisan to have discovered optimal or workable ranges for the flat portions in the invention of WO ‘191, motivated by the desire to obtain an organic film having desired bonding properties to the metal surface.
Claim 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021/045055. US Pub 2022/0306656, cited in the IDS of June 26, 2024, is the US equivalent to WO ‘055 is and relied upon in the below rejection. It is noted that WO ‘055 has a different inventive entity, i.e., includes Hirohiko Hirao as an inventor. Thus, a 102(b) exception does not currently apply.
Regarding claim 14, US ‘656 discloses a metal surface treatment liquid suitable for forming an organic film on a metal surface, wherein the liquid contains a silane coupling agent and an acid, which can have a pH as low as 1 (claim 7).
Regarding claims 15-17, US ‘656 discloses that the acid can contain be a sulfonic acid (claim 9, [0217]). US ‘656 does not specifically disclose that the acid includes an acid having an acid dissociation constant of 4.8 or less or that the liquid contains 0.01 to 10 mol/L of the acid. However, since US ‘656 uses the same acid, i.e., sulfonic acid, the dissociation constant would be inherent. Additionally, the amount of acid contained in the liquid would be a result effective variable based on the desired pH of the liquid.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over WO2021/045055 in view of WO2021/132191. US Pub 2022/0306656, cited in the IDS of June 26, 2024, is the US equivalent to WO ‘055 is and relied upon in the below rejection.
The teachings of both US ‘656 and WO ‘191 are detailed above. US ‘656 does not disclose that the organic film comprising the silane coupling agent has protrusions to a side opposite to the metal. As set forth above, WO ‘191 disclose an organic film comprising a silane coupling agent that has protrusion to a side opposite to the metal. It would have been obvious to one of ordinary skill in the art to have prepared the organic film of US ‘656, wherein the film has protrusions on the side opposite to the metal, as taught in WO ‘191, motivated by the desire to enhance the adhesion properties of the organic film to the metal.
Claim 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO2009/110364. An English translation of WO ‘364 is attached to this Office action and relied upon in the below rejections.
Regarding claim 14, WO ‘364 discloses a metal surface treatment liquid suitable for forming an organic film on a metal surface, wherein the liquid contains a silane coupling agent and an acid, such as sulfuric acid (line 459-465). The liquid is acidic and has a pH of 5 or less, which overlaps with the presently claimed pH range (lines 456-465). MPEP 2144.05.I, states “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).
Regarding claims 15-17, WO ‘364 discloses that the acid is preferably sulfuric acid, because its use enhances the speed of the formation of forming an adhesion layer with an insulating material (lines 463-465). WO ‘364 does not specifically disclose that the acid includes an acid having an acid dissociation constant of 4.8 or less or that the liquid contains 0.01 to 10 mol/L of the acid. However, since WO ‘364 uses the same acid, i.e., sulfuric acid, the dissociation constant would be inherent. Additionally, the amount of acid contained in the liquid would be a result effective variable based on the desired pH of the liquid.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over WO2009/110364 in view of WO2021/132191.
The teachings of both WO ‘364 and WO ‘191 are detailed above. WO ‘364 does not disclose that the organic film comprising the silane coupling agent has protrusions to a side opposite to the metal. As set forth above, WO ‘191 disclose an organic film comprising a silane coupling agent that has protrusion to a side opposite to the metal. It would have been obvious to one of ordinary skill in the art to have prepared the organic film of WO ‘364, wherein the film has protrusions on the side opposite to the metal, as taught in WO ‘191, motivated by the desire to enhance the adhesion properties of the organic film to the metal.
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.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/724,349. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘349 clearly anticipate the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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