DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
ELECTION / RESTRICTION
Applicant’s election of claims 1-7 of Group I without traverse is acknowledged.
Claim Rejections - 35 USC § 102
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)(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 1-3, 5 and 7 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by US 20160153287 (Roach et al.).
Re claims 1-3, 5, and 7, Roach discloses a resin-metal composite of a base material and a metal plate on it (see Fig. 107, and associated text – 196 top layer on 196 base material), [89, 10, 90, 109-110]. The roughness recitation is not recited however is inherent given the materials are the same. No treatment process as per claim 7 is taught.
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:
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 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160153287 (Roach et al.).
Re claims 4 and 6, Roach teaches [109-110] thicknesses of coper and nickel effect overall the surface roughness, thus while not exactly taught in the same words as applicant, the metal thickness [90] ranges from 0.01 in. to 0.5 in.) and would have been obvious to one having ordinary skill in the art based on the teachings to functionality, the thicknesses effecting the surface roughness of the resin-metal composite body; as it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272
Further to claim 7, process limitations are not germane to patentability; further merely operating the process in a continuous manner does not render the combination inventive in the absence of a showing of unexpected beneficial results," Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
2011/0033711 to Kuroyama teaches the structure but not the same materials as claimed.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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