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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/25/2024 is being considered by the examiner.
Claim Objections
Claims 2-4 and 7 are objected to because of the following informalities:
“the conductor pattern” in claims 2-3 should be “a conductor pattern of the pair of conductor patterns”
“the other” in claim 4 should be “other”
“the one … the other” in claim 7 should be “one … other”
Appropriate correction is required.
Allowable Subject Matter
Claim 4 is 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: Claim 4 teaches a limitation: “the resist layer is formed with a first opening that opens at a position on one of the conductor patterns in the region and a second opening that opens at a position on the other of the conductor patterns in the region, the resist layer remains between the first opening and the second opening, and the coating layer is formed in the first opening and the second opening” that is not taught in the prior art areas searched for this action.
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(s) 1, and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TOSHIYUKI (JP 08-204316-(1996)).
Regarding Claim 1. (Original) TOSHIYUKI teaches, in Fig. 1-2 substrate structure comprising: a substrate (1); a pair of conductor patterns (2) formed on a main surface of the substrate and arranged spaced apart from each other (see Fig. 2(a)); and a resist layer (3) covering the main surface of the substrate, wherein in at least part of a region between the pair of conductor patterns, a coating layer (4) having higher adhesiveness than the resist layer covers the substrate, with the coating layer being in contact with the substrate ([0023]).
Regarding Claim 5. (Original) TOSHIYUKI teaches the substrate structure according to claim 1, wherein the main surface of the substrate has a planar shape being continuous from one of the conductor patterns to the other of the conductor patterns in the region between the pair of the conductor patterns (see Fig .1-2).
Regarding Claim 6. (Original) TOSHIYUKI teaches the substrate structure according to claim 1, wherein the resist layer is formed with an opening (see Fig. 2b) that opens to at least part of the region, and the coating layer covers the resist layer at an edge portion of the opening (see Fig. 1).
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.
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.
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.
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).
Claim(s) 2-3 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over TOSHIYUKI in view of Case Law.
Regarding Claim 2. (Original) TOSHIYUKI teaches the substrate structure according to claim 1, but does not disclose wherein the resist layer is formed with an opening that opens to at least part of the region and to the conductor pattern, with the coating layer being formed in the opening.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to change the position and shape of resist layer and the coating layer in TOSHIYUKI (as they are both resist layers) in order to reduce material use of the resist and coating layers as it is known in the art, since it has been held that changing the shape of an object is routine to one of ordinary skill in the art if persuasive evidence is absent that the particular configuration of the claimed object is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) and it has been held that rearranging parts of an invention involved only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950).
Regarding Claim 3. (Original) TOSHIYUKI teaches the substrate structure according to claim 1, wherein the resist layer covers the conductor pattern (see Fig. 1- not fully cover), but does not teach the resist layer is formed with an opening that opens to at least part of the region, with the coating layer being formed in the opening.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to change the position and shape of resist layer and the coating layer in TOSHIYUKI (as they are both resist layers) in order to reduce material use of the resist and coating layers as it is known in the art, since it has been held that changing the shape of an object is routine to one of ordinary skill in the art if persuasive evidence is absent that the particular configuration of the claimed object is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) and it has been held that rearranging parts of an invention involved only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950).
Regarding Claim 7. TOSHIYUKI discloses the claimed invention except for directly showing the one of the conductor patterns and the other of the conductor patterns extend parallel to each other. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make them extend parallel to each other in order to simplify the manufacturing process as it is known in the art (see also JP H05335780- Fig .14), since it has been held that rearranging parts of an invention involved only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950).
Regarding Claim 8. TOSHIYUKI does not disclose a power supply device with the substrate structure according to claim 1. However, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed (see JP2001024322 abstract in order to prevent noise and delay) does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations Ex parte Masham 2 USPQ2d 1647 1987).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is presented in the Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUHAMMED AZAM whose telephone number is (571)270-0593. The examiner can normally be reached Mon-Fri 11:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIMOTHY DOLE can be reached at (571) 272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MA/Examiner, Art Unit 2847
/Timothy J. Dole/Supervisory Patent Examiner, Art Unit 2847
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