DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ remarks filed June 16, 2026. Claims 1-7 and 20 are pending with claims 8-19 being withdrawn as directed to non-elected subject matter.
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 1-7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (WO2021/261066, references herein made to the English language publication US Patent 12,516,435).
Regarding applicants’ claim 1, Kato et al. disclose a composite film formed on a base layer, the composite film comprising carbon particles in a silver layer where the silver has a crystallite size of 40nm or less, the carbon content is 1 to 50% by mass, and the thickness of the film is 0.5 to 45µm (col. 9 line 10 - col. 11 line 4). While Kato et al. do not appear to explicitly disclose the exact range of the proportion of carbon particles claimed, one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the disclosed values including values which fall within those claimed.
Kato et al. do not appear to explicitly disclose the surface roughness, and therefore do not disclose a value obtained by dividing a surface roughness Ra by the thickness, however articles formed by substantially identical processes are expected to have substantially identical structures. Both applicants and Kato et al. disclose electroplating of a silver composite containing carbon particles by substantially identical electroplating processes (present specification at paragraphs 0062-0071 and Kato et al. col. 7 line 12 - col. 8 line 39). Given that the composite plating of Kato et al. is formed of substantially identical materials by a substantially identical process, the resulting coating would be expected to exhibit a surface roughness that falls within, or at least overlaps, applicants’ claimed value range of 0.2 or less.
Regarding applicants’ claim 2, Kato et al. disclose that the base material may be copper (col. 4 lines 21-40).
Regarding applicants’ claim 3, Kato et al. disclose a Vickers hardness of 100 or more (col. 10 lines 28-31).
Regarding applicants’ claim 4, Kato et al. disclose a thickness of 0.5 to 45µm (col. 10 line 61 - col. 11 line 4).
Regarding applicants’ claim 5, as discussed above with respect to claim 1, the surface roughness Ra of the composite coating would be expected to fall within or overlap applicants’ claimed range.
Regarding applicants’ claim 6, Kato et al. disclose a crystallite size of 40nm or less (col. 9 lines 10-21).
Regarding applicants’ claim 7, Kato et al. disclose a ground layer comprising Cu, Ni, Sn, or Ag (col. 11 lines 5-37).
Regarding applicants’ claim 20, Kato et al. disclose the composite film as a terminal (col. 11 lines 38-44).
Response to Arguments
Applicants’ arguments filed June 16, 2026 have been considered and are found to be persuasive. The rejections over Ito et al. are withdrawn, however following further search and consideration new grounds of rejection have been identified. Kato et al. (WO2021/261066) was published more then 1 year prior to the effective filing date of the instant application (instant application effective filing date March 7, 2023). While applicants’ have claimed priority to foreign application JP2022-037084 dated March 10, 2022 a certified English translation has not been filed. The publication date of WO2021/261066 is more than 1 year before the effective filing date of the instant application. Filing of a certified English translation would disqualify WO2021/261066 as prior art because as the prior art date would be less than one year prior to the effective filing date and the exception under 102(a)(1)(A) would apply. Further the corresponding US publications including US Patent 12,516,435 are not prior art as the 102(b)(1)(A) exception applies.
Given that the new grounds of rejection as applied above were not in response to applicants’ amendments to the claims, this office action is made NON-FINAL.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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/Adam Krupicka/ Primary Examiner, Art Unit 1784
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