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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, it is unclear what is meant by “Vickers hardness”. It is unclear what load and conditions are being claimed. The hardness value obtained would be expected to be dependent on these. It is unclear what conditions are claimed for the “modulus of elasticity”. It is presumed that this is Young’s modulus, which is recognized as being dependent on testing conditions. It is unclear what conditions are being claimed. Analogous rejection applies to Claim 6. See, for example, Ogawa JP 2009-228053 which provides detailed description of manner of determination of Vickers hardness and Young’s modulus. See Ogawa (paragraphs 74 and 75).
Regarding Claim 1, it is unclear what conditions are being claimed for determining “maximum value”. The Specification explains that this is based on 200,000 bending repetitions with various further details. See Specification (paragraph 97, et seq.). It is unclear whether these conditions are being claimed. It is unclear what test conditions are being used to conduct each repetition of bending. Analogous rejection applies to Claim 8.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-7 and 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding Claims 1-9, the reviewed prior art does not teach or suggest the subject matter of these claims. Particularly, the reviewed prior art does not teach or suggest rolled material comprising alloy or pure metal wherein the index value is satisfied for thickness that is 0.03 mm or less and wherein “maximum value” of not greater than 2.1 mm, in the claimed context, is obtained. For example, Wang USPA 2022/0123237 teaches multi-layer metal foil (paragraph 20) that may be 0.03 mm (paragraph 6) wherein hardnesses, elastic coefficients, and relative thicknesses of respective layers (paragraph 6) are recognized as important influences on minimum bending radius for flexible foil. However, Wang fails to expressly teach or suggest the claimed index relationship and other claimed features or provide basis for establishing inherency of these relationships and features. See Wang (entire document). For example, Ogawa JP 2009-228053 teaches or suggests metal material sheet having hardness and Young’s modulus meeting index requirements of Claim 1 (as derivable from rightmost columns of Table 3), but fails to expressly teach or suggest meeting index requirements for rolled material of 0.03 mm or less and fails to expressly teach or suggest meeting “maximum value” relationship or otherwise provide basis for establishing inherency of these features. See Ogawa (Claims; paragraph 46, 47, 74, and 75; and Tables 1-4).
Response to Amendment
In view of applicant’s amendments and arguments, applicant traverses the claim objection of the Office Action mailed on 22 January 2026. Objection is withdrawn.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (b) rejection of the Office Action mailed on 22 January 2026. Except to the extent repeated above for the reasons given above, rejections are withdrawn. Regarding Vickers Hardness, applicant argues that loads are determined by thickness, that loads could be between 10 and 100 gf, with loads being from 50 to 100 gf being preferred for 0.03 mm foil, and that testing conditions could be “reverse engineered”. While appropriate loads may be selected based on thickness, there is no single load that is necessarily appropriate. Furthermore, applicant’s argument that load could be from 50 to 100 gf reinforces this point since a single load was not identified as being the one that is appropriate and also draws attention to the point of the rejection, namely, that load affects ascertained hardness, as is evident in the following cited articles. See Voyiadjis et al. in “Review of Nanoindentation Size Effect: Experiments and Atomistic Simulation” in Crystals 2017, 7, 321 (23 October 2017) (28 pages) [Sections 1 and 2: discussing ISE and inverse ISE and pointing to variation in hardness with load; Figure 1: showing hardness variation with indentation depth which is related to load; and entire document]. See, also, Luo et al. in “Microhardness, Indentation Size Effect and Real Hardness of Plastically Deformed Austenitic Hadfield Steel” in Materials 2023, 16, 1117 (28 January 2023) (20 pages) [Section 1: “measured hardness value depends strongly on the applied load”; Figure 4: showing strong variation from 10 to 100 gf in hardness at left side of figure; Table 2: reporting variation in hardness with load from 10 to 100 gf and beyond; and entire document]. Thus, applicant’s contention that an intrinsic property is being probed by established testing methods, of which several are known and each of which would be expected to lead to a single intrinsic measured result no matter which method is used, is not necessarily what is observed. Rather, that different values can be obtained is actually a recognized problem in the field; it is why reported hardness values need to be tethered to specific test method and conditions and load in order to be reproducible and meaningful, particularly, at these relatively smaller loads that are necessary for the thin foils being claimed. It is why a hardness value that is claimed without conditions and load is indefinite. There is no evidence that the testing method of the hardness values of the application can be “reverse engineered”. As well, there is no claim language or Specification language that the claims necessarily must be interpreted by such “reverse engineered” testing method were one to be established. Applicant argues that there are recognized elasticity modulus measurement tests and that they would be expected to lead to same values no matter which test is used since what is being measured is an intrinsic property. Difficulties in measuring elastic modulus in metal foils is known problem and can lead to varying measured values depending on test methods used. See Trost et al. in “A new approach to evaluate the elastic modulus of metallic foils” in Materials and Design 196 (2020) (14 Sept. 2020) 109149 (10 pages)[Section 1, for example, describes experimental results of varying different measured values depending on method used; the article specifically reports on details in testing method that can affect measured values for thin copper foils studied]. There is no evidence that the testing method of the elasticity modulus of the application can be “reverse engineered”. As well, there is no claim language or Specification language that the claims necessarily must be interpreted by such “reverse engineered” testing method were one to be established. Applicant argues that any suitable method can be used to establish minimum bend radius. In addition to other conditions and/or configurations, the test could entail only 100,000 bends, for example, or as many as 300,000 bends, or any other number. By this argument, it is unclear how one of ordinary skill in the art can ascertain whether a particular foil meets or does not meet the claimed feature to the extent that the method is other than that in the Specification, which applicant is expressly arguing. There could be an unbounded number of other methods for which one of ordinary skill in the art could not even conceive of what they are and thus not be put on notice as to what the claim encompasses, which necessarily renders the claim indefinite. Applicant argues that addition of the testing method would lead to a product-by-process claim. A product-by-process claim defines a claimed product by the process by which it is made. A limitation pertaining to how a feature of a made product is to be assessed does not define how the product is made. In this case, the testing method would define the type of use the product must be able to withstand, which is a property of the product not a characteristic of how the product was made. Rejections are maintained.
In view of applicant’s amendments and arguments, applicant traverses the section 112, paragraph (d) rejection of the Office Action mailed on 22 January 2026. Rejection is withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
16 July 2026
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