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 .
Election/Restrictions
Applicant's election with traverse of claims 1-5 in the reply filed on 11/24/2025 is acknowledged. The traversal is on the ground(s) that the groups can be searched and examined together without undue burden. This is not found persuasive because the shielding material (claims 1-5) does not require the deposition methods of claims 6-10 and therefore requires different search queries and strategies directed to shielding layers deposited or formed by all methods rather than just sputtering.
The requirement is still deemed proper and is therefore made FINAL.
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 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.
Claim(s) 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lim1 (US 9836095 B1).
Regarding claim 1, Lim1 (US 9836095 B1) teaches a conductive structure (shielding layer) that serves as an electromagnetic shield (electromagnetic wave shielding material) made of conductive particles 312 of nickel (contains at least one selected from a group consisting of zinc, nickel, and chromium) coated on a surface of a substrate 300 (base material) (col 3 line 28-67, col 4 line 1-36; Fig. 3C-3D).
Regarding claim 4, Lim1 teaches the conductive structure (shielding layer) is made of conductive particles with sizes of 0.3 micrometers to 5 micrometers, which is equivalent to the thickness of the shielding layer defined as having a depth of one particle (thickness of 0.1 micrometers or more and 5 micrometers or less) (col 3 line 50-67, col 4 line 1-13).
Regarding claim 5, Lim1 teaches the conductive structure may have a thickness of 2 micrometers and be made of nickel, resulting in a shielding effectiveness of 110 dB at a frequency of 0.5 GHz, which is equivalent to an electromagnetic wave shielding performance of 55 dB/micrometer (40 dB/micrometer or more and 55 dB/micrometer or less) (col 3 line 50-67, col 4 line 1-13)
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lim2 (NPL – “Effects of Composition on the Electromagnetic Wave Shielding/Absorption and Corrosion in Zn-Ni Alloy Thin Film”).
Regarding claim 1, Lim2 (NPL) teaches an electromatic wave shielding material comprising a Zn-Ni alloy layer (shielding layer that contains at least one of zinc, nickel, and chromium) deposited (coated) by sputtering on a surface of a silicon wafer (base material) (Abstract, pg. 63; Fig. 1).
Regarding claim 2, Lim2 (NPL) teaches that the film ideally comprises 57 at% Zn and 43 at% Ni (53 at% or more and 63 at% or less of zinc relative to a total number of elements) (Abstract, Table 1).
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nigh (US 4079169 A).
Regarding claim 1, Nigh (US 4079169 A) teaches an undercoat layer 14 formed on a surface of a substrate 10 (base material) where the undercoat layer is made of an alloy comprising 10-22% Ni, 18-25% Cr, 13-16% W, and 35-50% Co (contains at least one selected from a group consisting of zinc, nickel, and chromium) (col 4 line 53-57, claim 6, 12; Fig. 1). Though Nigh fails to explicitly teach the undercoat layer is a shielding layer of an electromagnetic shielding material, the alloy comprising nickel and chromium would necessarily act as a shielding layer of an electromagnetic wave shielding material to some extent because nickel and chromium are effective for electromagnetic wave shielding.
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nigh (US 4079169 A).
Regarding claim 3, Nigh (US 4079169 A) teaches an undercoat layer 14 formed on a surface of a substrate 10 (base material) where the undercoat layer (shielding layer) is made of an alloy comprising 10-22% Ni, 18-25% Cr, 13-16% W, and 35-50% Co (col 4 line 53-57, claim 6, 12; Fig. 1). Nigh fails to explicitly teach the shielding layer contains 37 at% or more and 47 at% or less of nickel and chromium relative to a total number of atoms and an atomic ratio of nickel and chromium is 1:1. However, one skilled in the art would have expected the use of any values within the Nigh ranges to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any values within 10-22 at% Ni and 18-25 at% Cr, including values within the claimed range, such as a composition including 20 at% Ni and 20 at% Cr resulting in a 1:1 Ni and Cr ratio as well as a content of nickel and chromium equal to 40 at% (37 at% or more and 47 at% or less), with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lim1 (US 9836095 B1).
Regarding claim 4, Lim1 teaches the conductive structure (shielding layer) is made of conductive particles with sizes of 0.3 micrometers to 5 micrometers, which is equivalent to the thickness of the shielding layer defined as having a depth of one particle (thickness of 0.1 micrometers or more and 5 micrometers or less) (col 3 line 50-67, col 4 line 1-13). Alternatively, Lim1 teaches that the conductive structure thickness may be selected relative to the level of shielding desired (col 5 line 27-41), thus indicating that the conductive structure thickness is a result-effective variable influencing the shielding done by the film. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum or workable ranges of shielding layer thickness by routine optimization, which can include a thickness of 0.1 to 5 micrometers or less. See MPEP 2144.05(II).
Regarding claim 5, Lim1 teaches the conductive structure may have a thickness of 2 micrometers and be made of nickel, resulting in a shielding effectiveness of 110 dB at a frequency of 0.5 GHz, which is equivalent to an electromagnetic wave shielding performance of 55 dB/micrometer (40 dB/micrometer or more and 55 dB/micrometer or less) (col 3 line 50-67, col 4 line 1-13). Alternatively, Lim1 teaches that the conductive structure thickness may be selected relative to the level of shielding desired (col 5 line 27-41), thus indicating that the conductive structure thickness is a result-effective variable influencing the shielding done by the film. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum or workable ranges of shielding layer thickness by routine optimization, which can include a thickness resulting in a shielding performance within the claimed range of 40 to 55 dB/micrometer. See MPEP 2144.05(II).
Conclusion
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/PATRICK S OTT/Examiner, Art Unit 1794