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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-4 in the reply filed on 3/27/26 is acknowledged.
Claims 5-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/27/26.
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 1-4 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.
Claim 1: Claim 1 recites the limitation "the insulating layer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The Examiner notes that at lines 2-3, the claim recites “a substrate (S) having an insulating layer and a conductive layer”; this format does not follow standard US practice.
Claim 1: Claim 1 recites the limitation "the toner image-formed surface of the substrate" in line 6. There is insufficient antecedent basis for this limitation in the claim.
The Examiner notes that lines 4-5 recite “form a toner image on the insulating layer of the substrate” but applicant is advised that the two phrases have not been related to make it clear that “form a toner image on the insulating layer of the substrate” forms “the toner image-formed surface of the substrate”.
Appropriate correction is required.
Claims 1-4: Claims 1-4 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Claims 2-4: Claims 2-4 are rejected for being indefinite because they depend from claim 1 and do not remedy the issues of claim 1.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. (US Patent 5,681,196; hereafter ‘196).
Claim 1: ‘196 is directed towards a method of forming a metal image (title, abstract, & Fig. 1), comprising:
forming an electrostatic pattern on the insulating layer of a substrate having an insulating layer and a conductive layer (particles 30 are deposited electrostatically in a pattern which implies that an electrostatic pattern is formed; see Figs. 1-4 and col. 2, line 20 – col. 4, line 40);
developing the electrostatic pattern with charged particles known as toner, to form a toner image on the insulating layer of the substrate (see particles 30, Figs. 1-4 and col. 2, line 20 – col. 4, line 40);
covering the toner image-formed surface of the substrate with a metal layer by a physical vapor deposition method (apply gate conductor film, copper by evaporation deposition, step E, Fig. 1 and col. 4, lines 5-25 & 60-67); and
removing the toner image together with the metal layer on the toner image (col. 4, line 60 – col. 5, line 10).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/Primary Examiner, Art Unit 1759
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