CTNF 18/897,160 CTNF 87979 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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 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. Examiner's Note. Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of”, “arranged to”, “intended to”, "so as", “able to” or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of”, “arranged to”, “intended to”, "so as"", “able to” or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of”, “arranged to”, “intended to”, "so as"", “able to” or “operable to” . The Examiner has cited particular paragraphs or columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested of the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. SEE MPEP 2141.02 [R-07.2015] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert, denied, 469 U.S. 851 (1984). See also MPEP §2123. Claim Objections 07-29-01 AIA Claim 10 is objected to because of the following informalities: The term “ to be ” is not a positive limitation inasmuch as the term is in future tense and implies a change in condition in the future. This does not serve to limit the structure in the present tense . Appropriate correction is required. Specification objections 06-31 AIA `The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-12 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 pre-AIA the applicant regards as the invention. The above identified claims will be examined as best understood . 07-34-10 Re claim 1 the phrase "a film-like” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). 07-34-03 Re claims 1, 3 and 5 the phrase "different” is a relative term which renders the claim indefinite. The term "different” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Re claim 1 the phrases "the base material”. There is insufficient antecedent basis for this limitation in the claim. Re claim 8 the phrases "the thickness of the first metal layer and the thickness of the second metal layer”. There is insufficient antecedent basis for this limitation in the claim. Allowable Subject Matter Claims 1-12 objected to, but would be allowable if rewritten to overcome all the rejections above. The prior art of record including the disclosures above neither anticipates nor renders obvious the above recited combination. 07-43-03 AIA As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP ~ 707.07(a). Reasons for Allowance 13-03 AIA The following is an examiner's statement of reasons for allowance: The prior art of record fails to teach the overall combination as claimed “A conductive film comprising: a film-like base material; and a conductive layer provided on one main surface side of the base material, wherein the conductive layer comprises a first metal layer comprising a first metal, and a second metal layer comprising a second metal different from the first metal, provided in order from the base material side, and wherein the first metal layer comprises grain boundaries ”, the previous cited limitations of claim 1 in conjunction with all other limitations of the dependent and independent claims are not taught nor suggested by the prior art of record (PTO-892 and 1449) . Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance”. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHAT BADAWI whose telephone number is (571)270-5983. The examiner can normally be reached on Mon-Fri during office hours. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSHUA MICHENER can be reached on 571-272-1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MEDHAT BADAWI/Primary Examiner, Art Unit 3642 Application/Control Number: 18/897,160 Page 2 Art Unit: 3642 Application/Control Number: 18/897,160 Page 3 Art Unit: 3642 Application/Control Number: 18/897,160 Page 4 Art Unit: 3642 Application/Control Number: 18/897,160 Page 5 Art Unit: 3642 Application/Control Number: 18/897,160 Page 6 Art Unit: 3642
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