DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 29, 31-36, 38 and 40-44 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over USPN 6,333,384 to Lane in view of USPN 6,245,696 to Haas.
Claims 29, 38 and 44, Lane discloses a laminate comprising: a base laminate including a b-staged resin impregnated woven glass fabric sheet material, the woven glass fabric sheet material being woven from glass filaments; a first copper foil sheet adhered to the b-staged resin impregnated woven fabric sheet first surface; and a second copper foil sheet adhered to the b-staged resin impregnated woven fabric sheet second surface; wherein the b-staged resin may include no fillers (see entire document including column 4, lines 17-24 and column 9, line 33 through column 11, line 32).
Lane does not appear to mention the thickness of each component of the laminate but Lane discloses that the copper foil/adhesive/resin impregnated woven glass fabric/adhesive/copper foil laminate may have a thickness of about 0.001 inch (1 mil), a preferred thickness of about 0.002 inch (2 mils), and a more preferred thickness of about 0.003 (3 mils) (column 10, lines 17-44). Haas discloses that in the art the preferred adhesive/resin impregnated fabric/adhesive laminate thickness is about 50 to 150 microns (2 to 6 mils) and Haas further discloses that the copper foils have a thickness of about 18 microns (0.7 mil) and the adhesive has a thickness of about 2 to 200 microns (0.1 to 8 mils) (see entire document including column 4, lines 54-65 and the Examples). Plus, the current specification admits that it is known in the art that there is a need for a decrease in the thickness of circuit boards and a continuing need for very thin circuit board laminate materials (page 2). Further, MPEP 2144 discloses that when the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient, there exists a motivation to combine prior art references. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the base laminate, woven fabric, copper foils and adhesives of Lane with the claimed thicknesses, motivated by a desire to construct a thin circuit board laminate and/or based on the desired circuit board laminate thickness for the intended application.
Regarding the claimed average minimum and average maximum dielectric thicknesses (defined on page 11 of the specification), and regarding the claimed base laminate thickness differing by no more than 20% when measured at the center and each of the four corners of the base laminate, Lane discloses that the copper foils may be rolled copper foils (column 10, lines 45-56). Rolled (also called wrought) copper foils are created by squeezing copper sheets through closely spaced rollers making the copper smooth and uniform in thickness. Considering that the copper foils taught by the applied prior art are smooth and uniform in thickness, the applied prior art appears to inherently teach that the claimed limitations. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Haas discloses that it is conventional in the art to construct a printed wiring board copper clad fabric laminate with planar surfaces and a uniform layer thickness (Figures and column 2, lines 6-32). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form each layer of the laminate of Lane with planar surfaces and uniform thickness, motivated by a desire to form a conventional planar laminate and because it is within the general skill of a worker in the art to select a known shape on the basis of its suitability and desired characteristics.
Claim 31, the resin Tg may be from about 180-200°C (column 3, lines 41-47).
Claim 32, Lane discloses that the copper foils may be rolled copper foils (column 10, lines 45-56). Rolled (also called wrought) copper foils are created by squeezing copper sheets through closely spaced rollers making the copper smooth and uniform in thickness. Considering that the copper foils taught by the applied prior art are smooth and uniform in thickness, the applied prior art appears to inherently teach that the base laminate thickness differs by no more than 20% when measured at the center and each of four corners of a 18 inch by 24 inch rectangular laminate sheet.
Claims 33, 34, 40 and 41, the resin may include at least one epoxy resin (column 7, lines 33-62 and column 10, lines 29-39). Regarding a phenolic resin, Haas discloses that it is known in the art to include phenoxy resin in an amount of zero to 10 parts by weight (Examples). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include phenoxy resin, as claimed, motivated by a desire to improve flow control and/or other properties.
Claim 35, just a first copper foil sheet may be present (column 10, lines 40-44).
Claim 36, considering that the applied prior art discloses a substantially identical laminate in terms of structure and materials, the laminate would inherently have the claimed property. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claim 42, considering that the applied prior art discloses a woven glass fabric of substantially identical thickness, the claimed filament diameter appears to be inherently taught. Plus, both the current application and Lane are directed to printed circuit boards (page 2 of the current specification and column 4, lines 17-24 of Lane). Considering that the current specification fails to teach that the claimed filament diameter is unconventional or provides unexpected results it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the glass filaments with any desired filament diameter, such as claimed, because it is within the general skill of a worker in the art to select a filament size on the basis of its suitability and desired characteristics and motivated by the expectation of successfully practicing the invention of Lane. The examiner takes official notice (now admitted prior art) that a conventional woven fabric (plain weave) has no more than two filaments stacked over and under.
Claim 43, the examiner takes official notice (now admitted prior art) that a conventional woven fabric (plain weave) has no more than two filaments stacked over and under.
Claims 29, 31-36, 38 and 40-44 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over USPN 4,510,008 to Hoshi in view of USPN 6,245,696 to Haas in view of USPN 6,333,384 to Lane.
Claims 29, 38 and 44, Hoshi discloses a laminate comprising: a b-staged resin impregnated woven glass fabric sheet material having a first planar surface and a second planar surface, the woven glass fabric sheet being woven from glass filaments; a first copper foil sheet adhered to the b-staged resin impregnated woven fabric sheet first surface; and a second copper foil sheet adhered to the b-staged resin impregnated woven fabric sheet second surface; wherein the resin may include no fillers (see entire document including column 2, lines 52-64, column 4, lines 17-24, column 6, lines 12-43, and column 9, line 33 through column 11, line 32). Plus, Haas discloses that it is conventional in the art to construct a printed wiring board copper clad fabric laminate with planar surfaces and a uniform layer thickness (Figures and column 2, lines 6-32). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to form each layer of the laminate of Hoshi with planar surfaces and uniform thickness, motivated by a desire to form a planar laminate and because it is within the general skill of a worker in the art to select a known shape on the basis of its suitability and desired characteristics.
Hoshi does not appear to mention the thickness of each component of the laminate but Haas discloses that in the art the preferred adhesive/resin impregnated fabric/adhesive laminate thickness is about 50 to 150 microns (2 to 6 mils) and Haas further discloses that the copper foils have a thickness of about 18 microns (0.7 mil) and the adhesive has a thickness of about 2 to 200 microns (0.1 to 8 mils) (see entire document including column 4, lines 54-65 and the Examples). Plus, the current specification admits that it is known in the art that there is a need for a decrease in the thickness of circuit boards and a continuing need for very thin circuit board laminate materials (page 2). Further, MPEP 2144 discloses that when the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient, there exists a motivation to combine prior art references. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the base laminate, woven fabric, copper foils and adhesives of Lane with the claimed thicknesses, motivated by a desire to construct a thin circuit board laminate and/or based on the desired circuit board laminate thickness for the intended application.
Regarding the claimed average minimum and maximum dielectric thicknesses, and regarding the claimed base laminate thickness differing by no more than 20% when measured at the center and each of the four corners of the base laminate, Hoshi does not appear to mention the copper foil sheets being rolled but Lane discloses that it is known in the art to roll copper foils (column 10, lines 45-56). Rolled (also called wrought) copper foils are created by squeezing copper sheets through closely spaced rollers making the copper smooth and uniform in thickness. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the copper foils by any suitable method, such as rolling, because it is within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. Since the applied prior art discloses that the resin impregnated woven glass fabric sheet may have a thickness as claimed, and considering that the copper foils taught by the applied prior art are smooth and uniform in thickness, the applied prior art appears to inherently teach the claimed limitations.
Claim 31, Hoshi does not appear to mention the specific glass transition temperature of the resin, but Lane discloses that a resin glass transition temperature of 180°C or more is desirable for all copper-clad circuit board applications (see entire document including column 3, lines 41-47). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the laminate with a resin possessing a glass transition temperature from 180 to 200°C, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 32, Hoshi does not appear to mention the copper foil sheets being rolled but Lane discloses that it is known in the art to roll copper foils (column 10, lines 45-56). Rolled (also called wrought) copper foils are created by squeezing copper sheets through closely spaced rollers making the copper smooth and uniform in thickness. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the copper foils by any suitable method, such as rolling, because it is within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. Since the applied prior art discloses that the resin impregnated woven glass fabric sheet may have a thickness as claimed, and considering that the copper foils taught by the applied prior art are smooth and uniform in thickness, the applied prior art appears to inherently teach that the base laminate thickness differs by no more than 20% when measured at the center and each of four corners of a 18 inch by 24 inch rectangular laminate sheet.
Claims 33, 34, 40 and 41, the resin may include at least one epoxy resin and a phenolic resin (column 5, lines 10-13). Regarding a phenolic resin amount, Haas discloses that it is known in the art to include phenoxy resin in an amount of zero to 10 parts by weight (Examples). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include phenoxy resin, as claimed, motivated by a desire to improve flow control and/or other properties.
Claim 35, just a first copper foil sheet may be present (column 2, lines 52-64).
Claim 36, considering that the applied prior art discloses a substantially identical laminate in terms of structure and materials, the laminate would inherently have the claimed property. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claim 42, considering that the applied prior art discloses a woven glass fabric of substantially identical thickness, the claimed filament diameter appears to be inherently taught. Plus, both the current application and Hoshi are directed to printed circuit boards (page 2 of the current specification and column 1, lines 5-7 of Hoshi). Considering that the current specification fails to teach that the claimed filament diameter is unconventional or provides unexpected results it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the glass filaments with any desired filament diameter, such as claimed, because it is within the general skill of a worker in the art to select a filament size on the basis of its suitability and desired characteristics and motivated by the expectation of successfully practicing the invention of Hoshi. The examiner takes official notice (now admitted prior art) that a conventional woven fabric (plain weave) has no more than two filaments stacked over and under.
Claim 43, the examiner takes official notice (now admitted prior art) that a conventional woven fabric (plain weave) has no more than two filaments stacked over and under.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
The applicant maintains that the applied prior art fails to teach or suggest the claimed base laminate thickness of from about 1.0 to about 1.75 mils because Lane allegedly does not disclose a need for such an ultrathin laminate. Applicant’s argument is not persuasive. Lane does not appear to mention the thickness of each component of the laminate but Lane discloses that the copper foil/adhesive/resin impregnated woven glass fabric/adhesive/copper foil laminate may have a thickness of about 0.001 inch (1 mil), a preferred thickness of about 0.002 inch (2 mils), and a more preferred thickness of about 0.003 (3 mils) (column 10, lines 17-44). Haas discloses that in the art the preferred adhesive/resin impregnated fabric/adhesive laminate thickness is about 50 to 150 microns (2 to 6 mils) and Haas further discloses that the copper foils have a thickness of about 18 microns (0.7 mil) and the adhesive has a thickness of about 2 to 200 microns (0.1 to 8 mils) (see entire document including column 4, lines 54-65 and the Examples). Plus, the current specification “Description of the Prior Art” section admits that it is known in the art that there is a need for a decrease in the thickness of circuit boards and a continuing need for very thin circuit board laminate materials (page 2). Further, MPEP 2144 discloses that when the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient, there exists a motivation to combine prior art references. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the base laminate, woven fabric, copper foils and adhesives of Lane with the claimed thicknesses, motivated by a desire to construct a thin circuit board laminate and/or based on the desired circuit board laminate thickness for the intended application.
The applicant continues to assert that the applied prior art disclose a broad range of laminate thicknesses (that encompass the claimed thicknesses) but that there is no motivation to construct a laminate with the claimed thicknesses. The examiner respectfully disagrees. The current specification “Description of the Prior Art” section admits that it is known in the art that there is a need for a decrease in the thickness of circuit boards and a continuing need for very thin circuit board laminate materials (page 2). Further, MPEP 2144 discloses that when the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient, there exists a motivation to combine prior art references. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the base laminate, woven fabric, copper foils and adhesives of Lane with the claimed thicknesses, motivated by a desire to construct a thin circuit board laminate and/or based on the desired circuit board laminate thickness for the intended application.
The applicant also maintains that the applied prior art fails to teach or suggest the claim 29 limitation wherein the base laminate thickness differs by no more than 20% when measured at the center and each of the four corners of the base laminate. The examiner respectfully disagrees. Lane discloses that the copper foils may be rolled copper foils (column 10, lines 45-56). Rolled (also called wrought) copper foils are created by squeezing copper sheets through closely spaced rollers making the copper smooth and uniform in thickness. Considering that the copper foils taught by the applied prior art are smooth and uniform in thickness, the applied prior art appears to inherently teach that the base laminate thickness differs by no more than 20% when measured at the center and each of four corners of the base laminate.
Conclusion
All claims are either identical to or patentably indistinct from claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached on Monday-Thursday 7am-5pm.
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, Marla McConnell can be reached on 571-270-7692. 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.
/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
Prosecution Insights