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 of the liquid crystalline polymer species as described in paragraph [0071] of the published application in the reply filed on 09/16/25 is acknowledged. The claims that read on the elected species are claims 1-16 and 18-37. As such, claim 17 has been withdrawn as not reading on the elected species. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 103
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 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) 1-16, 18-30 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. U.S. Patent Application Publication No.: 2017/0267838 A1 in view of Grinsteinner U.S. Patent Application Publication No.: 2019/0153179 A1 and optionally further in view of WO 2020/0153179 A1.
Please note that Lu et al. U.S. Patent Application Publication No.: 2017/0267838 A1 has the same Applicant “Ticona LLC” as the Present Application.
Lu et al. independent claim 1 reads as followed: “A polymer composition that comprises from about 20 wt. % to about 95 wt. % of at least one polyaryletherketone and a plurality of reinforcing fibers in an amount from about 10 to about 80 parts per 100 parts by weight of the polyaryletherketone, wherein the reinforcing fibers have an aspect ratio of from about 1.5 to about 10, the aspect ratio being defined as the cross-sectional width of the fibers divided by the cross-sectional thickness of the fibers.”
Lu et al.’s dependent claims 15-17 and paragraphs [0050]-[0063] disclose that it is highly advantageous that the polymer composition also comprises liquid crystalline polymer(s) which read directly on Applicant’s liquid crystalline polymer(s) of dependent claims 10-19.
Lu et al.’s paragraph [0083] discloses that the preferably further inclusion of inorganic mineral fillers/particles, such as talc, mica, halloysite, kaolinite, montmorillonite, vermiculite etc. into the polymer compositions to improve the mechanical properties of the composition. Said mineral fillers read directly on Applicant’s claims 20-23.
Lu et al. further discloses that their polymer compositions are useful in making shaped parts, such as camera modules which can be contained in wireless communication devices, see paragraph [0089].
Lu et al. discloses the importance of controlling the mean coefficient linear thermal expansion (CLTE) of their polymer compositions, see paragraph [0021].
Lu et al. also discloses the melt viscosity range for their polymer composition, see claims 9-10, which is deemed overlap Applicant’s claimed melt viscosities of dependent claims 3 and 7.
Specific attention is drawn to Lu et al.’s Examples 1-2 and 5, as set forth in paragraph [0122] and (TABLE 1 and TABLE 2). Said examples teach polymer compositions comprising a polyetheretherketone (PEEK), a liquid crystalline polymer (LCP), glass fibers and aluminum trihydrate (i.e. aluminum hydroxide). Please note that the aluminum trihydrate component reads directly on Applicant’s dependent claims 24-27. The mean coefficient linear thermal expansion (CLTE) values for said polymer compositions are deemed to fall either directly within Applicant’s claimed mean coefficient of linear thermal expansion or are very close. There is some confusion on this issue because Lu et al.’s seems to use a different method of measuring their mean coefficient of linear thermal expansion as compared to Applicant’s method which is in accordance with ISO 11359-2:1999 protocol over a temperature range of from -45oC to 200oC.
Lu et al. “differ” from Applicant’s claimed invention of independent claim 1 only in that Lu et al.’s disclosure is silent in regards to the “in-plane thermal conductivity” of their polymer compositions. Lu et al. also does not disclose the “through-plane conductivity” as set forth in Applicant’s dependent claim 5.
Please note that the secondary reference to Grinsteinner has the same Applicant “Ticona LLC” as the Present Application.
Grinsteinner discloses a fiber-reinforced polymer composition that comprises a polymer matrix; a thermally conductive filler distributed within the polymer matrix; and a plurality of long fibers distributed within the polymer matrix is provided. The long fibers comprise an electrically conductive material and have a length of about 7 millimeters or more. Further, the composition exhibits an in-plane thermal conductivity of about 1 W/m-K or more as determined in accordance with ASTM E 1461-13 and an electromagnetic shielding effectiveness of about 20 dB or more as determined at a frequency of 1 GHz in accordance with EM 2107A, see abstract paragraphs [0003], [0012] and claim 1.
Grinsteinner’s paragraph [0012] teaches the following: “The composition may, for exhibit, exhibit an in-plane thermal conductivity of about 1 W/m-K or more, in some embodiments about 3 W/m-K or more, in some embodiments about 5 W/m-K or more, and in some embodiments, from about 7 to about 15 W/m-K, as determined in accordance with ASTM E 1461-13. The composition may also exhibit a through-plane thermal conductivity of about 0.3 W/m-K or more, in some embodiments about 0.5 W/m-K or more, in some embodiments about 0.40 W/m-K or more, and in some embodiments, from about 1 to about 5 W/m-K, as determined in accordance with ASTM E 1461-13. In addition to being thermally conductive, the composition can also provide a high degree of shielding effectiveness to electromagnetic interference (“EMI”). . . .”. [Emphasis added]. Grinsteinner’s said disclosure thus fully meets the limitations of Applicant’s independent claim 1 and dependent claims 4-6 in regards to both in-plane thermal conductivity and through-plane thermal conductivity.
Grinsteinner’s polymer matrix composition preferably comprises liquid crystalline polymer(s) in paragraphs [0021], [0027], [0031]-0034], that read directly on applicant’s claimed liquid crystalline polymers of dependent claims 10-19.
Grinsteinner’s polymer matrix composition also preferably comprises inorganic filler particle, such as talc, mica etc. in paragraph [0042], that read directly on Applicant’s claimed inorganic filler particles of dependent claims 20-23.
Grinsteinner further discloses that the fiber reinforced polymer composition is useful for electronic modules such as camera modules, see paragraph [0002] and claim 25.
It would have been obvious to one having ordinary skill in the art to use the disclosure of the secondary reference to Grinsteinner as strong motivative to formulate Lu et al.’s polymer compositions such that they have Applicant’s claimed in-plane thermal conductivity and through-plane thermal conductivity, as set forth in independent claim 1 and dependent claims 4-5. Said is well motivated, because both Lu et al. and Grinstenner are drawn to the same objective of formulating polymer compositions useful in making camera modules that have well controlled and minimized thermal expansion. Furthermore, said conclusion is strongly supported by the fact that both Lu et al.’s and Grinstenner’s polymer compositions use the same claimed components, namely liquid crystalline polymer in combination with inorganic filler particles, within extensively overlapping concentration ranges.
Finally, said combination of Lu et al. and Grinstenner can optionally be taken further in view of WO 2020/0153179 A1 in regards to Applicant’s specifically claimed method of measuring the mean coefficient linear thermal expansion of the polymer composition as set forth in independent claim 1.
WO 2020/0153179 A1 discloses polymer compositions that contain liquid crystalline or semi-crystalline polymers that are useful to make device using say a molding process. WO 2020/0153179 A1 discloses a mean coefficient of linear thermal expansion of about 50°C" or less as determined in a direction transverse to a flow direction in accordance with ISO 11359-2:1999 over a temperature range of from -45°C to 200°C.
As set forth above, the primary reference to Lu et al. directly disclosed the importance of controlling the mean coefficient linear thermal expansion (CLTE) values for their polymer compositions but seemed to use a different method of measuring their mean coefficient of linear thermal expansion as compared to Applicant’s method which is in accordance with ISO 11359-2:1999 protocol over a temperature range of from -45oC to 200oC. The optional further combination of WO 2020/0153179 A1 is made to show that Applicant’s claimed method of measuring the mean coefficient of linear thermal expansion of a polymer composition is not only well known in the art, but also that Applicant’s specifically claimed mean coefficient of linear thermal expansion is itself well known in the art to be advantageous for polymer compositions whose intended end use encompasses Applicant’s intended use of making a camera module.
Claim(s) 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. U.S. Patent Application Publication No.: 2017/0267838 A1 in view of Grinsteinner U.S. Patent Application Publication No.: 2019/0153179 A1 and optionally further in view of WO 2020/0153179 A1 and still further in view of Lee et al. U.S. Patent Application Publication No.: 2019/0273847 A1.
Lu et al., Grinsteinner and WO 2020/0153179 A1 have all been described above. Said combination differs from Applicant’s claims in regards to the specifically claimed structural features of the camera module.
Lee et al. discloses a camera module that directly teaches all of Applicant’s specifically claimed structural features, see abstract, Figures and claims.
It would have been obvious to one having ordinary skill in the art to use the disclosure of Lee et al., in regards to Applicant’s specifically claimed camera module structural features, as strong motivation, when using the polymer composition(s) disclosed by Lu et al. in view of Grinsteinner, to make camera modules that have Lee et al.’s specifically claimed structural features. It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 and 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 11,086,200. The claims at issue are not identical because the patented claims are silent in regards to the pending claims physical properties of both: “in-plane thermal conductivity” and “mean coefficient of linear thermal expansion”. Nevertheless, they are not patentably distinct from each other because both the pending claims and the patented claims, are directed towards a camera module comprising a polymer composition that includes a polymer matrix containing the same liquid crystalline polymers and the same plurality of inorganic particles, the concentrations of which extensively overlap each other. It is well known in the art, that a composition/compound and its properties are inseparable. As such, it is held that the pending claims physical properties of both: “in-plane thermal conductivity” and “mean coefficient of linear thermal expansion” are met by the patented claims.
Claims 1-16 and 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 12,032,272. The claims at issue are not identical because the patented claims are silent in regards to the pending claims physical properties of both: “in-plane thermal conductivity” and “mean coefficient of linear thermal expansion”. Nevertheless, they are not patentably distinct from each other because both the pending claims and the patented claims, are directed towards a camera module comprising a polymer composition that includes a polymer matrix containing the same liquid crystalline polymers and the same plurality of inorganic particles, the concentrations of which extensively overlap each other. It is well known in the art, that a composition/compound and its properties are inseparable. As such, it is held that the pending claims physical properties of both: “in-plane thermal conductivity” and “mean coefficient of linear thermal expansion” are met by the patented claims.
Claims 1-16 and 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-15 of U.S. Patent No. 12,032,272. The claims at issue are not identical because the patented claims are silent in regards to the pending claims physical properties of both: “in-plane thermal conductivity” and “mean coefficient of linear thermal expansion”. Nevertheless, they are not patentably distinct from each other because both the pending claims and the patented claims, are directed towards a camera module comprising a polymer composition that includes a polymer matrix containing the same liquid crystalline polymers and the same plurality of inorganic particles, the concentrations of which extensively overlap each other. It is well known in the art, that a composition/compound and its properties are inseparable. As such, it is held that the pending claims physical properties of both: “in-plane thermal conductivity” and “mean coefficient of linear thermal expansion” are met by the patented claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764