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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/02/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 2/4/2022 are accepted.
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) 1, 6, 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2011-0080421 (herein referred to as “Sang”) in view of JP 2010-2585338 (herein referred to as “Yoshinari”) and Applicant’s admissions.
Sang teaches coverlays for a flexible printed board comprising an adhesive applied to one side of a base film (herein understood to read on the claimed “base substrate”) and then bonding a release film layer to said adhesive. The adhesive comprises (1) 100pbw of epoxy resin, (2) 10-70 pbw of an inorganic filler, and ; (3) 50-250 pbw of a thermoplastic resin composition (0008). The thermoplastic wherein the rubber component comprises a nitrile butadiene rubber (see abstract). The coverlay film is manufactured by applying an adhesive to one side of a base film (herein understood to read on the claimed base substrate) as in the case of a circuit board to make it a semi-cured state, and then bonding a release film layer (0079).
Sang teaches the inorganic filler may be elected from the group consisting of silica (aka.” silica dioxide”), aluminum hydroxide, and magnesium oxide (0036) or mixtures thereof but does not teach the claimed blending ratio. However, the courts have held it is prima facie obvious to combine two or more compositions, in nay relative amount, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. T]he idea of combining them flows logically from their having been individually taught in the prior art. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a blend of aluminum hydroxide, metal oxide, and silica dioxide in any relative amounts as the filler taught in Sang. The motivation for doing so would have been that the courts have recognized it is prima facie obvious to combine two or more compositions, in nay relative amount, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. The examiner takes the position that the genus “metal oxide” is sufficiently small that the skilled artisan could “at once envisage” the use of magnesium oxide.
Sang does not teach the composition should further comprise an acrylic rubber. However, Yoshinari teaches a coverlay film for a flexible wiring board wherein the adhesive layer comprise an epoxy resin, a synthetic rubber, and an inorganic filler Said reference teaches the epoxy resin should comprise rubbers such as acrylic rubber, acrylonitrile butadiene rubber, and mixtures thereof. The courts have held it is prima facie obvious to combine two or more compositions, in nay relative amount, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. T]he idea of combining them flows logically from their having been individually taught in the prior art. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a blend of acrylonitrile rubber and acrylic rubber in any relative amounts as the thermoplastic resin taught in Sang. The motivation for doing so would have been that the courts have recognized it is prima facie obvious to combine two or more compositions, in nay relative amount, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.
Said references fails to teach the claimed surface protection film disposed on the opposite surface of the base substrate. However, applicant acknowledges that protection films are known in the art (0107). A prior art search supports the conclusion said protective films are known in the art (e.g. US2017/0064838; KR2017-0084672; JP2019-102501). Thus, it would have been obvious to apply a surface protection film to the base substrate on the surface opposite the adhesive as applicant admits such protection films are known in the art.
With regards to claim 6, the examiner takes the position that a chemical composition which is identical to the claimed invention will necessarily possess the same physical properties.
With regards to claim 12, Sang teaches the coverlay film may be applied to a printed circuit board body.
With regards to claim 16, Mitsui describes that an epoxy resin containing 2 epoxy groups in the 1 molecules, and the epoxy equivalent is within the range of the 200-100g/eq.
Response to Arguments
Applicant's arguments filed 9/2/2026 have been fully considered but they are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
