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 .
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, 11, 12, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP2003-277711A (herein referred to as Mitsui) in view of Badiger et al (US 2017/0355849).
Mitsui teaches coverlays for a flexible printed board comprising an adhesive applied to one side of an insulating plastic film (herein understood to read on the claimed “base substrate”) and then bonding a release film layer to said adhesive (0002). The adhesive comprises (1) an epoxy resin, (2) a curing agent, (3) an inorganic filler, and ; (4) a composition comprising a rubber component as an essential component, wherein the rubber component comprises (5) an ethylene / acrylic rubber and (6) a nitrile butadiene rubber having a carboxyl group in a weight ratio of 90/10-20/80 (see abstract provided by applicant; of record). The coverlay film is manufactured by applying an adhesive to one side of an insulating plastic 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 (0002).
Mitsui teaches the epoxy resin composition should comprise a nitrile butadiene rubber having a carboxyl group, but does not teach said resin should not contain a carboxyl group. However, Badiger teaches that epoxy terminated nitrile butadiene rubber and amine terminated nitrile butadiene rubber have been used as equivalence of carboxyl group containing nitrile butadiene rubber in epoxy compositions in order to overcome the problem of brittleness and low impact resistance (0004). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize epoxy terminated nitrile butadiene rubber or amine terminated nitrile butadiene rubber in place of the carboxyl group containing nitrile butadiene rubber taught in Mitsui as Badiger teaches said resins are known to be functionally equivalent to one another in epoxy compositions with regards to overcoming the problem of brittleness and low impact resistance. When such a substitution of equivalence is made, the resulting composition comprises nitrile butadiene rubber that does not contain a carboxyl group.
Mitsui teaches the inorganic filler may be elected from the group consisting of silica (aka.” silica dioxide”), aluminum hydroxide, and, metal oxides (herein understood to read on the claimed “magnesium oxide), 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 Mitsui. 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.
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, Mitsui teaches that it is preferable to post cure at a temperature of 100 to 250 ℃ ([0035]. Alternatively, 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, Mitsui teaches the coverlay film may be applied to a printed circuit board body (claims).
With regards to claims 14 and 15, Mitsui teaches the rubber component comprises (5) an ethylene / acrylic rubber and (6) a nitrile butadiene rubber in a weight ratio of 90/10-20/80 (See abstract).
With regards to claim 16, Mitsui describes that an epoxy resin having a number-average molecular weight of 380 to 1000 is used (1). These epoxy resins contain 2 epoxy groups in the 1 molecules, and the epoxy equivalent is within the range of the 100-500g/eq (see examples).
With regards to claim 17, the claimed relative amounts of components is disclosed in Mitsui (see Tables).
Claim(s) 1, 6, 11, 12, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP2003-277711A (herein referred to as Mitsui) in view of Wu et al (US 2018/0044565) and Badiger et al (US 2017/0355849).
Mitsui teaches coverlays for a flexible printed board comprising an adhesive applied to one side of an insulating plastic film (herein understood to read on the claimed “base substrate”) and then bonding a release film layer to said adhesive (0002). The adhesive comprises (1) an epoxy resin, (2) a curing agent, (3) an inorganic filler, and ; (4) a composition comprising a rubber component as an essential component, wherein the rubber component comprises (5) an ethylene / acrylic rubber and (6) a nitrile butadiene rubber having a carboxyl group in a weight ratio of 90/10-20/80 (see abstract provided by applicant; of record). The coverlay film is manufactured by applying an adhesive to one side of an insulating plastic 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 (0002).
Mitsui teaches the inorganic filler may be elected from the group consisting of silica (aka.” silica dioxide”), aluminum hydroxide, and, metal oxides (herein understood to read on the claimed “magnesium oxide), 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 Mitsui. 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.
Mitsui is relied upon as above, but does not explicitly teach the metal oxide should comprise magnesium oxide. However, Wu teaches a curable epoxy adhesive (002) for use in electronic applications. Wu teaches said adhesive may comprise filler such as silica, aluminum hydroxide, and magnesium oxide (0092). Thus, it would have been obvious to one of ordinary skill in the art at the time the application was filed to utilize magnesium oxide filler as the metal oxide filler disclosed in Mitsui. The motivation for doing so would have been Wu teaches magnesium oxide is functionally equivalent to the filler utilized in Mitsui (See MPEP 2144.06).
Mitsui teaches the epoxy resin composition should comprise a nitrile butadiene rubber having a carboxyl group, but does not teach said resin should not contain a carboxyl group. However, Badiger teaches that epoxy terminated nitrile butadiene rubber and amine terminated nitrile butadiene rubber have been used as equivalence of carboxyl group containing nitrile butadiene rubber in epoxy compositions in order to overcome the problem of brittleness and low impact resistance (0004). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize epoxy terminated nitrile butadiene rubber or amine terminated nitrile butadiene rubber in place of the carboxyl group containing nitrile butadiene rubber taught in Mitsui as Badiger teaches said resins are known to be functionally equivalent to one another in epoxy compositions with regards to overcoming the problem of brittleness and low impact resistance. When such a substitution of equivalence is made, the resulting composition comprises nitrile butadiene rubber that does not contain a carboxyl group.
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, Mitsui teaches that it is preferable to post cure at a temperature of 100 to 250 ℃ ([0035]. Alternatively, 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, Mitsui teaches the coverlay film may be applied to a printed circuit board body (claims).
With regards to claims 14 and 15, Mitsui teaches the rubber component comprises (5) an ethylene / acrylic rubber and (6) a nitrile butadiene rubber in a weight ratio of 90/10-20/80 (See abstract).
With regards to claim 16, Mitsui describes that an epoxy resin having a number-average molecular weight of 380 to 1000 is used (1). These epoxy resins contain 2 epoxy groups in the 1 molecules, and the epoxy equivalent is within the range of the 100-500g/eq (see examples).
With regards to claim 17, the claimed relative amounts of components is disclosed in Mitsui (see Tables).
Response to Arguments
Applicant's arguments filed 3/3/2026 have been fully considered but they are not persuasive.
Response to § 112 Rejection
With regards to the rejection of claim 9 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite, said rejection is moot since claim 9 has been cancelled.
Response to § 103 Rejections
With regards to the rejection of claims 1, 3-8, 11, 12, and 14-18 under 35 U.S.C. § 103 as being unpatentable over JP2003-277711A (herein referred to as Mitsui) in view of Badiger et al (US 2017/0355849, "Badiger"), applicant argues Mitsui does not disclose or suggest the use of non-carboxylated (non-COOH) NBR at all. Said argument is noted but is not persuasive as Badiger was relied upon to teach the use of non-carboxylated (non-COOH) NBR. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues there is no motivation to combine Badiger with Mitsui. Specifically, the Office took the position t it would have been obvious to substitute the COOH-NBR of Mitsui with non-COOH NBR, as they are functional equivalents. Applicant counters, however, that, one of ordinary skill in the art would not have been motivated to replace the COOH-NBR of Mitsui with non-COOH NBR taught by Badiger. Specifically, applicant argues the technical field of Badiger is different from the claimed invention and Mitsui because Badiger relates to an epoxy novolac composite in which a cardanol-based bio-derived plasticizer is added to an epoxy novolac resin to improve brittleness and has no relevance to coverlay films, adhesive compositions, or flexible printed circuit boards (FPCBs). Said argument is not persuasive as the examiner maintains the position the two references are in the same field of endeavor-epoxy compositions containing nitrile butadiene rubber.
Furthermore, applicant argues the mention of CTBN, ATBN, and ETBN as "tougheners, flexibilizers" in paragraph [0004] of Badiger is merely a general description for improving the toughness of epoxy resins that not provide any teaching regarding the inherent, required properties of a coverlay adhesive (such as adhesiveness, bleed-out resistance, heat resistance, etc.). Said argument is noted but is not persuasive as it is unclear why a description for improving epoxy resins in general would not be applicable to the epoxy adhesive composition of Badiger.
Applicant further agues the motivation or replacing COOH-NBR with non-COOH NBR in the coverlay adhesive composition of Mitsui is not suggested by Badiger as Badiger does not provide any reason or incentive to substitute the essential COOH-NBR of Mitsui with the non-COOH NBR mentioned in Badiger. The examiner respectfully disagrees; the equivalence disclosed in Badiger provides a motivation for making the proposed modification. Specifically, the courts have held that an art recognized equivalence for the same purpose may be substituted and that an express suggestion to substitute the equivalent component for another is not necessary to render such substitution obvious (MPEP 2144.06).
Applicant further argues relevant law holds that if a proposed modification would render a prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). Said argument is noted but is not persuasive as there is no evidence of record supporting the conclusion the proposed modification would render the invention of Mitsui unsatisfactory for its intended purpose. Applicant is reminded that counsel’s argument cannot take the place of evidence.
Applicant further argues the claimed coverlay film configures the inorganic filler in the adhesive composition to include three components-aluminum hydroxide (ATH), magnesium oxide (MgO), and silica dioxide (SiO2)-and specifies their weight ratio to 40-60 : 30-20 : 30-20. Applicant argues this configuration is not obvious over the cited references, either alone or in combination. The examiner respectfully disagrees for the reasons set forth above.
With respect to the rejection based upon the teaching of Wu, Applicant argues Wu relates to a technical fields which is essentially different from the properties required for a coverlay film for PCBs. The examiner respectfully disagrees and maintains that Wu is in the same field of endeavor as Mitsui as both are related to epoxy-based adhesive compositions containing metal oxides fillers. Applicant further argues both Mitsui and Wu merely list inorganic fillers individually and do not provide any specific teaching as to whether the three components should be used in combination, nor do they disclose any particular mixing ratio. Said argument is noted but is not persuasive as the courts have held it is prima facie obvious to combine two compositions 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 (MPEP 2144.06). Applicant disagrees with the examiner’s assertion that combining two or more known components in various proportions would have been obvious. Specifically, applicant argues the claimed composition of the three-component filler is not a simple optimization of ranges; rather, it is based on a deliberate design intended to achieve a balanced manifestation of distinct functions: flame retardancy from aluminum hydroxide, improved thermal conductivity and adhesiveness from magnesium oxide, and mechanical strength and fluidity control from silicon dioxide. Said argument is noted but is not persuasive as counsel’s arguments cannot take the place of evidence. Applicant has not provided sufficient evidence supporting the conclusion that claimed ratio exhibits an unexpected combination of distinct functions: flame retardancy, improved thermal conductivity and adhesiveness, and mechanical strength. The examiner further notes said properties are not claimed and have not been shown to be inherent to the claimed invention.
Applicant further argues the claimed coverlay film has a "surface protective film" additionally disposed on the opposite surface of the base substrate, a configuration that is not taught or suggested
by the prior art. Said argument is noted but is not persuasive for the reasons noted in the rejection above. Specifically, 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, the use of said protection film fails to render the claimed invention patentably distinct over the cited prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-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, 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
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