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
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 9/21/26 has been entered.
Response to Amendment
2. Applicant’s amendment and accompanying remarks 9/21/26 have been fully considered and entered. Claims 1, 3-8, 10-12,13(withdrawn) and 14 have been amended as requested. Applicants’ amendments are not found persuasive to overcome the obviousness type rejections made over the combination of EP 2913354 A1 in view of JP 2005307371 A for reasons set forth herein below.
Response to Arguments
3. Applicants amended claims 1, 3-8 and 10-12 to recite a reinforcing material and deleted the limitation of a non-woven fabric. Applicants’ assert that “there exists no isotropic reinforcing material with extremely low dielectric loss". In response, the Examiner is of the position that absent any further distinguishing limitations the non-woven taught by the combination of prior art meets the limitation of a “reinforcing material”. Regarding Applicants’ argument that “there exists no isotropic reinforcing material with extremely low dielectric loss", Applicants’ are not claiming an isotropic reinforcing material. As such, the Examiner is of the position that Applicant’s arguments are not commensurate in scope with the claimed subject matter. The Examiner maintains that the combination of cited prior art renders the rejected claims obvious for reasons set forth above and for reasons set forth in previous Office Actions.
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 1, 3,7-8, 10-12, 14-15 and 17-18 stand rejected under 35 U.S.C. 103 as being unpatentable over EP 2913354 A1 in view of JP 2005307371 A.
The published EP patent application teach forming a low dielectric article comprising a substrate (non-woven) made of glass fibers of a low Dk that is coated with a resin (cyanate resin) (title, abstract, paragraphs 0006, 0007, 0018,0021,0022). The Examiner is of the position that absent any further distinguishing limitations, a non-woven fabric meets the limitation of the claimed “reinforcing material”. With regard to the claimed amount of glass fibers, it appears that the entire substrate is made solely from the glass fibers having a Dk value. With regard to the weight of the resin binder, the published EP application teach using the resin in amount ranging from 20-50 wt. % (paragraph 0023-0024). As such, the Examiner is of the position that the binder amount limitations are met. The published EP application defines low Dk as glass fabrics having a value between 4.4-4.6 (paragraph 0006). The Examiner is of the position that though the claim does not define what constitutes a low Dk value, the disclosure of published EP application meets the limitation of “low dielectric”. With regard to claims 3 and 15, the published EP application also teach using a polytetrafluoroethylene resin (paragraph 0021). With regard to claim 7, the published EP application also teach a copolymer of polybutadiene and styrene can be used as the resin (paragraph 0021). With regard to claim 8, the published EP application does not teach the claimed solids content of the polyolefin copolymer. The Examiner is of the position that a person of ordinary skill in the art would recognize that the copolymer of polybutadiene and styrene can be formulated with a suitable solids content a function of desired resin/coating properties. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA). The published EP application teach using E glass or NE glass fibers (paragraphs 0025-0026). With regard to claim 12, the published EP application teach a mass per unit area ranging from 100-175 gsm (paragraph 0024). With regard to claims 1, 14, 17 and 18, the published EP application teach first pre-treating the non-woven with a resin followed by a second glue tipping process that applies resin to the glass fabric; wherein said dipped fabric is further joined to a copper layer and cured using heat and pressure (example 1, paragraphs 0060- 0064). The Examiner is of the position that this process meets the impregnation/molding/drying steps since the fibers of the non-woven are first pre-treated with resin, followed by a resin dipping step and further subjected to heat and pressure that would cause the resin to penetrate the non-woven substrate.
The published EP application does not teach the limitations pertaining to the method of making the non-woven and the size, length and/or amount of glass fibers.
The published JP application teach forming a non-woven fabric used for prepregs in circuit board applications comprising a non-woven fabric of glass fibers (E or NE) and binder (title, abstract and paragraph 4, best mode of invention and mode of invention). Said fibers have a diameter ranging from 4-20 microns and a length of 1mm-25mm (paragraph 3). The amount of fibers ranges from 5-95 wt. % (paragraph 1). The binder amount is 3% by mass to 25% by mass (see description). Said non-woven is made using a wet method. Such methods typically include mixing fibers and binder, molding and drying to form a non-woven (see examples 1 and 2). Further, said wet non-woven making processes is a known paper-making method (see examples and description). Such a method would also result in the fibers having a uniform distribution as claimed. Based on these teachings, the Examiner maintains that the combination of cited prior art renders obvious the low dielectric fiber non-woven, the method of making the non-woven, the claimed content of dielectric fibers and amount of claimed binder. The Examiner is of the position that a person of ordinary skill in the art would recognize that the non-woven of Shengyi Technologies can be made using the wet method disclosed in the published JP application.
With regard to the limitations pertaining to the process of making the low dielectric non-woven recited in claim 1, the Examiner is of the position the claimed process constitutes product-by-process limitations. Absent evidence to the contrary, it is the Examiner's position that the article of the applied combination of prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the examples of the present invention are commensurate in scope with the claims and how the comparative examples are commensurate in scope with the applied prior art.
The Examiner is of the position that both references are considered analogous prior art since they are both concerned with forming similar non-woven fabrics using similar glass fibers and binder. The Examiner is of the position that a person of ordinary skill in the art would recognize that the glass fibers/binder used to form the non-woven fabric of the published EP application can be made into a non-woven via a wet method using similar amounts of binder and percentage of fibers having diameters and lengths of similar to those taught by the published JP application without undue experimentation. As such, the Examiner maintains that the claimed dielectric loss of the low dielectric loss non-woven fabric of less than 0.0015 (10 GHz) would be exhibited once the non-woven of the combination of prior art is made. Applicants are invited to evidence otherwise.
6. Claim(s) 4-6 and 16 stand rejected under 35 U.S.C. 103 as being unpatentable over EP 2913354 A1 in view of JP 2005307371 A as applied to claims 1 and 14 and further in view of EP 3549750 A1.
The combination of EP 2913354 A1 in view of JP 2005307371 A as applied to claims 1 and 14 is maintained as set forth above. Applicants have not presently any new arguments for which to consider.
The combination of the published EP application and the JP application fail to teach the claimed fluorine comprising resin emulsion.
The published EP application ‘750 teach forming a heat-resistant composite sheet comprising glass fibers and a fluorine containing resin (title and abstract). The published EP application ‘750 teach that the fluorine-containing resin is one or more of polytetrafluoroethylene (PTFE), perfluoro(alkoxy alkane) (PFA), perfluoroethylene-propylene copolymer (FEP), ethylene-tetrafluoroethylene copolymer (ETFE), and polyvinylidene fluoride (PVdF) (paragraph 10). It appears that the fluorine containing resin imparts heat resistance to the glass comprising fabric substrate. The published EP ‘750 application further teach adding silica filler and that the fluorine containing resin/emulsion has a solids content ranging from 40-60 % (paragraph 0036 and 0052). The published EP application ‘750 does not teach the claimed particle size limitation. The Examiner is of the position that a person of ordinary skill in the art would recognize that the fluorine containing resin emulsion composition with a solids content can be formulated to have a suitable particle size based on desired coating properties. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA)Therefore, motivated by the desire to form a non-woven glass fiber fabric having good heat resistant properties, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to form the glass non-woven fabric provided by the combination of EP 2913354 A1 in view of JP 2005307371 A with the specific fluorine comprising resin emulsion taught by the published EP ‘750 application.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
