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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/17/25 has been entered.
Response to Amendment
2. Applicant’s amendment and accompanying remarks filed 12/17/25 have been fully considered and entered. Claim 1 has amended as requested. Claims 2 and 9 are canceled and claim 13 remains withdrawn. Applicant’s amendment to claim 1 is found sufficient to overcome the 112 2nd paragraph rejections set forth in Final Action dated 10/16/25. As such, this rejection is hereby withdrawn. With regard to the obviousness rejections of claims 1, 3-8, 10-12 and 14-18 made over the combination of EP 2913354 A1 in view of JP 2005307371 A, Applicant’s amendments are not found sufficient to overcome the combination of cited prior art and Applicant’s arguments are not found persuasive of patentability for reasons set forth herein below.
Response to Arguments
3. Applicants argue that the claimed low dielectric loss non-woven fabric and the low dielectric non-woven fabric cited primary reference of EP 2913354 A1 issued to Shengyi Technologies are distinctly different. Applicants assert that the claimed low dielectric loss non-woven fabric is a semi-finished product/raw material, whereas the bonding sheet of Shengyi is a final product utilizing a similar semi-finished product/raw material. Applicants assert that Shengyi does not disclose or teach the low dielectric loss non-woven fabric itself as presently claimed. Instead, Applicants submit that Shengyi uses a non-woven fabric selected from electronic-grade glass fabric, glass fiber nonwoven fabric, aramid and other organic fiber woven fabric, and more preferably is electronic-grade glass fiber merely as "reinforcing material" without detailing its structure, composition or dielectric loss Df. As such, Applicants submit that the subject matter presently is the foundational reinforcing material-a low dielectric loss non-woven fabric-and not the final bonding sheet product. Shengyi focuses on how to enhance the dielectric properties of the bonding sheet by applying a special pretreatment to the reinforcing material. In contrast, the present application is concerned with the initial manufacturing and improvement of the reinforcing material itself-specifically, the low dielectric loss non-woven fabric.
Applicants further argue that the present application is aimed at how to produce a novel non-woven fabric with inherently low dielectric loss through processes such as "mixing the inorganic fiber with the specific binder, impregnating the inorganic fiber with the specific binder" and "papermaking molding". Applicants point to the comparison results between comparative Examples 1-5 and Examples 7, 11, and 12 (see Tables 2-3) in the specification to evidence that that replacing the low dielectric loss non-woven fabric of the present application with other types of non-woven fabrics selected from the prior art (such as those with epoxy binder, acrylate binder, or melamine binder) tends to degrade the dielectric loss and peel strength performance of the obtained copper clad laminates. Applicants submit that such findings indicates that the low dielectric loss non-woven fabric of the present application plays a crucial role in enhancing the performance of copper clad laminates or high-frequency circuit substrates, achieving unexpected beneficial effects over the prior art.
Applicants also point to the comparison results between comparative Example 6 and Example 7 (see Tables 2-3) in the specification to evidence that when the weight percentage of the binder in the low dielectric loss non-woven fabric of the present application is increased beyond the range of 5%-40% specified in the amended claim 1, the dielectric loss and peel strength performance of the obtained copper clad laminate deteriorates. Applicants submit that such findings indicates that the content of the binder component in the low dielectric loss non-woven fabric of the present application also plays a crucial role in enhancing the performance of copper clad laminates or high-frequency circuit substrates. Applicants submit when the content of the binder does not meet the weight percentage range specified presently claimed, the performance of the copper clad laminates or high-frequency circuit substrates deteriorates. Applicants submit that such findings further demonstrates that the present application achieves unexpected beneficial effects over the prior art. These arguments are not found persuasive.
In response, it is respectfully pointed out that Applicants are not claiming a is “semi-finished product/raw material or a “foundational reinforcing material”. Rather, Applicants claim a low dielectric loss non-woven fabric. As such, the Examiner is of the position that Applicants arguments not commensurate in scope with the claimed subject matter.
With regard to Applicants arguments that the instant invention is aimed at how to produce a novel non-woven fabric with inherently low dielectric loss through processes such as "mixing the inorganic fiber with the specific binder, impregnating the inorganic fiber with the specific binder" and "papermaking molding", it is respectfully pointed out that Applicants are not claiming a method of making a non-woven fabric. Rather, Applicants claims are directed a product, a low dielectric loss non-woven fabric made by a process that includes mixing, impregnating, papermaking molding and drying. As previously set forth, 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.
The Examiner maintains that the cited prior art of EP 2913354 A1 issued to Shengyi Technologies meets the claimed structural and chemical limitations of the low dielectric loss non-woven, though produced by a different process. The published EP patent application teach forming a low dielectric article comprising a substrate (non-woven) made of glass fibers (E or NE glass fibers) of a low Dk that is coated with a resin (cyanate resin) (title, abstract, paragraphs 0006, 0007, 0018,0021,0022). The Examiner maintains that since the low dielectric article of cited prior art of EP 2913354 A1 issued to Shengyi Technologies teach using the claimed fiber type (E or NE glass fibers) and the claimed binder resin (cyanate resin), 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.
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 the comparative examples in the instant specification are not commensurate in scope with the applied prior art.
Applicants point to comparison data to evidence that the specific fiber and binder type are critical to the overall performance of the copper clad laminate. As set forth above, Shengyi teach forming the non-woven with the same fiber type as presently claimed. With regard to the amount of binder, the cited prior art of EP 2913354 A1 issued to Shengyi Technologies teach using the resin in amount ranging from 20-50 wt. % (paragraph 0023-0024). This range overlaps the claimed range of resin. With regard to the claimed amount of fiber, the Examiner maintains that prior art of EP 2913354 A1 issued to Shengyi Technologies teach that only inorganic E or NE glass fibers are used. As such, the Examiner maintains that the amount of glass fibers would inherently be met. However, the analogous secondary reference of JP 2005307371 A was further relied upon teach the claimed amount of fiber. The Examiner is of the position that Applicant’s comparison data does not evidence that the low dielectric article of cited prior art of EP 2913354 A1 issued to Shengyi Technologies alone or in combination with secondary reference of JP 2005307371, though produced by a different method, would not achieve the claimed dielectric loss property, exhibit other unexpected and desirable performance/beneficial features and/or would result in an inferior product with respect to the non-woven/laminate.
As previously set forth, the secondary reference of JP 2005307371 A was relied upon to evidence the size, length and/or amount of glass fibers as set forth below. Applicants have not presented any further arguments for which to consider regarding the cited reference of JP 2005307371 A alone or in combination with Shengyi. For these reasons the Examiner maintains the combination of cited art renders the rejected claims obvious.
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). 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/mixing limitations 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 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). Based on these teachings the Examiner is of the position that the combination of cited prior art renders obvious the low dielectric fiber non-woven, claimed content of dielectric fibers and amount of claimed binder.
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 used to form the non-woven fabric of the published EP application can be made with the percentage of fibers having diameters and lengths of similar to those taught by the published JP application without undue experimentation.
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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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789