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 .
DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and rejections have been maintained and repeated.
Claim Rejections - Double Patenting
Claim(s) 1-14 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US 11702539.
‘539 (claims 1-20) meets instant claims 1-14, because it discloses:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
PNG
media_image2.png
200
400
media_image2.png
Greyscale
PNG
media_image3.png
200
400
media_image3.png
Greyscale
PNG
media_image4.png
200
400
media_image4.png
Greyscale
PNG
media_image5.png
200
400
media_image5.png
Greyscale
. The disclosed wholly aromatic LC polyester would inherently be thermotropic for meeting the claimed structures. The disclosed DK, DF, and melt viscosity overlap with the claimed ranges. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. The disclosed compositions would be expected to feature the same deflection temperature, because ‘539 obviously satisfy all of the material and chemical limitations of the instant invention.
As to the new limitation of “carbon fiber” in claim 1, ‘539 (claim 10) discloses the use carbon fibers as the conductive filler out of 6 candidates. The laundry list case law may apply to meet the claims.
Claim(s) 1-14 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 6-25 of US 11715579.
‘579 (claims 6-25) meets instant claims 1-14, because it discloses:
PNG
media_image6.png
200
400
media_image6.png
Greyscale
PNG
media_image7.png
200
400
media_image7.png
Greyscale
PNG
media_image8.png
200
400
media_image8.png
Greyscale
.
The disclosed wholly aromatic LC polyester would inherently be thermotropic for meeting the claimed structures. The disclosed DK, DF, and melt viscosity overlap with the claimed ranges. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. The disclosed compositions would be expected to feature the same deflection temperature, because ‘579 obviously satisfy all of the material and chemical limitations of the instant invention. As to the new limitation of “carbon fiber” in claim 1, ‘579 (claim 13) discloses the use carbon fibers as the conductive filler out of 6 candidates. The laundry list case law may apply to meet the claims.
Claim Rejections - 35 USC § 103
Claim(s) 1-13, 15-17, and 20 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Yung et al. (20130106659) in view of Lee et al. (US 5508374).
As to claims 1-13, 15-17, and 20, Yung (claims, abs., Tables, 20-23, 37, 42-46, 53, 65-69, Ex.1, 8-9, 12) discloses a mold prepared from a composition comprising wholly aromatic and thermotropic 20-80 wt% (claim 1) of LC polymer (overlapping with the range of instant claim 4). The DK (claim 1) is greater than 4.4 (overlapping with the range of instant claim 1), and the Df (claim 19) is 0.0001 or 0.0055 (falling within the range of instant claim 1) measured at 2 GHz. The melting point (claim 1) is 250-440 °C (overlapping with the range of instant claim 2). The melt viscosity is 5-100 Pa-S (overlapping with the range of instant claim 1) measured at 350 °C at a shear rate of 1000 S-1 (claim 18) about 15 °C above the melting point of the LC copolymer. The deflection temperature (44) is 210 °C or 320 °C (falling within the range of instant claim 3) measured at 1.8 Mpa (68-69). The LC copolymer comprises 4-hydroxybenzoic acid, 17.5 mol% terephthalic acid, and 4,4’-biphenol, and 10 or more mol% (claim 27) overlapping with the range of instant claim 12) 2,6-hydroxynaphthoic acid. The composition comprises (claim 9, examples) Rutile TiO2 (exemplary loading of 15 wt% or 25 wt%, 87, falling within the range of instant claim 20) known to have a DK (1MHz) of around 100 (evidenced by Shinkosha website: https://www.shinkosha.com/english/product/epi_substrate/tio2/#:~:text=TiO2,Transmittance%20of%20Rutile%20(TiO2)), is used in the examples (Ex.12) as a filler to achieve the desired dielectric properties.
PNG
media_image9.png
1032
1089
media_image9.png
Greyscale
It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Yung is silent on the claimed carbon fiber.
In the same area of endeavor of producing molds comprising a copolymer having anisotropic melt phase, Lee (claims, abs., Tables, 1: 15-25, 2:40-68, 4:30-40, Ex. I) discloses adding carbon fiber as reinforcing fiber.
Therefore, as to claims 1-13, 15-17, and 20, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Yung and added carbon fiber as reinforcing fiber in view of Lee, because the resultant composition would yield improved reinforcement.
The references are silent on the claimed Dk at 1MHz of claim 15. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. Dk at 1MHz, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Claim(s) 14 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Yung et al. (20130106659) and Lee et al. (US 5508374) in view of Lee et al. (US 5508374 and further in view of Huspeni et al. (US 5492946).
Disclosure of Yung and Lee is adequately set forth in ¶3 and is incorporated herein by reference. Yung further discloses increase naphthenic moiety on the LC copolymer would improve the electrical properties such as by reducing the dissipation factor.
Yung and Lee is/are silent on the claimed ratio.
In the same area of endeavor of producing molds comprising a LC copolymer and TiO2, Huspeni (claims, abs., Tables, 1:40, 13:1-55, 17:15-16, 22:32) discloses a thermotropic LC copolymer of 4-hydroxybenzoic acid, 2,6-hydroxynaphthoic acid, mol% terephthalic acid, and hydroquinone, wherein the molar ratio of 2,6-hydroxynaphthoic acid to 4-hydroxybenzoic acid is 1:9 to 9:1:
PNG
media_image10.png
200
400
media_image10.png
Greyscale
, overlapping with the claimed ranges. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, as to claim 14, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Yung and further increase the mol% of 2,6-hydroxynaphthoic acid at a molar ratio of 2,6-hydroxynaphthoic acid to 4-hydroxybenzoic acid , e.g. about <9:1, in view of Huspeni, because the resultant composition would yield improved the electrical properties such as by reducing the dissipation factor.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The examiner disagrees with applicant’s attack the ODP rejections, because the disclosed ranges of DK And Df in ‘539 and ‘579, as acknowledged by the applicant, overlapping with the claimed ranges. It has been found that where claimed ranges overlap ranges disclosed by prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the ‘539 and ‘579 since they disclose all applicants' components, values and methods of making.
As to applicant’s attack on the inherency rationale (8:2), it is duly notified the claimed properties, such as Df as the applicant argue and except the DK at 1MHz of instant claim 15 is taught by Yung and has not been met by the inherency rationale.
The examiner disagrees with applicant’s argument (8:3) of lack of motivation. In the same area of endeavor of producing molds comprising a copolymer having anisotropic melt phase, Lee (claims, abs., Tables, 1: 15-25, 2:40-68, 4:30-40, Ex. I) discloses adding carbon fiber as reinforcing (motivation) fiber.
The examiner disagrees with applicant’s argument (9:1) that Yung teaches away for this application. Yung (41) does not warn the conductivity of carbon materials. On the contrary, Yung indicates carbon particles (not fiber, which may have different dielectric properties) can be applied as dielectric materials at a certain loading. Thus, Yung does not teach away from this application.
Therefore, as to claims 1-13, 15-17, and 20, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Yung and added carbon fiber as reinforcing fiber in view of Lee, because the resultant composition would yield improved reinforcement.
Therefore, as to claim 14, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Yung and further increase the mol% of 2,6-hydroxynaphthoic acid at a molar ratio of 2,6-hydroxynaphthoic acid to 4-hydroxybenzoic acid , e.g. about <9:1, in view of Huspeni, because the resultant composition would yield improved the electrical properties such as by reducing the dissipation factor.
Therefore, the previous restriction and 103 rejections have been maintained and repeated.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
Prosecution Insights