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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19, 22-27 and 44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification does not support one or more palladium catalysts. The original specification discloses combinations of different noble metals in the catalyst [0046; claim 20]. However, it does not disclose an unlimited number of different palladium catalysts.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-19, 22-27 and 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ando et al. (JP 08-283952A) in view of Kim (2019/0256703).
Regarding claims 1-13, 15, 18, 19 and 22-25: Ando et al. teach a platable polymer composition comprising a liquid crystal polymer and 5 parts by weight of a catalyst component that is 0.05 wt% ruthenium and 0.05 wt% palladium on an aluminum silicate substrate [Examples; 0018-0019]. Palladium chloride is considered to be the claimed one or more noble metal catalysts, and ruthenium chloride hydrate is considered an additional catalyst.
Ando et al. fails to specify the liquid crystal polymer.
However, Kim teaches a wholly aromatic [0020-0026] liquid crystalline polymer comprising about 10 mol% to about 55 mol % of a napthenic dicarboxylic acid (NDA) and/or about 10 mol% to about 85 mol% naphthenic carboxylic acid (6-hydroxy-2-naphthoic acid) [0024-0025] and a melting temperature of about 300°C to about 380°C [0020]; and 10 parts by mass of mica [0011, 0031], which is good properties for electronic parts [0051; claim 30].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the liquid crystalline polymer comprising and mica in the amount as taught by Kim as the liquid crystal polymer of Ando et al. to provide a polymer composition with good properties for electronic parts.
Since the composition is the same as claimed, and comprises a polymer with the claimed melting temperature, it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 14: Kim teaches about 10 mol% to about 80 mol% of 4-hydroxybenzoic acid and about 1 to about 35 mol% of 6-hydroxy-2-napthoic acid [0028].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the wholly aromatic liquid crystalline polymer and 10 parts by mass of mica as taught by Kim as the liquid crystal polymer of Ando et al. to provide a polymer composition with good properties for electronic parts.
The ranges taught provide an overlapping molar ratio.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 16: Since mica is the same filler as disclosed in the instant specification, it will possess the claimed Mohs hardness.
The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 17: Kim teaches mica with an aspect ratio of 4 or more to achieve the desired combination of thermal conductivity and mechanical properties.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the mica of Kim in the composition of Ando et al. to achieve the desired combination of thermal conductivity and mechanical properties.
Regarding claims 26-27: The composition of Ando et al. is free of glass fibers and laser activatable additives [Examples].
Regarding claim 44: Ando et al. teach a composition free of mineral fibers [0010; Examples]. Ando et al. teach mineral fillers that are not mineral fibers.
Response to Arguments
Applicant's arguments filed 9/11/2026 have been fully considered but they are not persuasive.
The Applicant has alleged that the claim amendment excludes the ruthenium catalyst in Ando. This is incorrect. While Ando et al. also teach ruthenium, claim 1 uses the open language comprising, which is open to the inclusion of additional compounds. The “one or more noble metal catalyst(s)” of claim 1 is limited to palladium. However, claim 1 is open to a second catalyst (which is a separate component from the one or more noble metal catalyst(s), which is ruthenium.
The Applicant has alleged unexpected results of a low dissipation factor alongside a lower melt viscosity. This is not persuasive because the claims are not commensurate in scope with the data provided.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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