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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/12/2026 has been entered.
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) 1-27, 43 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, and 18-25: Ando et al. teach a platable polymer composition comprising a liquid crystal polymer and 5 parts by weight of a catalyst that is 0.05 wt% ruthenium and 0.05 wt% palladium on an aluminum silicate substrate [Examples; 0018-0019].
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 43: Ando et al. teach palladium [Examples]. While Ando et al. also teach ruthenium, claim 1 uses the open language comprising, which is open to the inclusion of additional compounds. The “noble metal catalyst” of claim 1 is limited to palladium in claim 43. However, claims 1, 20 and 43 are open to a second noble metal catalyst, which is ruthenium.
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.
Terminal Disclaimer
The terminal disclaimer filed on 5/12/20226 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 17/990782 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
The Applicant has alleged that the combination of references incorporates Kim’s high loading of mineral whiskers. This is incorrect. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kim is relied upon only for the liquid crystalline polymer and mica.
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.
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.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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