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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 6, 2026 has been entered.
Response to Amendment
Applicant’s amendment filed on April 6, 2026 has been entered. Claim 1 has been amended. Claims 4-13 have been added. As such, Claims 1-13 are currently pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 10, and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that a decomposition temperature and a glass transition temperature of the polyimide are more than a pressing temperature. The scope of this limitation is unclear, as the parameter of a pressing temperature is undefined. What is a pressing temperature? Claim 1 does not require that the product is pressed. The Specification indicates that “a pressing temperature” could be 280 degrees C. or more at paragraph [0023]. However, the value presented in paragraph [0023] is merely exemplary, and does not provide the claim limitation with a fixed and definite definition. As such, Claim 1 and its dependent claims are indefinite.
Claim Rejections - 35 USC § 103
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.
Claims 7-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2006/0292346 to Hoshino (“Hoshino”) in view of U.S. Patent Application Publication No. 2017/0129206 to Yoshida et al. (“Yoshida”).
With regard to Claim 7, Hoshino discloses a cushion material for hot pressing comprising a base material coated on both sides with a coating film. See, e.g., Abstract, Figures 1-4, entire document. Hoshino discloses that base material comprises a woven fabric made of glass fibers, paragraph [0040], wherein the texture of the glass cloth creates an irregular surface. Paragraph [0042]. Hoshino discloses that the glass cloth is coated with a polyimide resin varnish and is not impregnated with rubber. Paragraph [0051]. The base material coated with a coating film would inherently contain pores because of the interstitial nature of a woven fabric and the spacing between filaments and yarns, and because the coating is applied as a film via knife coating, paragraph [0051], which does not cause the resin to fully impregnate the woven fabric. Hoshino does not disclose that the polyimide resin penetrates into the pores of the woven fabric and pores between yarns of the woven fabric but does not close the pores completely. Yoshida is also related to a hot press cushioning material comprising a woven fabric of bulky glass yarn. See, e.g., Abstract, entire document. Yoshida teaches that a resin material used to impregnate the woven fabric need not completely fill the voids of the woven fabric in order to maintain a certain level of void properties. Paragraph [0017]. For example, Yoshida notes that the inclusion of voids allows for satisfactory cushioning properties and conformability. Paragraphs [0012], [0017], and [0019]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide partial – and not complete – penetration of the polyimide resin into the voids of the woven fabric disclosed by Hoshino in order to provide satisfactory cushioning properties and conformability to the hot press cushioning material, as shown to be well known in the art by Yoshida. With regard to the amount of polyimide resin adhered to the fiber surfaces being up to 13.2%, by weight, Hoshino provides examples wherein a 200 gsm woven fabric is coated with 35 gsm of coating, paragraph [0051], which is about 17.5% by weight. However, Hoshino also teaches that the application amount of coating can range broadly from 10 gsm to 40 gsm, paragraph [0039], which, when applied to the same exemplified fabric represents a range of about 5% to 20%, by weight. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. M.P.E.P. 2144.05(I). With regard to Claims 8 and 9, the combination of Hoshino with Yoshida does not disclose a porosity property, Fn, as determined by Formula (1). Nonetheless, it is reasonable to presume that the porosity parameters recited in Claims 8 and 9 are inherent to the cushion material disclosed by Hoshino, as combined with Yoshida. Support for the presumption is found because Hoshino teaches that the cushion material comprises a cushion layer comprising a woven fabric formed from texturized glass fibers and containing a polyimide layer, wherein the cushion layer contains pores due to the polyimide resin being provided as a coating, which are the structural features that are recited in Claim 7. Additionally, the cushion material of Hoshino is not limited to only the cushion layer. Hoshino discloses that the cushion material can further comprises additional layers, such as nonwoven fabrics and rubber layers, paragraphs [0046] and [0047], which would offer the entire composite with additional porosity features. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). Alternatively, Yoshida teaches that void properties of the woven fabric can easily be adjusted by selecting yarn count, weave density, and weaving method, as appropriate. Paragraph [0045]. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an Fn, as determined by Formula (1), of 0.20 or more under the conditions established by Claims 8 and 9, in the woven fabric of Hoshino as a simple matter of adjusting already known variables designed to fine tune the void properties, as shown to be known by Yoshida, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272 (CCPA 1980). With regard to Claim 12, Hoshino discloses the presence of a second coating film, Figure 3, which satisfies the structural limitations of a bonding layer made of a same polyimide resin.
Claims 1-6, 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino in view of Yoshida, and further in view of U.S. Patent No. 5,338,827 to Serafini et al. (“Serafini”).
With regard to Claims 1, 4, and 13, Hoshino discloses a cushion material for hot pressing comprising a base material coated on both sides with a coating film. See, e.g., Abstract, Figures 1-4, entire document. Hoshino discloses that base material comprises a woven fabric made of glass fibers, paragraph [0040], wherein the texture of the glass cloth creates an irregular surface. Paragraph [0042]. Hoshino discloses that the glass cloth is coated with a polyimide resin varnish and is not impregnated with rubber. Paragraph [0051]. The base material coated with a coating film would inherently contain pores because of the interstitial nature of a woven fabric and the spacing between filaments and yarns, and because the coating is applied as a film via knife coating, paragraph [0051], which does not cause the resin to fully impregnate the woven fabric. Hoshino does not disclose that the polyimide resin penetrates into the pores of the woven fabric and pores between yarns of the woven fabric but does not close the pores completely. Yoshida is also related to a hot press cushioning material comprising a woven fabric of bulky glass yarn. See, e.g., Abstract, entire document. Yoshida teaches that a resin material used to impregnate the woven fabric need not completely fill the voids of the woven fabric in order to maintain a certain level of void properties. Paragraph [0017]. For example, Yoshida notes that the inclusion of voids allows for satisfactory cushioning properties and conformability. Paragraphs [0012], [0017], and [0019]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide partial – and not complete – penetration of the polyimide resin into the voids of the woven fabric disclosed by Hoshino in order to provide satisfactory cushioning properties and conformability to the hot press cushioning material, as shown to be well known in the art by Yoshida. Hoshino discloses pressing at a temperature of about 250 degrees C. Paragraph [0055]. However, Hoshino does not disclose a decomposition temperature and a glass transition temperature that is greater than a pressing temperature. Nonetheless, using a polyimide material that decomposes at processing temperatures is an obvious modification to the person having ordinary skill in the art, motivated by the desire for the material to not decompose when making it for its intended purpose. As to the glass transition temperature, Hoshino teaches that the coating material should be heat-resistant. Paragraph [0008]. Serafini is also polyimide resins suitable for use in composite materials. See, e.g., Abstract, entire document. Serafini teaches that the glass transition temperature of polyimide resin is a key determinant in upper use temperatures. Column 1, lines 20-40. Serafini teaches that polyimide resins can be provided with a glass transition temperature greater than about 425 degrees C., and do not decompose at elevated temperatures, such as 370 degrees C. Column 7, lines 3-15. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the polyimide resin used in the coating varnish disclosed by Hoshino with a decomposition temperature and a glass transition temperature greater than the pressing temperature, such as a glass transition temperature greater than 280 degrees C., or greater than 400 degrees C., in order to provide improved stability at higher temperatures, as shown to be well known in the art by Serafini. With regard to Claims 2, 3, 5, and 6, the combination of Hoshino with Yoshida does not disclose a porosity property, Fn, as determined by Formula (1). Nonetheless, it is reasonable to presume that the porosity parameters recited in Claims 8 and 9 are inherent to the cushion material disclosed by Hoshino, as combined with Yoshida. Support for the presumption is found because Hoshino teaches that the cushion material comprises a cushion layer comprising a woven fabric formed from texturized glass fibers and containing a polyimide layer, wherein the cushion layer contains pores due to the polyimide resin being provided as a coating, which are the structural features that are recited in Claims 1 and 4. Additionally, the cushion material of Hoshino is not limited to only the cushion layer. Hoshino discloses that the cushion material can further comprises additional layers, such as nonwoven fabrics and rubber layers, paragraphs [0046] and [0047], which would offer the entire composite with additional porosity features. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). Alternatively, Yoshida teaches that void properties of the woven fabric can easily be adjusted by selecting yarn count, weave density, and weaving method, as appropriate. Paragraph [0045]. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an Fn, as determined by Formula (1), of 0.20 or more under the conditions established by Claims 2, 3, 5, and 6, in the woven fabric of Hoshino as a simple matter of adjusting already known variables designed to fine tune the void properties, as shown to be known by Yoshida, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272 (CCPA 1980). With regard to Claims 10 and 11, Hoshino discloses the presence of a second coating film, Figure 3, which satisfies the structural limitations of a bonding layer made of a same polyimide resin.
Response to Arguments
Applicant’s arguments with respect to Claims 1-6, 10, 11, and 13 have been considered but are moot because the new ground of rejection cites the new reference of Serafini for the matter specifically challenged in the argument.
Applicant's arguments with respect to Claims 7-9 and 12 have been fully considered but they are not persuasive.
Applicant argues that Hoshino fails to disclose the amount of polyimide resin being adhered to the woven fabric of 1.7% to 13.2% by weight. The Examiner disagrees. Although Hoshino provides examples wherein a 200 gsm woven fabric is coated with 35 gsm of coating, thus producing a coating amount of about 17.5% by weight, Hoshino also teaches that the application amount of coating can range outside of that example from 10 gsm to 40 gsm, paragraph [0039], which, when applied to the same exemplified fabric, represents a range of about 5% to 20%, by weight. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. M.P.E.P. 2144.05(I).
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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