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 .
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive.
Applicant argued that JP '863 discloses a PTFE-based composite sheet that contains non- thermoplastic polyimide resin as filler in crushed form, NOT a standalone polyimide film. It was alleged that JP '863 teaches a "sheet-shaped polyimide resin" suitable for reducing friction on sliding surfaces. However, JP '863 (paragraphs [17], [30] to [32]) does not disclose a polyimide (PI) film.
Examiner maintains that PTFE-based composite sheet containing crushed, non-thermoplastic polyimide (PI) resin as a filler could also be considered part of the film and hence PI dispersed filler within a PTFE matrix, resulting in a "sheet-shaped sliding member" which is therefore a PTFE- PI composite film. As argued by the applicant the PI film is not as a standalone film or a surface layer as claimed, the claim limitation only requires the PI film it didn’t preclude that it can’t be a composite film.
Applicant argues that JP '863 aims to produce sliding members exhibiting "stable low friction", with coefficients of friction as low as 0.008-0.015 under lubricated conditions. The objective is to avoid seizing and to ensure smooth movement. In contrast, the claimed invention employs a polyimide film having friction characteristics that are, for example, similar to steel (e.g., Static Coefficient of Friction equal to 0.63 and Kinetic Coefficient of Friction equal to 0.48). JP '863's PTFE-centric composite is optimized for use in lubricated machine tool components, where oil films reduce friction and prevent wear. On the other hand, the claimed invention employs a dry, standalone polyimide film to protect metal components without lubricants.
Examiner maintains that as disclosed in JP’863 resulting in "sheet-shaped sliding member" is a PTFE- PI composite film so the coefficient of static friction will have properties of the PI filler therefore adding PI as a filler to PTFE generally increases the coefficient of friction slightly compared to pure PTFE.
Also, “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber. 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); Inre Danlv. 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[Apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v.Bausch & Lomb Inc.. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsukasa (US 20220262650) in view of JP3946863 hereinafter JP’863 translation attached further in view of WO 2017081883 hereinafter WO’883.
Regarding Claim 1,Nakatsukasa molding apparatus comprising: a mold having a first mold member and a second mold member configured to be movable towards the first mold member along a first direction (Figure 6, [0040], [0046], [0047], first mold member-100 , second mold member-200; Figure 6 showing that second mold member has gap adjusting mechanism-311 which can move to adjust the gap-G in vertical/first direction, ), the first and second mold members cooperating in use to form a molding cavity for encapsulating an electronic component (Figure 1, 6, [0035], [0044], chip-21 encapsulated in resin-20 is between lower die cavity block-200a and the upper die cavity block-100a), a wedge structure having a first wedge member attached to the second mold member and a second wedge member configured to be in contact with the first wedge member and movable in a second direction perpendicular to the first direction to adjust contacting portions between a first contacting surface of the first wedge member and a second contacting surface of the second wedge member (Figure 6, [0047], first wedge-301b and second wedge 301a are in contact, first contacting surface is the lower surface of 301b and second contacting surface upper surface of 301a; [0048], both wedge 301b and 301 a move in the Y direction/second direction as shown in Figure 6, perpendicular to Z direction i.e. the first direction), thereby biasing the second mold member towards the first mold member to form the molding cavity ([0047], Figure 6 showing that second mold member has gap adjusting mechanism-311 which can move to adjust the gap-G in vertical/first direction). Nakatsukasa didn’t teach that wherein at least one of the first and second contacting surfaces includes a first protection film attached.
In the related field of endeavor pertaining to molding art, JP’863 discloses sliding surfaces are used with sheet shaped polyimide resin ([000110], [0011], translated)
It would have been obvious for one ordinary skilled in the art prior to applicant’s invention to combine the teaching of Nakatsukasa’s teaching with that of JP’863 coating the sliding surfaces with a polyimide resin for a better creep resistance which are useful for structural integrity for longer periods ([0017], translated).
Further re: amendment that the first protective film is replaceable and is operative to protect the first and second contacting surfaces and prevent the second wedge member from sliding along that second direction. The claim limitation is met as the sliding friction of the polyimide will have similar range which will prevent the wedge member to slide as the friction force is the force exerted by the surface will determine how the object moves/slides with relative motion between objects. It didn’t particularly state that is operative to protect the first and second contacting surfaces and prevent the second wedge member from sliding along that second direction. Though "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Further. Applicant disclosure states that encapsulation pressure is exerted on the second wedge member to avoid bleeding/oozing of encapsulant from the molding cavity, is an intended use of the apparatus which has no patentable weight as the purpose of the film is to prevent sliding where sliding would result in leaking because the cavity would open unexpectedly as also explained above.
The prior art Nakatsukasa discloses encapsulated resin-20 is adhered to sheet-12, and the pressure applied can be appropriately set ([0035]-[0037]) but didn’t disclose the how that can be controlled. In the related field of endeavor pertaining to the art WO’883 disloses a plunger which can used to control the resin injection pressure (Figures 6-7, page 8, 2nd para page 9, 6th para translated ); therefore combining the Nakatsukasa with WO’883 the structural limitation of the claim is met..
It would have been obvious for one ordinary skilled in the art prior to applicant’s invention to modify the teaching of controlled pressure of Nakatsuka’s with that of WO’883 teaching of a plunger for the which can be used to optimize the pressure applied to the resin sealing process.
Regarding Claim 2 Nakatsukasa discloses further comprising: a supporting base on which the wedge structure is disposed (Figure 6, [0051], supporting base-303), the second wedge member having a third contacting surface and the supporting base having a fourth contacting surface in contact with the third contacting surface (Figure 6; the lower surface of the second wedge member-301a is the third contacting surface and the top surface of the base-303 contacting 301a is the fourth contacting surface), wherein at least one of the third and fourth contacting surfaces includes a second protection film attached thereon (combining Nakatsukasa with JP’863 discloses sliding surfaces are used with sheet shaped polyimide resin ([0010], [0011], translated). Further the claim limitation didn’t specify that first protection film and the second protection film are different category). Further the combination as applied to claim 1 teaches the concept of wedges, replaceable protective PI films, and contacting surfaces. Since that is already established it would have been obvious to apply it to any additional wedges, contact surfaces, and films as third and fourthe contacting surfaces are described above.
Further re: amendment that the second protective film is replaceable and is operative to protect the third and fourth contacting surfaces and prevent the second wedge member from sliding along that second direction, Though "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Further. Applicant disclosure states that encapsulation pressure is exerted on the second wedge member to avoid bleeding/oozing of encapsulant from the molding cavity. The prior art Nakatsukasa discloses encapsulated resin-20 is adhered to sheet-12, and the pressure applied can be appropriately set ([0035]-[0037]). In the related field of endeavor pertaining to the art WO’883 disloses a plunger which can used to control the resin injection pressure (Figures 6-7, page 8, 2nd para page 9, 6th para translated ); therefore combining the above references with WO’883 the structural limitation of the claim is met; therefore the limitation of preventing oozing of the encapsulant form the cavity is intended use of the apparatus which has no patentable weight.
It would have been obvious for one ordinary skilled in the art prior to applicant’s invention to combine the teaching of Nakatsukasa’s//JP’863 teaching with that of WO’883 teaching of a plunger for the controlled pressure applied to the resin sealing process.
Regarding Claim 6, combining Nakatsukasa disclose that wherein the first protection film is attached to the second contacting surface of the second wedge member, and the second protection film is attached to the third contacting surface of the second wedge member (Figure 6, second contacting surface is the upper surface of second wedge member-301a and the lower surface of the second wedge member-301a is the third contacting surface).
. Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsukasa (US 20220262650) in view of JP3946863 hereinafter JP’863 translation attached further in view of WO 2017081883 hereinafter WO’883 as evident by Microlumen, November 2nd, 2011 attached herewith.
Regarding Claim 3 JP’863 discloses that sliding surfaces are used with sheet shaped polyimide resin ([0010], [0011], that has a coefficient of friction in a claim range of 0.5 as evident by Microlumen (Table 1)
Regarding Claim 4 , JP’863 discloses sliding surfaces are used with sheet shaped polyimide resin ([000110], [0011], wherein the protection film/polyimide thermal endurance is 400-degC therefore it is configured to withstand a temperature in a range in the claimed range as evident by Microlumen (Table 1).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsukasa (US 20220262650) in view of JP3946863 hereinafter JP’863 translation attached further in view of WO 2017081883 hereinafter WO’883.as applied to Claim 6 in view of KR 100820911 hereinafter KR’911, translation is attached.
Regarding Claim 7, Nakatsukasa/ JP’ 863 disclose that sliding surfaces are used with sheet shaped polyimide resin ([0010], [0011], ; further a mold having a first mold member and a second mold member and a wedge structure having a first wedge member attached to the second mold member and a second wedge member configured to be in contact with the first wedge member and movable in a second direction perpendicular to the first direction to adjust contacting portions between a first contacting surface of the first wedge member and a second contacting surface of the second wedge member and the contacting surfaces covered with a protecting film as claim ! (Figure 6, Nakatsukasa discloses the two wedge members with contacting surfaces; and JP’863 discloses the film as discussed in Claim 1) , the combining references didn’t disclose that a fixing mechanism configured for clipping two free ends of a sheet of protection film to be attached to the second and third contacting surfaces. . However, it’s known in the art that clipping mechanism is used to fix two ends of enclosed layer /sheet between two plates/surfaces , in that regard KR’911 discloses that clipper-70 is used to clip two ends of metal-60 between the outer surfaces of two plates upper-40 and lower-10 (Figure 5-6,page -2, translated). The metal -60 in between the two plates are equivalent to being disposed like the film and is similar to clipping two free ends of a sheet of protection film.
It would have been obvious for one ordinary skilled in the art to combine Nakatsukasa/ JP’ teaching with that of the clipper of KR’911 for the purpose of securely fixing the film/coating on the outer surfaces of the contacting layer.
Regarding Claim 8, Nakatsukasa/ JP’863/ KR’911 disclose in Claim 7 that two ends of the film are clipped; where the film is attached to the second and third contacting surfaces of the second wedge member. Further that sliding surfaces are used with sheet shaped polyimide resin ([0010], [0011],combining with Nakatsukasa, (Figure 6, second contacting surface is the upper surface of second wedge member-301a and the lower surface of the second wedge member-301a is the third contacting surface) the protection film is securely fixed between the second and third surface of the contacting surfaces. The combined reference above didn’t particularly disclose that the two ends with is in a folded shape ; However to make the two ends with a folded shape is within the scope of ordinary skilled in the art, as it didn’t require any unroutined experimentation, therefore the folded ends with create a space where the second mold member can be inserted is considered as combining prior art elements to known methods yield predictable results. A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007). SEE MPEP 2141.III
Regarding Claim 9, Nakatsukasa/ JP’863 disclose molding apparatus comprising: a mold having a first mold member and a second mold member and a wedge structure having a first wedge member attached to the second mold member and a second wedge member configured to be in contact with the first wedge member and movable in a second direction perpendicular to the first direction to adjust contacting portions between a first contacting surface of the first wedge member and a second contacting surface of the second wedge member and the contacting surfaces covered with a protecting film as claim 1(Figure 6, Nakatsukasa discloses the two wedge members with contacting surfaces; and JP’863 discloses the film as discussed in Claim 1) but didn’t disclose that a first clipping bar and a second clipping bar between which the two free ends of the sheet of protection film are disposed and at least one fixing component configured to pass through mounting holes on the first and second clipping bars so as to lock the two free ends of the sheet of protection film with the first and second clipping bars. However, it’s known in the art that clipping/fixing mechanism is used to fix two ends of enclosed layer /sheet between two plates/surfaces, in that regard KR’911 discloses that clipper-70 is used to clip two ends of metal-60 between the outer surfaces of two plates upper-40 and lower-10 (Figure 5-6,page -2, translated). The clipper-70 shows two clipping bars- in Figure 7, and screw/fixing component-50 in the groove/hole-41 and screw/fixing component-55 in the groove/hole-71 (page-2, 2nd para translated), this feature meets the claim limitation.
It would have been obvious for one ordinary skilled in the art to combine Nakatsukasa/ JP’863 teaching with that of the clipper of KR’911 for the purpose of positioning and aligning the film/coating on the outer surfaces of the contacting layer.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsukasa (US 20220262650) in view of JP3946863 hereinafter JP’863 translation attached further in view of WO 2017081883 hereinafter WO’883 and KR 100820911 hereinafter KR’911, translation is attached as applied to Claim 7 further in view of Wahl (US 1487189).
Regarding Claim 10, Nakatsukasa/ JP’863/ KR’911 disclose molding apparatus comprising: a mold having a first mold member and a second mold member and a wedge structure having a first wedge member attached to the second mold member and a second wedge member configured to be in contact with the first wedge member and movable in a second direction perpendicular to the first direction to adjust contacting portions between a first contacting surface of the first wedge member and a second contacting surface of the second wedge member and the contacting surfaces covered with a protecting film as claim 1(Figure 6, Nakatsukasa discloses the two wedge members with contacting surfaces; and JP’863 discloses the film as discussed in Claim 1) but didn’t disclose that a resilient mechanism that is installed on the protection film through the fixing mechanism to provide tension to the sheet of protection film attached to the second and third contacting surfaces. In the related field of endeavor pertaining to the art, Wahl discloses that clipper is attached to a spring tension device (Col 1line 27-34). Therefore, KR’911 discloses that the fixing mechanism is used to fix two ends of enclosed layer /sheet between two plates/surfaces (Figure 6, clipper-70), combining Wahl and KR’911 the claim limitation can be achieved.
It would have been obvious for one ordinary skilled in the art to combine Nakatsukasa/JP’863/KR’911 teaching with that of the tension device on the clipper of Wahlfor the purpose of positioning the film/coating on the outer surfaces of the contacting layer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5419864 (Col 4 line 28-30).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBJANI ROY whose telephone number is (571)272-8019. The examiner can normally be reached 9:30-5:30 pm.
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/DEBJANI ROY/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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