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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
Claim Objections
Claims 1, 7, 12 and 14 are objected to because of the following informalities: Claims recite “polytetrafluoroethylene (PTTE)”. It should be “polytetrafluoroethylene (PTFE)”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 6 and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kudoh et al. (US 2021/0130570).
Regarding claim 1, Kudoh discloses a thermal conductive sheet for mold process (paragraphs 0097-0100), i.e. a release film for a mold process, comprising sheet, i.e. base film, (10, fig. 1, paragraph 0029) and plurality of conductive fillers that are in the base film (fig. 1), the plurality of conductive fillers comprising external conductive fillers such as carbon powder i.e. electrically conductive filler and carbon black, or zinc oxide, i.e. electrically conductive filler, that are on one from among an upper surface and a lower surface of the base film such that the external conductive fillers provide roughness to the at least one from among the upper surface and the lower surface of the base film, wherein the conductive path is formed between the upper surface and the lower surface of the base film (fig. 1, paragraphs 0029-0030, 0039-0041, 0066, 0076, 0080, 0093). Given that Kudoh discloses a mold process (paragraphs 0097-0102) and release film as claimed in present claim, it is clear that the film of Kudoh would be attached to the mold and release, i.e. peeled off, from the mold. Further, it is noted that the mold process and the release film of Kudoh meet the claimed molding system.
Regarding claim 2, Kudoh discloses the molding system of claim 1, wherein at least a portion of the electrical external conductive fillers on the at least one from among the upper surface and the lower surface of the base film protrudes from the at least one from among the upper surface and the lower surface of the base film (fig. 1).
Regarding claim 3, Kudoh discloses the molding system of claim 1, wherein the plurality of conductive fillers further comprises internal conductive fillers such as carbon fibers or metal fiber, i.e. electrically conductive filler, that are inside the base film, wherein the external conductive fillers comprise first external conductive fillers on the upper surface of the base film and second external conductive fillers on the lower surface of the base film, and wherein the first external conductive fillers on the upper surface of the base film are connected to the second external conductive fillers on the lower surface of the base film through the internal conductive fillers that are inside the base film (fig. 1, paragraphs 0056, 0066, 0076, 0079).
Regarding claim 6, Kudoh discloses the molding system of claim 1, wherein the plurality of electrically conductive fillers comprise carbon fiber or metal (paragraphs 0029, 0079).
Regarding claim 8, Kudoh discloses the molding system of claim 1, wherein the base film has a thickness of 0.1 mm to 5 mm (100 microns to 5000 microns) (paragraph 0095).
Regarding claim 9, Kudoh discloses the molding system of claim 1, wherein given that Kudoh discloses the same electrically conductive fillers and the base film as claimed in present claim, it is clear that the surface resistance of the film of Kudoh would be the same as claimed in present claim.
Regarding claim 10, Kudoh discloses the molding system of claim 1, wherein a surface roughness of the release film is 10 microns or less (paragraph 0093).
Regarding claim 11, Kudoh discloses a thermal conductive sheet for mold process (paragraphs 0097-0100), i.e. a release film for a mold process, comprising sheet, i.e. base film, (10, fig. 1, paragraph 0029) and plurality of conductive fillers that are in the base film (fig. 1), the plurality of conductive fillers comprising external conductive fillers such as carbon powder i.e. electrically conductive filler and carbon black, or zinc oxide, i.e. electrically conductive filler, that are on one from among an upper surface and a lower surface of the base film such that the external conductive fillers provide roughness to the at least one from among the upper surface and the lower surface of the base film, wherein the conductive path is formed between the upper surface and the lower surface of the base film (fig. 1, paragraphs 0029-0030, 0039-0041, 0066, 0076, 0080, 0093), wherein the system further comprising a mold (paragraph 0102), a plurality of preliminary sheets, i.e. a molding resin, (paragraph 0113), wherein the film is attached to the mold and the roughness of any one from among the upper surface and the lower surface of the base film, due to the external electrically conductive filters, is transferred to a surface of the molding resin (paragraphs 0097-0115).
Regarding claim 12, Kudoh discloses a thermal conductive sheet for mold process (paragraphs 0097-0100), i.e. a release film for a mold process, comprising sheet, i.e. base film as a monolayer, (10, fig. 1, paragraph 0029) and plurality of conductive fillers such as carbon powder i.e. electrically conductive filler and carbon black, or zinc oxide, i.e. electrically conductive filler, (paragraphs 0066, 0080), that are in the base film (fig. 1), the plurality of electrically conductive fillers comprising internal electrically conductive fillers inside the base film (14, fig. 1, paragraphs 0076, 0079-0080), first external electrically conductive fillers on an upper surface of the base film (13y, 13X, 13A, 13B, fig. 1, paragraphs 0056, 0066) and second external electrically conductive fillers on a lower surface of the base film (13y, 13X, 13A, 13B, fig. 1, paragraphs 0056, 0066), wherein at least a portion of the first external electrically conductive fillers and at least portion of the second external electrically conductive fillers protrude from the upper surface and the lower surface of the base film respectively (fig. 1) and wherein the first external electrically conductive fillers on the upper surface are connected to the second external electrically conductive fillers on the lower surface through the internal electrically conductive fillers that are inside the base film (fig. 1). Given that Kudoh discloses a mold process (paragraphs 0097-0102) and release film as claimed in present claim, it is clear that the film of Kudoh would be attached to the mold and release, i.e. peel off, from the mold. Further, it is noted that the mold process and the release film of Kudoh meet the claimed molding system.
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2021/0130570).
Regarding claim 8, Kudoh discloses the molding system of claim 1, wherein the base film has a thickness of 0.1 mm to 5 mm (100 microns to 5000 microns) (paragraph 0095). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Claim(s) 4-5, 13 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2021/0130570) in view of Mitsuya et al. (US 2020/0022259).
Regarding claims 4 and 13, Kudoh discloses the molding system of claims 1 and 12, but fails to disclose electrically conductive fillers are hollow conductive filler having an empty inside.
Mitsuya discloses thermal conductive composition comprising hollow conductive fillers to obtain a low relative dielectric constant (paragraph 0030).
It would have been obvious to one of ordinary skill in the art to use hollow conductive fillers in the film of Kudoh to obtain a low relative dielectric constant.
Regarding claims 5 and 13, Kudoh discloses the molding system of claims 1 and 13, but is silent with respect to the plurality of conductive fillers have a shape having an empty inside due to a template being removed through an open hole of the shape.
Although Kudoh in view of Mitsuya does not disclose a shape having an empty inside due to a template being removed through an open hole of the shape, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kudoh in view of Mitsuya meets the requirements of the claimed release film with conductive hollow particles, Kudoh in view of Mitsuya clearly meets the requirements of the present claims.
Regarding claim 15, Kudoh in view of Mitsuya discloses the molding system of claim 13, wherein a surface roughness of the release film is 10 microns or less (paragraph 0093). Given that Kudoh in view of Mitsuya discloses the same conductive fillers and the base film as claimed in present claim, it is clear that the surface resistance of the film of Kudoh in view of Mitsuya would be the same as claimed in present claim.
Regarding claim 16, Kudoh discloses a molding system comprising the film of claim 13 (paragraphs 0097-0100), a mold to perform the mold process (paragraph 0102), a plurality of preliminary sheets, i.e. a molding resin, (paragraph 0113), wherein the first external electrically conductive fillers and the second external electrically conductive fillers provide roughness to the upper surface and the lower surface of the base film respectively, wherein an electrically conductive path is formed between the upper surface and the slower surface by the internal conductive fillers, wherein the film is attached to the mold (fig. 1). Kudoh in view of Mitsuya does not specifically disclose that the release film transfer the roughness of at least one from among the upper surface and the lower surface of the base film to a surface of the molding resin such as to prevent chip transparency and prevent electrostatic discharge defects though the conductive path.
Although Kudoh in view of Mitsuya does not disclose the release film transfer the roughness of at least one from among the upper surface and the lower surface of the base film to a surface of the molding resin such as to prevent chip transparency and prevent electrostatic discharge defects though the conductive path, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. ir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kudoh in view of Mitsuya meets the requirements of the claimed release film, Kudoh in view of Mitsuya clearly meets the requirements of the present claims.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2021/0130570) in view of Nanba et al. (US 2013/0157163).
Regarding claim 7, Kudoh discloses a molding system comprising the film of claim 1 wherein the Kudoh discloses polyester resin but fails to disclose PTFE resin.
Nanba discloses release film comprising plastic film containing equivalence and interchangeability of polyester resin and ETFE or PTFE resin (paragraph 0082).
Given that Nanba discloses equivalence and interchangeability of using PTFE resin as presently claimed with using polyester resin as disclosed by Kudoh, it wound have been obvious to one of ordinary skill in the art to use PTFE resin in the film of Kudoh as taught by Nanba to obtain end users requirements.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudoh et al. (US 2021/0130570) in view of Mitsuya et al. (US 2020/0022259) and further in view of Nanba et al. (US 2013/0157163).
Regarding claim 14, Kudoh in view of Mitsuya discloses the molding system of claim 13, wherein the plurality of conductive fillers comprise carbon powder and/or zinc oxide as discussed above. Kudoh discloses polyester resin but fails to disclose PTFE resin.
Nanba discloses release film comprising plastic film containing equivalence and interchangeability of polyester resin and ETFE or PTFE resin (paragraph 0082).
Given that Nanba discloses equivalence and interchangeability of using PTFE resin as presently claimed with using polyester resin as disclosed by Kudoh, it wound have been obvious to one of ordinary skill in the art to use PTFE resin in the film of Kudoh as taught by Nanba to obtain end users requirements.
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Applicant argues that Kudoh appears to be silent with respect to amended claims. However, it is noted that Kudoh does disclose present claims as explained above.
Applicant argues that Kudoh appears to describe that the thermally conductive sheet includes the oriented molding that includes the preliminary sheets while claim 11 recites a release film, a molding resin and a mold. However, it is noted that there is nothing in present claims and Kudoh reference which excludes using the preliminary sheets of Kudoh as a molding resin of present claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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