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 .
This communication is responsive to the claim set and Response to Restriction filed 11/28/2025. Claims 1-10 are pending. The elected claims 1-8 are under consideration. Claims 9-10 are withdrawn.
Claims 1-8 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election of Claims 1-8 in the reply filed on 11/28/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claim 4 is objected to because of the following informalities: lines 1-3 “a median particle size D50 of modified silica is 0.5 μm, a median particle size D50 of aluminum silicate is 4 μm to 6 μm, and a median particle size D50 of boron nitride is 40 μm to 50 μm” should read -- a median particle size D50 of the modified silica is 0.5 μm, a median particle size D50 of the aluminum silicate is 4 μ m to 6 μ m, and a median particle size D50 of the boron nitride is 40 μ m to 50 μm--.
Claim 5 is objected to because of the following informalities: lines 2-4, “a content of modified silica is 10 wt% to 20 wt%, a content of aluminum silicate is 20 wt% to 35 wt%, and a content of boron
nitride is 20 wt% to 35 wt%” should read -- a content of the modified silica is 10 wt% to 20 wt%, a content of the aluminum silicate is 20 wt% to 35 wt%, and a content of the boron nitride is 20 wt% to 35 wt%--.
Appropriate correction is required.
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.
Claim 8 is rejected under 35 U.S.C. 112(b) because the minimal wt.% of polytetrafluoroethylene
Resin plus the maximal wt.% of other components is over 100 wt.%; the minimal wt.% of fluorine-containing copolymer plus the maximal wt.% of other components is over 100 wt.%; the minimal wt.% of fillers plus the maximal wt.% of other components is over 100 wt.%; the minimal wt.% of impregnation aids plus the maximal wt.% of other components is over 100 wt.%.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Liao et al. (US2020/0165434 A1).
Regarding Claim 1, Liao teaches a fluorocarbon resin composition comprising a polytetrafluoroethylene (PTFE) resin, a fluorine-containing copolymer, inorganic powders and an impregnation additive. Attention is drawn to Table 1 wherein each of the Examples 1-5 contains PTFE, a fluorine-containing copolymer, SiO2 powders, and impregnation additive PEG4000 or PEG2000. Liao further teaches that the SiO2 can be spherical, irregular or a combination thereof ([0027]). Thus, the disclosure of Liao is specific enough to anticipate the instant claim 1.
Regarding Claim 2, Liao teaches the fluorine-containing copolymer, selected from the group consisting of one or a combination of more of polyfluoroalkoxy (PFA) and fluorinated ethylene propylene (FEP) (claim 1).
Regarding Claims 6-7, the impregnation additives of Examples 1-5 are PEG4000 or PEG2000.
Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Liao137 et al. (TW1646137B).
Regarding Claims 1-2, Liao137 teaches a fluorocarbon resin composition comprising a polytetrafluoroethylene (PTFE) resin, a fluorine-containing copolymer, inorganic powders and an impregnation additive (claim 1), wherein the inorganic powders can be spherical SiO2 (claim 2). Attention is drawn to Table 1 wherein each of the Examples 1-5 contains PTFE, tetrafluoroethylene-perfluoroalkoxy vinyl ether copolymer (PFA) or perfluoroethylene propylene copolymer (FEP), SiO2 powders, and impregnation additive PEG4000 or PEG2000.
Regarding Claims 6-7, Liao137 teaches that the impregnation aid is hydroxyethylcellulose, nitrocellulose, polymethylstyrene, polymethylmethacrylate or polyethylene glycol (claim 1).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. (US2020/0165434 A1).
Claim 1 of Liao teaches a fluorocarbon resin composition, on the basis of the total weight of the fluorocarbon resin composition being 100 wt %, comprising:
(1) a polytetrafluoroethylene (PTFE) resin, accounting for 30 to 70 wt % of the fluorocarbon resin composition;
(2) a fluorine-containing copolymer, accounting for 1 to 10 wt % of the solid content of the fluorocarbon resin composition;
(3) inorganic powders, accounting for 5 to 60 wt% of the solid content of the fluorocarbon resin composition; and
(4) an impregnation additive, accounting for 0.1 to 10 wt% of the solid content of the
fluorocarbon resin composition.
Thus, Liao teaches a fluorocarbon resin composition comprising the claimed components and the contents of components overlaps with the claimed contents, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Liao.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Liao137 et al. (TW1646137B).
Claim 1 of Liao teaches a fluorocarbon resin composition, on the basis of the total weight of the fluorocarbon resin composition being 100 wt %, comprising:
(1) a polytetrafluoroethylene (PTFE) resin, accounting for 30 to 70 wt %,
(2) a fluorine-containing copolymer, accounting for 1 to 10 wt %,
(3) inorganic powders, accounting for 5 to 60 wt%, and
(4) an impregnation additive, accounting for 3 to 10 wt% .
Thus, Liao teaches a fluorocarbon resin composition comprising the claimed components and the contents of components overlaps with the claimed contents, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Liao.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al. (CN 113861864 A).
Regarding Claims 1-2, Jia teaches a fluorine-based composite containing fluororesin, filler, coupling agent and surfactant (claim 1) wherein the fluororesin is at least one of polytetrafluoroethylene, polytetrafluoroethylene and perfluoropropyl perfluorovinyl ether copolymer, and fluorinated ethylene propylene copolymer (claim 2). And wherein the filler can be spherical inorganic fillers (claim 3). Therefore, Jia teaches a fluororesin composition comprising a polytetrafluoroethylene and a fluorine-containing copolymer, such as perfluoroethylene propylene copolymer, spherical inorganic fillers and an impregnation aid (surfactant).
Regarding Claim 3, Jia teaches the fillers include a mixture of SiO2, boron nitride and mullite ceramic powder (i.e. aluminum silicate). Jia further teaches the composite comprising coupling agent, such as, aminopropyltrimethoxysilane, methyltrimethoxysilane (claim 4), which modifies SiO2.
Regarding Claim 4, Jia teaches the particle size of fillers is 0.5 µm to 50 µm (claim 3), overlapping the claimed D50 of each filler. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Jia.
Regarding Claim 5, although Jia is silent on the wt% of the fillers, SiO2, boron nitride and aluminum silicate have different sizes, costs and thermal conductivity. One ordinary skilled artisan in the field would have been motivated to optimize the wt% of SiO2, boron nitride and aluminum silicate because blending fillers of different particle sizes enhances flowability and workability, balancing with costs and thermal conductivity. Therefore, the wt% of SiO2, boron nitride and aluminum silicate would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of instant application. As such, without showing unexpected results, the claimed wt% cannot be considered critical. Since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding Claim 6, Jia teaches the fluorine-based composite containing a surfactant, i. e. a wetting agent.
Regarding Claim 7, Jia teaches the surfactant is polyoxyethylene ether (claim 4), i.e., polyethylene glycol.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11903127 (‘127) in view of Liao137 et al. (TW1646137B).
Claim 7 of ‘127 claims that a fluoride-based resin prepreg comprising an inorganic filler and polytetrafluoroethylene, perfluoroalkoxy alkane and fluorinated ethylene propylene. Claim 7 of ‘127 further claims fluoride-based resin prepreg comprising a processing agent; wherein the processing agent is hydroxyethyl cellulose, mtrocellulose, polymethyl styrene, polymethyl methacrylate,
polyethylene glycol, or any combination thereof.
The difference between Claim 7 of ‘127 and the instant claims 1-2 and 6-7 is that Claim 7 of ‘127 is silent that the inorganic filler is spherical.
However, Liao137 teaches a fluorocarbon resin composition comprising a polytetrafluoroethylene (PTFE) resin, a fluorine-containing copolymer, inorganic powders and an impregnation additive (claim 1), wherein the inorganic powders can be spherical SiO2 (claim 2).
One ordinary skilled artisan would have been motivated before the effective filing date of the instant application to use the spherical SiO2 taught by Liao137 for the composition of Claim 7 of ‘127 because Liao137 teaches spherical SiO2 is a suitable filler for the composition comprising PTFE resin, a fluorine-containing copolymer, inorganic powders and an impregnation additive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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