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 .
Claim Objections
Claim 32 is objected to because of the following informalities:
Claim 32, line 7, “encapping” should be “and endcapping”.
Claim 32, line 9, “traizine” should be “triazine”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 13-17 and 20-34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13 recites “A dry film comprising a soluble polyimide resin, wherein the dry film has a loss tangent of less than 0.007 at 10 GHz.” Although the original filing provides support for a soluble polyimide resin comprising residues of a tetracarboxylic component, a diamine component, and an endcapping compound, wherein the resin has a loss tangent as claimed (see, e.g., paragraphs [0035], [0082], and [0085] of the originally filed specification, as well as original claim 7), there is no support for the broader description of any “soluble polyimide resin” having the claimed loss tangent, which encompasses resins that were not encompassed by the original description (e.g., soluble polyimide resins made without endcapping compounds). Dependent claims are rejected for the same reason.
Claim Rejections - 35 USC § 112
Claims 20-27 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 20 recites “endcapping compounds having one or more crossing groups.” The claim is indefinite because it is not clear what is meant or encompassed by “crossing groups.” The examiner initially believes this to be an inadvertent typographical error for “crosslinking groups;” however, dependent claim 24 further states “the one or more endcapping compounds comprise one or more crosslinking groups”, which raises the questions of whether “crossing groups” is not a typographical error but rather is a broader indefinite term that claim 24 further limits, or whether it is a typographical error that claim 24 fails to further limit.
Claim Rejections - 35 USC § 102
Claim(s) 13, 20-27, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bryant (US 6,048,959).
Regarding claims 13, 20, and 24-27:
Bryant discloses soluble aromatic thermoplastic copolyimides made from tetracarboxylic dianhydrides and diamines (abstract; 1:20+; 2:48+). The polyimide is endcapped, including those containing crosslinking groups such as vinylaniline (i.e., aminostyrene) (3:8+). Bryant teaches a tack-free dry film of the polymer (2:1+; 10:29+).
Bryant teaches the polyimide provides dielectric properties (15:48+). Although Bryant is silent with regard to the loss tangent at 10 GHz, the examiner submits its film inherently meets the claimed requirements because it otherwise comprises the same materials as presently claimed.
Regarding claims 21-22:
Bryant teaches aromatic dianhydrides and aromatic diamines (4:14+).
Regarding claim 23:
Bryant teaches monoanhydride components (3:8+).
Regarding claim 31:
Given that Bryant discloses the same materials as otherwise claimed, the examiner submits the film meets the claimed requirements.
Claim(s) 13, 20-27, and 31-32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haldeman et al. (US 2018/0037700).
Regarding claims 13, 20, and 24-27:
Haldeman discloses soluble polyimides having terminal crosslinkable groups [abstract; 0003; 0021-0022]. The polyimide is formed from tetracarboxylic dianhydrides and diamines [0041]. The terminal crosslinkable groups come from mono-functional monomers, including 4-(phenylethynyl)phthalic anhydride, p-aminostyrene, etc. [0057]. Haldeman teaches a dry film [0072].
Haldeman teaches the polyimide provides dielectric properties [0087]. Although Haldeman is silent with regard to the loss tangent at 10 GHz, the examiner submits its film inherently meets the claimed requirements because it otherwise comprises the same materials as presently claimed.
Regarding claims 21-22:
Haldeman discloses aromatic dianhydride and aromatic diamine [0021].
Regarding claim 23:
Haldeman teaches monoanhydride components [0057].
Regarding claim 31:
Given that Haldeman discloses the same materials as otherwise claimed, the examiner submits the film meets the claimed requirements.
Regarding claim 32:
Haldeman discloses: dianhydrides include BPDA, ODPA, etc. [0050-0051]; diamines include TFMB and APB-133 [0053-0054]; and endcapping compounds include 4AS, 4EA, etc. [0057].
Claim Rejections - 35 USC § 103
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haldeman et al. (US 2018/0037700) in view of Agilent Technologies Technical brochure (2015).
Regarding claim 30:
Haldeman teaches the Mn of the polymer is 10,000-50,000 g/mol [0047].
Haldeman is silent with regard to weight-average molecular weights (Mw).
One of ordinary skill in the art would recognize the two average molecular weight distribution types were intimately related. For example, the Agilent Technologies Technical brochure provides the technical definitions of Mw and Mn (p1-2). Furthermore, the reference notes that for all synthetic polydisperse polymers, Mn < Mw and the Polydispersity Index (PDI) = Mw / Mn (p2). The reference teaches the best controlled synthetic polymers have PDI = 1.02 to 1.10, whereas step polymerization reactions typically have values of around 2.0 and chain reactions have values between 1.5 and 20 (p2).
Therefore, although Haldeman is silent with regard to the Mw and PDI of its polymer, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the number-average molecular weights (Mn) of the polymer over the values disclosed by Haldeman and furthermore use conventional PDI values as known in the art, which would result in weight-average molecular weights (Mw) that overlap with the presently claimed ranges.
Claim(s) 14-15 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haldeman et al. (US 2018/0037700) in view of Aoude et al. (US 11,337,309).
Regarding claim 14-15:
Haldeman discloses soluble polyimides having terminal crosslinkable groups and dry films as previously explained.
Haldeman is silent with regard to additional additives as presently claimed.
Such combinations were known in the art to have utility. For example, Aoude discloses a laminate comprising a crosslinkable polymer, including polyimides, for use in printed wiring boards (abstract; 1:14+; 1:52+; 3:31+). The reference further discloses the use of crosslinkers in amounts of 10-30% by weight to provide further crosslinking characteristics (8:47-9:4). The crosslinkers comprise allyl, (meth)acrylate, or maleimide groups (8:48+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known additional components, including crosslinkers in amounts within the claimed range, to adjust the crosslinking properties desired for a given end use.
Regarding claim 16:
Although Haldeman discloses embodiments of polyimides having a crosslinking temperature of greater than 300°C [0022], the examiner submits the final products of the prior art meet the implied structural limitations of the present claim (i.e., a cured dry film). “[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.
Additionally, Haldeman teaches imidization can be performed thermally at 150-205°C, but further teaches, as an alternative, imidization can be performed chemically to permit use of terminal crosslinking agents that cure at less than the thermal imidization temperatures (i.e., less than 205°C) [0069-0071].
Regarding claim 28-29:
Haldeman is silent with regard to a functionalized silica particle.
Such compounds were known to have utility. Aoude discloses the further use of inorganic dielectric fillers that have been surface treated to introduce crosslinkable groups to be co-reacted with the polymer (7:50-8:46). The amount thereof is up to 80% by weight of the composition (8:42+). Silica is a preferred filler (8:8+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known additional components, including surface-functionalized silica in amounts falling within the presently claimed range, to adjust the dielectric properties desired for a given end use.
Claim(s) 17 and 33-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haldeman et al. (US 2018/0037700) in view of Aoude et al. (US 11,337,309) and Kawabata et al. (US 2018/0215874) as applied above, and further in view of Tsutsumi et al. (US 2007/0272124).
Regarding claim 17:
Haldeman in view of Aoude and Kawabata disclose a dry film as previously explained.
The references are silent with regard to a metal foil as claimed.
Such foils were known in the art. For example, Tsutsumi discloses a laminate comprising a polyimide and a metal layer [abstract; 0002; 0093-0099]. The reference teaches the metal layer has a thickness of 1-175 µm and a surface roughness Ra of not more than 0.1 µm and Rz of not more than 1.00 µm from the viewpoint of improved adhesion, wherein smaller values are more preferable [0104].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a metal layer having a thickness within the claimed range to provide a laminate as known in the art. Additionally, although Tsutsumi discloses surface roughness in terms of Ra and Rz rather than Sa as presently claimed, the reference nevertheless suggests very low surface roughness is preferred to provide improved adhesion. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide low surface roughness in terms of Ra and Rz, including smooth surfaces having Sa within the claimed range, to provide surfaces having improved adhesion as taught by Tsutsumi .
The examiner submits the prior art laminate that otherwise meets the claimed requirements also meets the claimed adhesion energy and peel strength requirements because the materials are otherwise the same as presently claimed.
Regarding claim 33:
Tsutsumi discloses surface treating the metal [0105].
Regarding claim 34:
Tsutsumi discloses copper, stainless steel, etc. [0095].
Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
Applicant argues Bryant does not disclose the claimed loss tangent (p9).
Although the reference is silent with regard to the property, the examiner submits the prior art film inherently meets the claimed requirements because it otherwise comprises the same materials as presently claimed.
Applicant argues Haldeman does not disclose the claimed loss tangent (p9).
Although the reference is silent with regard to the property, the examiner submits the prior art film inherently meets the claimed requirements because it otherwise comprises the same materials as presently claimed.
Applicant argues the secondary references Aoude, Kawabata, and Tsutsumi fail to cure the alleged deficiency in Haldeman (p10-13).
As noted above, the examiner considers the property to be inherently met by Haldeman’s disclosure of the same materials as presently claimed. Therefore, the additionally cited references do not need to disclose the claimed property.
Applicant argues “Haldeman does not disclose a soluble polyimide resin but teaches away from the soluble polyimide resin” (p12).
The examiner respectfully disagrees. At [0022], the reference teaches “the polyimide composition is soluble in organic solvents.” As noted by Applicant (p12), Haldeman discloses the use of solubilizing monomers, which would then result in solubility properties. The reference further teaches the solubility of the polymer can be varied as desired [0038].
In view of the above, the examiner maintains the rejections of record.
Conclusion
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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