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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 12-16 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. Claims 12-16 are directed to a method of producing a flexible device but do not contain any active method steps, but only state “using”. See MPEP 2173.05(q).
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
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.
Claims 1-4, 6, 8-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al, JP2012241147.
Regarding claim 1, Yoshida teaches a resin composition for a flexible device comprising epoxy resin (A), phenoxy resin (B), curing agent (C), and flame retardant (D), ¶[0012]. The cured resin sheet has a glass transition temperature of 90°C or higher ¶[0053] and see claim 3. Yoshida also teaches the storage modulus of the cured sheet is preferably 1-5 GPa, which anticipates the claim, ¶[0054-0055].
Regarding claims 2-4, Yoshida teaches the epoxy resins are selected from those with bisphenol A or F structures or alicyclic epoxy resins ¶[0018]. Yoshida exemplifies epoxy resins with equivalent weights of 189 g/eq, 475 g/eq, and 170 g/eq ¶[0066].
Regarding claim 6, Yoshida teaches the composition preferably further comprises inorganic filler which is treated with a silane coupling agent, ¶[0047].
Regarding claims 8-11, Yoshida teaches the resin composition is made into an adhesive sheet for use on flexible printed circuit boards ¶¶[0001-0004, 0057]. The adhesive sheet is made by layering the adhesive composition on a release substrate, forming a two-layer structure, where the adhesive layer is 10-50 µm thick, ¶[0057], which reads on claims 10-11. The release substrate is a thin film material that can be peeled off the adhesive layer, such as polyethylene film, which reads on the flexible base material of claim 9. The adhesive sheet is prepared by applying the adhesive to one side of the release substrate with a roll coater and then heating it to semi-cure the adhesive, another release substrate is layered on top of the adhesive which is pressed under a heated roll, ¶[0059], this reads on the claimed laminating of claim 9. A coverlay film is made the same way using the adhesive composition, only it is laminated onto an electrically insulating film, ¶[0060].
Regarding claims 12-14, Yoshida teaches a method of preparing a flexible printed circuit board comprising using the adhesive composition in the form of a semi-cured adhesive sheet layer that is between the layers of the copper film which contains the printed circuit and a coverlay film made of the same resin composition, ¶¶[0060, 0064, 0082].
Regarding claims 15-16, Yoshida teaches the resin composition is used to form the coverlay film ¶¶[0076, 0082, 0083] which is pressed onto a copper foil which contains the circuit, and another coverlay film is attached over the circuit, ¶[0082] which reads on sealing a constituent of the flexible device of claims 15 and 16.
Regarding claims 17, Yoshida teaches a flexible device wherein the coverlay film made of the resin composition is bonded to a copper foil, which has the circuit etched into it, which is a flexible device, ¶¶[0082-0083]. The coverlay film reads on the claimed support base material because it is a layer comprising the adhesive sheet that supports the copper film.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa et al, WO2020196240.
Regarding claim 1, Hasegawa teaches an adhesive composition comprising a phenoxy resin (A), an epoxy resin (B), a photocationic initiator (C), and a silane coupling agent (D), ¶[0009].
Hasegawa does not explicitly state the glass transition temperatures of the compositions, however when the claimed composition and prior art composition are substantially the same, the properties of the composition are inherent. Hasegawa teaches the same epoxy and phenoxy resins as applicant in similar amounts ¶[0039]. See in particular the exemplified hydrogenated bisphenol A type epoxy resin and the phenoxy resin YX7200B35, ¶[0093], which applicant also uses. Hasegawa’s example 5 uses these resins in a 50/50 ratio, see table 1 page 25 of original document (submitted in applicant’s IDS) and applicant also exemplifies 50/50 ratios of epoxy to phenoxy resins. Therefore the skilled artisan is reasonably suggested that Hasegawa’s resins comprising substantially the same resins in the same ratios, must have a cured Tg above the claimed 60°C because applicant’s examples have this property.
Hasegawa’s example 5 also has a storage modulus of 957 MPa, see table 1 page 25 of original document, which is less than the claimed 5.0 GPa.
The phrase “for a flexible device” in the preamble is an intended use of the resin composition; Hasegawa teaches the resin composition as claimed but does not specify it is for a flexible device, because it is an intended use, it satisfies the claim.
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); see also MPEP 2111.02.
Regarding claims 2-5, Hasegawa teaches the exemplified epoxy resins include hydrogenated bisphenol A epoxy (BL1) which has 205 g/eq ¶[0093] and is alicyclic, and also aromatic epoxy resins such as those with bisphenol A or bisphenol F structures are recommended ¶[0032].
Regarding claims 6-7, Hasegawa teaches the compositions further comprise a silane coupling agent 8-glycidoxyoctyltrimethoxysilane ¶[0093], and a photocationic polymerization initiator for UV curing the composition, ¶¶[0009, 0039, 0093].
Regarding claim 8, Hasegawa teaches the composition forms an adhesive sheet for electronic devices, ¶[0001]. The sheet is used as an encapsulating sheet with an adhesive layer made of the sheet-like adhesive, which reads on the claimed film-like adhesive. The preamble has the phrase “for a flexible device” which is an intended use of the adhesive, as such, Hasegawa’s film-like adhesive satisfies the claim.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766