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 .
DETAILED ACTION
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.
Claims 14-18 and 20-29 are rejected under 35 U.S.C. 103 as being unpatentable
over EP 3699234 A1 (Aug. 26, 2020, “Lee”) in view of EP 3,543,291 A1 (Sep. 25, 2019, “Wang”) and Machine translated JP 2017171731 A (Sep. 28, 2017, “Ebata”).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
RESPONSE TO ARGUMENTS
Applicant asserts that amended claims 14 and 25 further reciting “from about 1 wt.% to about 10 wt.% of a resin comprising polyphenylene oxide would overcome the rejection with the following points.
Lee teaches that the base resin is preferably 98 wt.% or more PPS, or more preferably 100 wt.% PPS.
Lee does not teach any example comprising a PPS alloy.
Lee teaches a PPO is one of many additional resins.
Lee further teaches that the base resin includes 95 wt.% PPS in [0020] and thus utilization of 5 wt.% of an additional resin (i.e. PPO) would have been obvious. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding the long list of the additional resins, a prior art reference’s teaching, however, can render a claim obvious even when as ingredient appears without emphasis in a longer list. See Merch & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). MPEP 2123 (“That the ‘813 [prior art] patent discloses a multitude of effective combinations does not render any specific formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art”); cf. Perricone v. Medicis Pharm. Corp., 432 F.2d 1368, 1376 (Fed. Cir. 2005) (holding that list of fourteen optional ingredients anticipated claim reciting one ingredient in list).
Applicant further asserts improved plating index by pointing to compositions E7 and E lacking PPO and compositions E9 and E10 comprising 5 wt.% PPO of Table 6.
The compositing E8 lacking PPO has the plating index of 0.60 (Avg) and 1.0 (Best) and the composition E9 comprising 5 wt.% of PPO has the plating index of 0.57 (Avg) and 0.9 (Best). Thus, the compositing E8 lacking PPO has a better plating index contrary to the assertion and applicant failed to show any unexpected result regarding the recited “from about 1 wt.% to about 10 wt.% of a resin comprising polyphenylene oxide”.
Regarding the composition E10 comprising a mixture of LDS1 (i.e., copper chrome oxide) and LDS2 (i.e., antimony doped tin oxide) the examiner indicated that such composition (i.e., claim 19) would be allowable in the last office action.
Regarding new claims 26-29, Lee further teaches that the base resin includes 95 wt.% PPS in [0020] and thus utilization of 5 wt.% of an additional resin (i.e. PPO) would have been obvious and applicant failed to show any unexpected result of compositions comprising from about 3 wt.% to about 5 wt.% of PPO.
Whether an applicant seeks to establish an unobvious difference to overcome an inherency finding or unexpectedly improved results to overcome an obviousness conclusion, the objective evidence an applicant provides must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing must be reviewed to see if the results occur over the entire claimed range. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035-36 (CCPA 1980); In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). See MPEP 716.02(d).
CLAIM OBJECTION
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
THIS ACTION IS MADE FINAL. 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 TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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