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 .
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 without traverse of Group I in the reply filed on 12 December 2025 is acknowledged.
Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 December 2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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, 2, 4, 5, 7-10, 12, 14, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2011/0260147).
Kim is directed to an organic/inorganic hybrid thin film passivation layer for use in an electronic device (paragraph 0002). The film comprises an organic polymer layer made of a photocurable polymer and an inorganic layer prepared from a composite of at least two inorganic materials (paragraph 0024). The photocurable polymer may be an acrylic polymer or thermally curable polyimide (paragraph 0027). The at least two inorganic materials include aluminum oxides and silicon oxides (paragraph 0035). The hybrid thin film may repeatedly include more than one pair of organic/inorganic layers (paragraph 0037).
In an embodiment set forth in Table 1, the organic layer may be an acrylate resin while the inorganic layer comprises silicon oxide (i.e., MS-31) and indium tin oxide (Table 1).
The recitation of a non-stoichiometric composition in claim 1 represents an intended use of the sealing material (to be used for sealing a compound having a non-stoichiometric composition) and the courts have held that a recitation with respect to the manner in which a claimed product is intended to be employed does not differentiate the claimed product from a prior art product satisfying the claimed structural limitations. See MPEP 2114.
Regarding claim 2, one of the organic layers of a hybrid thin film containing multiple organic/inorganic films reads on the first polymer layer while another organic layer reads on the second polymer layer of the claim. Additionally, the manner in which the second polymer layer is formed (i.e., by chemical vapor deposition) represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same 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, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the organic polymer layer of Kim appears to meet all the structural and physical limitations of the second polymer layer of the claims, the burden is on the applicant to conclusively demonstrate that the product resulting from the product-by-process limitation is patentably distinct from that of the prior art.
Regarding claims 7, 8, and 20, the limitations of these claims are taken to be met since they further limit the intended use of the material but not the material itself.
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 1, 2, 4-9, 12, 14, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanft et al. (US 2021/0183647).
Hanft is directed to an electronic device having an electronic circuit, a dielectric encapsulant over the circuit, a capping layer on the encapsulant, and a barrier layer over the capping layer (paragraph 0003). The dielectric encapsulant may be an aerogel (paragraph 0015). One of ordinary skill in the art would recognize that aerogel is typically formed from silica, i.e., a material reading on SiOx. The capping layer may be parylene (paragraph 0010) formed by vapor deposition (paragraph 0042). The barrier layer may comprise a layer of organic material, such as a fluoropolymer (paragraph 0043).
A barrier layer comprising a fluoropolymer layer corresponds to the polymer layer containing an organic solvent soluble polymer of the claims; the dielectric encapsulant formed of a silica aerogel corresponds to the inorganic oxide insulator layer of the claims; the parylene capping layer corresponds to the second polymer layer of claim 2.
While Hanft does not illustrate an embodiment having a barrier layer that comprises a layer of fluoropolymer, it would have been obvious to one of ordinary skill in the art to employ a material comprising a layer of fluoropolymer as the barrier layer since Hanft explicitly teaches that such a material may be used as the barrier layer.
The recitation of a non-stoichiometric composition in claim 1 represents an intended use of the sealing material (to be used for sealing a compound having a non-stoichiometric composition) and the courts have held that a recitation with respect to the manner in which a claimed product is intended to be employed does not differentiate the claimed product from a prior art product satisfying the claimed structural limitations. See MPEP 2114.
Regarding claims 7, 8, and 20, the limitations of these claims are taken to be met since they further limit the intended use of the material but not the material itself.
Claims 3, 13, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hanft et al. (US 2021/0183647) as applied to claim 2 above, and further in view of Bedinger et al. (US 2008/0185173).
Hanft suggests all the limitations of claims 3, 13, 15, and 17, as outlined above, except for a total thickness of the first polymer layer, second polymer layer, and inorganic oxide insulator of 100 nm or less.
Bedinger is directed to a protective coating for a circuit assembly (paragraph 0003). The coating comprises three protective dielectric layers (paragraph 0019). The first and second protective dielectric layers may have a thickness of 50 to 2000Å (paragraphs 0025, 0027) while the third has a thickness of about 100 to 1000Å (paragraph 0028). The second and/or third layers may be parylene layers (paragraphs 0027-0028).
It would have been obvious to one of ordinary skill in the art to construct the layers of the protective coating of Hanft at thicknesses as low as 50 or 100Å since the courts have held the selection of a known material (in this case, a 50 or 100Å thick component of a protective layer for an electronic circuit) based on its suitability for its intended use (in this case, protecting/insulating an electronic circuit) supported a prima facie obviousness determination. See MPEP 2144.07.
Additionally, while Hanft states that thicknesses below 1 mm for the parylene layer may lead to the formation of pinhole voids (see paragraph 0067), Bedinger teach that parylene dielectric layers having thicknesses of as low as 50 or 100Å are able to retard moisture from reaching layers underneath the parylene layer (paragraph 0028). As such, the prior art as a whole suggests to one of ordinary skill in the art that parylene layers can be formed at thicknesses as low as 50 or 100Å and still provide barrier properties required for protective coatings using for electronic circuits.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787