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 .
Election/Restrictions
Applicant’s election without traverse of Group I; 1, 2, 5-10, 18, 19, 24, 29 and 30 in the reply filed on 11/10/2025 is acknowledged.
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.
Claims 1, 2, 5-9, 13, 18, 19, 24, 29, 30, 31 are rejected under 35 U.S.C. 103 as being unpatentable over Nukui et al (WO 2021199497 cited as US 20220145021) in view of Tachibana et al (US 20180305846).
Nukui is directed to glass direct roving and long glass fiber reinforced thermoplastic resin pellet. Nukui teaches a binder for purpose of improvement of adhesiveness between glass fiber and resin. The binder is equated with a surface treatment agent.
Nukui teaches the binder is a silane coupling agent [0037]-[0039]. Nukui teaches the attachment rate of the silane coupling agent with respect to the total amount of glass direct roving is in the range of 0.010 to 0.200% by mass wherein the attachment rate is determined is determined by extraction twice by methanol [0039]-[0040]. Nukui does not explicitly refer to the methanol extraction as total carbon extraction amount, however as it is a methanol extraction, Nukui’s method is similar method and measure of the amount silane coupling agent on the glass yarns and amount of 0.01-0.200% is equated with the total carbon after extraction.
With regard to the total carbon extraction amount of greater than 0 and less than 0.25% and the total carbon amount after methanol extraction of 0.01-0.38%, the measures of carbon extraction amounts and carbon retained on the fabric are dependent on the measurement method. As Nukui teaches the same structure of a glass fabric with a silane coupling agent and the amount of silane attached is 0.01 to 0.20 %, the amount of carbon after extraction would be reasonably in the claimed range of 0.01-0.38%. The carbon extraction amounts are equated with measures of the amount of silane on the glass fabric. The of binder and silane on the fabric is required for adhesiveness between the glass fiber and the resin and improves uniform dispersibility of the glass fiber in the resin [0037]. Therefore the amount of binder with silane is required to improve the adhesiveness is the amount of 0.01 to 0.20% per Nukui. As Nukui’s amount of methanol extraction represents the carbon amount of silane on the glass yarns and overlaps the claimed carbon amount of 0.01-0.38%, Nukui’s glass fiber with surface treatment is equated with the claimed glass fabric with surface treatment agent. Wherein Nukui teaches the same materials and structure and substantially the same amount of carbon (binder) on the glass fibers, it is reasonable to presume that the measurement and properties claimed of total carbon extraction amount and total carbon amount after extraction are inherent to Nukui. The measurement methods of Nukui and the claims are possibly different and a direct comparison cannot be made. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
It would have been obvious to one of ordinary skill in the art before the effective filing date to apply the claimed amount of surface treatment agent motivated to provide for adhesiveness between the glass fiber and the resin.
Nukui differs and does not teach the glass rovings are woven.
Tachibana is directed to a glass cloth, prepreg and printed wiring board. The glass cloth comprises a warp yarn and weft yarn woven together of glass filaments. Tachibana teaches the woven glass cloth provides for improved drillability for the circuit board due to the SiO2 composition [0011]. Tachibana teaches silane coupling agent having an unsaturated double bond group (ABST).
It would have been obvious to one of ordinary skill in the art before the effective filing date to weave the glass yarns into a woven fabric motivated to produce a prepreg for a circuit board with improved drillability.
As to claim 2, Nukui teaches the glass composition has SiO2 in amounts of 52-56% or high modulus with SiO2 in range of 60-70% [0025] and therefore Nukui differs and does not teach the claimed range of 95-100%.
Tachibana is directed to a glass cloth, prepreg and printed wiring board. The glass cloth comprises a warp yarn and weft yarn woven together of glass filaments with the SiO2 in the composition thereof of 98 to 100% by mass and the glass yarn is treated with a silane coupling agent having a unsaturated double bond group (ABST).
Tachibana teaches blending the SiO2 in the glass composition to almost 100% in attempt to reduce permittivity and dielectric tangent [0009]. When the SiO2 is increased to almost 100%, hole drillability by a mechanical drill used for low permittivity substrate may be remarkable deteriorated [0009]. In order to solve this problem, a glass cloth comprising a warp yarn and a weft yarn woven together, the warp yarn and the weft yarn each being a glass yarn comprising multiple glass filaments, wherein
one of the warp yarn and the weft yarn is a glass yarn comprising glass filaments each having an amount of SiO2 in a composition thereof of 98 to 100% by mass [0038], the other of the warp yarn and the weft yarn is a glass yarn comprising glass filaments each having an amount of SiO2 in a composition thereof of 45 to 60% by mass and an amount of B2O3 in a composition thereof of 15 to 30% by mass [0037]-[0039].
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a high silica glass composition motivated to improve the drillability of the printed circuit board.
As to claim 5, Nukui teaches a binder, equated with surface treatment agent, of a silane compound such as those listed in [0038]. Examples of the silane coupling agent include aminosilanes (such as γ-aminopropyltriethoxysilane, N-β-(aminoethyl)-γ-aminopropyltrimethoxysilane, N-β-(aminoethyl)-N′-β-(aminoethyl)-γ-aminopropyltrimethoxysilane, and γ-anilinopropyltrimethoxysilane), chlorosilanes (such as γ-chloropropyltrimethoxysilane), epoxysilanes (such as γ-glycidoxypropyltrimethoxysilane, β-(3,4-epoxycyclohexyl)ethyltrimethoxysilane), mercaptosilanes (such as γ-mercaptotrimethoxysilane), vinylsilanes (such as vinyltrimethoxysilane and N-β-(N-vinylbenzylaminoethyl)-γ-aminopropyltrimethoxysilane), acrylsilanes (such as γ methacryloxypropyltrimethoxysilane), cationic silanes (such as N-(vinylbenzyl)-2-aminoethyl-3-aminopropyltrimethoxysilane hydrochloride and N-phenyl-3-aminopropyltrimethoxysilane hydrochloride), and methacrylsilanes (such as 3-methacryloxypropylmethyldimethoxysilane, 3-methacryloxypropyltrimethoxysilane, 3-methacryloxypropylmethyldiethoxysilane, and 3-methacryloxypropyltriethoxysilane). As the silane coupling agent, these compounds can be used singly or in combination of two or more [0038].
Of the above mentioned silane coupling agents, Nukui teaches vinylsilanes (such as vinyltrimethoxysilane and N-β-(N-vinylbenzylaminoethyl)-γ-aminopropyltrimethoxysilane), acrylsilanes (such as γ methacryloxypropyltrimethoxysilane), and 3-methacryloxypropyltrimethoxysilane. The disclosed silanes meet formula (1) as noted in Applicant’s specification [0079] which describes the silanes as vinyltrimethoxysilane, 3-methacryloxypropyltrimethoxysilane, acryloxypropyltrimethoxysilane, 3-acryloxypropyltrimethoxysilane, 5-hexenyltrimethoxysilane, or mixtures thereof can be used.
As to claim 6 and 7, Nukui teaches the claimed silane coupling agents as disclosed in Applicant’s specification and therefore X is an organic functional group that does not form a salt with an ionic compound and does not contain an amine or an ammonium cation. The X groups have unsaturated double bonds and amino groups and therefore do not contain amine or ammonium cation.
As to claim 8, Nukui teaches a methacryloxypropyltrimethoxysilane which has a methacryloxy group.
As to claims 9, 19 and 24, Nukui teaches the methanol extraction, which is equated with total carbon extraction, is in the range of 0.010 to 0.200% by mass which is in the claimed range of less than 0.2%.
As to claims 13 and 18, Nukui and Tachibana are is silent with regard to bulk dissipation factor. As the combination of Nukui and Tachibana teach the same materials and structure as claimed it is reasonable to presume that the property of bulk dissipation factor is inherent. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
As to claims 29 and 31, Nukui differs and does not teach a printed circuit board substrate.
Tachibana teaches a silane couple agent treated glass substrate that is woven for use in a printed circuit board. Tachibana teaches the silane treated glass filaments with high SiO2 composition provide for improved drillability.
It would have been obvious to one of ordinary skill in the art before the effective filing date to produce a printed circuit board from the glass cloth motivated to produce a printed circuit board with improved drillability.
As to claim 30, Nukui teaches the silane binder treated glass filaments are used as reinforcement in a resin. Nukui differs and teaches a thermoplastic resin.
Tachibana teaches the prepreg is in a matrix resin which can be thermosetting or thermoplastic [0203]-[0204].
It would have been obvious to one of ordinary skill in the art before the effective filing date to impregnate the glass cloth in a matrix thermosetting resin motivated to produce a printed circuit board.
Response to Arguments
Applicant's amendments and arguments filed 6/29/2026 have been fully considered but they are not persuasive. Applicant amended claim 1 to recite “the glass fabric after methanol extraction has a total carbon amount of 0.01% to 0.380%”. Applicant argues that Nukui’s “silane coupling agent attachment rate” is fundamentally different from the present invention’s “total carbon extraction amount.”
Per the amendment and the arguments, the office action is revised.
The 35 USC 112(b) rejection is withdrawn in view of the amendments.
(A) Applicant argues the methanol extraction is not the same measure as Nukui. As the claimed measures of total carbon amount and the total carbon after extraction are based on the method of measuring the total carbon amounts, the method of measure of Nukui cannot be equated. As Nukui is measuring the amount of silane that was on the glass fiber and Applicant’s claim is measuring the glass fabric after methanol extraction has a total carbon amount of 0.01% to 0.38% these measures are reasonable the same measure of the amount of silane or surface treatment agent on the surface of the glass fiber. When there are two different measurement techniques to determine a property, however the structure and materials are the same it is reasonable to presume that the prior art inherently has the same property of total carbon extraction and total carbon amount after extraction.
(B) Applicant argues the rejection including Tachibana US ‘846 and states that Nukui control only the silane attachment rate for adhesion and Tachibana addresses only permittivity and drillability. The cited reference fail to disclose or suggest controlling the present inventions total carbon extraction amount which represents Applicant’s discovery that the dissipation factor of the glass cloth can be reduced by removing physically attached undesired organic components which is not present in the prior art.
Tachibana is relied upon for teaching the feature of a woven fabric made from the warp and weft yarns that are coated with silane for purpose of making a circuit board. Tachibana is not relied upon for teaching the amount of silane.
With regard to Applicant’s statement that the discovery that the dissipation factor of the glass cloth can be reduced by removing physically attached undesired organic components by removing physically attached undesired organic components is not commensurate with the scope of the claims. Applicant is not claiming a process of making the glass cloth that includes a process of extracting undesired organic components and presumably allowing desired organic components to remain. Evidence of an unexpected result could be persuasive to overcome the rejection provided the claims are commensurate in scope.
(C) Applicant argues that Nukui addresses a fundamentally different product and problem and there is no proper motivation to combine the references. Applicant states that Nukui addresses adhesion and Tachibana addresses drillability and permittivity while the present invention addresses providing a low dissipation (Df) glass cloth.
Applicants arguments are not commensurate with the scope of the claims. With the exception of claim 13, the claims do not require a low dissipation glass cloth. As noted above Tachibana is relied upon for teaching the feature of a woven fabric made from the warp and weft yarns that are coated with silane for purpose of making a circuit board.
The rejection is revised per the amendment.
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 JENNIFER A STEELE whose telephone number is (571)272-7115. The examiner can normally be reached 9-5:30.
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/JENNIFER A STEELE/Primary Examiner, Art Unit 1789
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