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 .
Examiner Notes
Claims 1-14, and 16-24 are currently pending. No claims have been amended.
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 1-3, 7-14, and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (US 2010/0178483) and further in view of Ishida et al. (US 2020/0377706).
Regarding claims 1-3, Masuda discloses a film comprising a styrene-based polymer having a syndiotactic structure (0012) the content of the film being 50 mass% or higher (0007-0010), overlapping the claimed 50 mass% or higher in claim 1 and 50 mass% or higher and 85 mass% or lower in claim 2; a polyphenylene ether resin in an amount of not more than 40 parts by mass (0026), overlapping the claimed 10 mass% or higher in claim 1 and 10 mass% or higher and 45 mass% or lower in claim 3; and 0.01 to 5.0 mass% inorganic particles including oxides of Ti (0019 and 0021), overlapping the claimed 0.55 mass% or higher and 3 mass% or lower.
Masuda does not teach a peak height Spk of at least one surface of the film ranging from 0.05 µm or more and 0.30 µm or less.
Ishida, in the analogous field of capacitor films (0001), teaches a film comprising a first surface having an Spk value of 0.035 µm or more and 0.080 µm or less (0021), overlapping the claimed reduced peak height Spk of at least one surface of 0.05 µm or more to 0.30 µm or less.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for at least one surface of the film of Masuda to have a surface having an Spk value ranging from 0.035 to 0.080 µm, as taught by Ishida, to suppress blocking when the film is rolled (0018 and 0025).
Regarding claims 7 and 8, Masuda teaches an embodiment where the film comprises 0.1 to 8 mass% of an antioxidant (0153), overlapping the claimed 0.01 mass% or higher and lower than 0.5 mass%.
Regarding claim 9, Masuda teaches the antioxidant contains a phosphorous-based antioxidant (0158).
Regarding claim 10, Masuda teaches the film comprising inorganic particles (0115, 0116).
Regarding claims 11-12, Masuda teaches the film comprising 0.1 to 1.5 mass% particles having a diameter of 0.6 to 3.0 µm or 0.05 to 2.0 mass% having a particle diameter of 0.01 to 0.5 µm (0117) overlapping the claimed 0.2 mass% or higher and 1.0 mass% or lower and claimed size of 0.1 µm or more and 0.25 µm or less.
Regarding claim 13, Masuda teaches metal oxide particles (0115).
Regarding claim 14, Masuda teaches the titanium oxide particles have an average particle size of 0.01 to 3.0 µm (0018), overlapping the claimed size of 0.1 µm or more and 0.25 µm or less.
Regarding claim 17, Masuda teaches the films having a heat shrinkage in a film-forming direction ranging from 1% or higher and 10% or lower (Table 1 and 2).
Regarding the overlapping ranges in claims 1-3, 8, 11, 12, 14, and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 18, Masuda teaches biaxially stretching the film (0068).
Regarding claim 19, Masuda teaches a single layer film (0067).
Regarding claim 20, Masuda teaches a film thickness of 0.4 to 6.5 µm (0031), overlapping the claimed 10 µm or less.
Regarding claims 21 and 23, Masuda teaches using the film in a capacitor (0031).
Regarding claim 22 and 24, Masuda teaches an aluminum layer deposited on a side of the film (0256).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda in view of Ishida as applied to claim 1 above, and further in view of Takashi et al. (JP2012164888A).
Regarding claims 4-6, Masuda in view of Ishida discloses the limitations of claim 1 as discussed above. Modified Masuda does not teach the film comprising a styrene-based thermoplastic elastomer such as SEBS in an amount of 1 mass% or higher to 20 mass% or lower.
Takashi, in the analogous field of capacitor films (0001), teaches a syndiotactic polystyrene resin film (0010) comprising additives in an amount of 20%% by mass or less (0033). The additives including plasticizer such as SEBS (0041).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the film of modified Masuda to include SEBS in an amount of 20 mass% or less, as taught by Takashi, to increase flexibility of the film for better processing (0041).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Claims 16 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda in view of Ishida as applied to claim 1 above, and further in view of Haaf et al. (US 5,081,185).
Regarding claim 16, Masuda in view of Ishida disclose the limitations of claim 1 as discussed above. Modified Masuda does not teach the film further comprising a layer of a resin composition containing two or more kinds of modified polyphenylene ethers having different melt flow rates.
Haaf, in the analogous field of polyphenylene ether containing films teaches a polyphenylene ether composition comprising two polyphenylene ether resins having different viscosities and thus different melt flow rates (column 1, lines 45-50k column 4, lines 55-60). Haaf teaches that the two polyphenylene ether resins may be modified (column 2, lines 15-40).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the film of Masuda to include a layer of a polyphenylene oxide blend as taught by Haaf, to provide high heat resistance and dimensional stability to the film (column 1, lines 10-15).
Response to Arguments
Applicant argues that Masuda and Ishida recite different main component resist and that the condition for producing the film of Masuda are completely different from those for producing the film of Ishida and thus there is no information on what manufacturing conditions should be used in Masuda to arrive at the Spk values.
It must be emphasized that it is the patentability of the product that is in issue and not the patentability of the process steps employed to prepare the product. See MPEP section 2113. Applicant has not clearly demonstrated that a specific process is necessary to achieve the claimed film peak height Spk value. It is within the skill of a person of ordinary skill to adapt a suitable process to achieve the structure taught in Ishida in the film of Masuda.
Applicant argues that example 1B and comparative Example 4B are different only slightly in film-forming conditions (extrusion temperature, longitudinal stretching temperature, and transverse stretching temperature) however while the Spk value of example 1B satisfies the recited range in comparative example 4B is outside of the claimed range.
While applicant argues that the film-forming conditions are the only difference between example 1B and comparative example 4B this is not the case. Table 5 shows that example 1B and comparative example 4B also have different compositional proportions of the polymer components and particles. Applicant has not clearly show that a specific process is required and that the different Spk values are not because of e.g., compositional differences.
Conclusion
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
Prosecution Insights