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. Claims 10, 14, and 16 have been amended and claim 15 has been cancelled.
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’s amendments filed 10/16/2025 have been entered. Accordingly, the 35 U.S.C. 112(b) rejections of claims 10-14 and 16, and 35 U.S.C. 112(d) rejection of claim 15 are withdrawn.
Applicant’s arguments that Ishida teaches away from using an Spk range of 0.05 or more has been fully considered but it is not persuasive.
The rejection above has been updated to cite the first surface Spk range of Ishida. Please note that as this citation was not necessitated by amendment the current action is a second non-final rejection.
Ishida expressly teaches that the first surface has an Spk value of 0.035 µm or more and 0.080 µm or less, overlapping the claimed reduced peak height Spk of 0.05 µm or more and 0.30 µm or less.
Contact Information
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.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781