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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 and 18-20, in the reply filed on May 20, 2026 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 1-5, 8 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (hereinafter “Wu”) (CN 10698110 B, cited by Applicant; see English machine translation).
Regarding claims 1, 3, 4, 7 and 8, Wu teaches a fluorinated and chlorinated conductive polymer double-sided filled composite film that includes a microporous film skeleton and a fluorinated and chlorinated conductive polymer resin, wherein the pore volume of both sides of the microporous film skeleton is filled with more than 60% of the fluorinated and chlorinated conductive polymer resin (see paragraph 25). The fluorine- and chlorine-containing conductive polymer double-sided filled composite film has a thickness of 3-100 μm (see paragraph 42). A weight ratio of the microporous membrane skeleton to the fluorinated and chlorine-containing conductive polymer resin is (5:95)-(40:60) (see paragraph 13). The air permeability of the fluorinated and chlorinated conductive polymer double-sided filled composite film is low. The time required for 100 ml of air to pass through this composite film, as measured by a Gurley air permeability meter, is preferably greater than 10 minutes (see paragraph 42). Its room-temperature conductivity is greater than 0.1 S/cm (see paragraph 42). An exemplary fluorine- and chlorine-containing conductive polymer double-sided filled composite film has a tensile strength greater than 60 MPa (see paragraph 79).
Although Wu does not teach that the composite film includes multiple layers of a microporous film skeleton and a fluorinated and chlorinated conductive polymer resin, the courts have held that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04).
Regarding claim 2, Wu teaches that the fluorine- and chlorine-containing conductive polymer double-sided filled composite film has a total weight of 5-250 g/m² (see paragraph 42).
Regarding claim 5, Wu teaches that the fluorinated and chlorine-containing conductive polymer double-sided filled composite film may have a microporous film skeleton to fluorine- and chlorine-containing conductive polymer resin weight ratio of (10:90)-(30:70) (see paragraph 40).
Regarding claim 10, Wu teaches that a weight of this microporous film framework is preferably 3-25 g/m², and its porosity is about 50%-95% (see paragraph 37).
Although Wu does not explicitly teach a tensile strength of the microporous film framework, Wu teaches that the microporous film framework may be prepared by a temperature difference phase change method, a dry solvent method, an electrospinning method, or an ultra-high speed centrifugal spinning method (see paragraph 37). Wu further teaches that the raw material for the microporous film framework may comprise carbon fiber precursors or resins that can be derived into carbon fibers (see paragraph 38). These methods and materials are identical to those described in paragraph [0049] of the instant application publication. It has been held by the courts that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP § 2112.01).
Regarding claims 11-13, the limitations described therein are considered product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Claims 6, 9 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wu as applied to claims 1-5, 8 and 10-13 above, and further in view of Zhou et al. (hereinafter “Zhou”) (CN 109760377 A, cited by Applicant; see English machine translation).
Regarding claims 6, 9, 18 and 19, Zhou teaches a non-silicon composite release film comprising a release layer constituted by 85-95% polyphenylene ether (polymer obtained by a polymerization of bisphenol A; weight ratio greater than 50%), 5-10% fluoropolymer, 1-5% solid lubricant, and 0.5-2% stabilizer (see paragraphs 7-9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the release film of Zhou to the composite film of Wu because Zhou teaches that the release film can effectively improve the production efficiency of electronic and electrical components and enhance product quality and stability (see paragraph 4).
Regarding claim 20, Zhou teaches that the release layer has a thickness of 10 to 30 micrometers and an operating temperature of greater than 200 °C (see paragraphs 20 and 58).
Although Zhou does not explicitly teach a width of the release layer, it is well within the ambit of the ordinary artisan to adjust the dimensions of the release layer according to the size of the composite film of Wu. The courts held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) (see MPEP § 2144.04).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHAN J ESSEX whose telephone number is (571)270-7866. The examiner can normally be reached Monday - Friday, 8:30 am - 6:00 pm.
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/STEPHAN J ESSEX/Primary Examiner, Art Unit 1727
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