Detailed Action1
America Invents Act 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 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2012101991-A1 (“Ohigashi”) in view of WO-2018124169-A1 (“the ‘169 reference”).
Regarding claim 6, Ohigashi teaches a method for manufacturing a circuit board for a control device of a vehicle (page 1, wherein the circuit board is capable of being used in an electronic device of a vehicle, and wherein all references to the Ohigashi specification refer to the machine translation submitted with the Office action mailed on May 12, 2026), the method comprising laminating a core of the circuit board from two half cores, wherein the two half cores each include at least one layer of resin impregnated glass textile (40) (fig. 2, pages 2-3 & 10-11) and one conductor plane (11) of the circuit board (page 11, i.e. metal foil 11), wherein the resin impregnated glass textile layers are disposed between the conductor planes and the conductor planes are on opposite sides of the core (fig. 2e), wherein the resin impregnated glass textile layers are each between 50 micrometers and 150 micrometers thick (page 10).
Ohigashi fails to explicitly teach the resin impregnated glass textile layers have a resin content of between 58 percent by volume and 74 percent by volume and the conductor planes are each between 20 micrometers and 50 micrometers thick. However, this would have been obvious in view of the ‘169 reference.
The ‘169 reference also teaches a prepreg for a circuit board comprising a resin impregnated glass textile and conductor layers on one or both sides of the resin impregnated glass textile layer (fig. 1, pages 1 & 15-16, wherein all references to the ‘169 speciation refer to the machine translation submitted with the Office action mailed on May 12, 2026). The ‘169 reference teaches that for improved moldability the resin composition is preferably 30-90 % by volume, and more preferably 40-80 % by volume, of the resin impregnated glass textile layer (third paragraph on page 15). In addition, the ‘169 reference teaches the conductor layers can comprise a metal foil having a thickness between 1 and 70 micrometers, more preferably between 1.5 and 35 micrometers (second to last paragraph on page 15).
In this case, Ohigashi teaches a resin content that is variable depending upon the thicknesses of the resin layers and glass textile (see page 10 of Ohigashi), and teaches conducting planes comprising a metal foil having a 2 micrometer thickness (paragraph beginning with “(2)” on page 16). However, one of skill in the art appreciates that there are a variety of workable resin contents and conductor thicknesses. The ‘169 reference explicitly teaches that improved moldability can be achieved when the resin content is between 40-80 % by volume, and teaches a workable range for the conductor plane thickness (i.e. 1-70 micrometers). Thus, it would be obvious and predictable to modify Ohigashi so that the resin content of the resin impregnated glass textile layer is between 40-80 % by volume and the conductor plane thickness is 1-70 micrometers.
Given the above modification, since the resin content range and conductor plane thickness range both overlap the claimed ranges a prima facie case of obviousness exists.
While Ohigashi teaches to laminate two resin impregnated glass textiles 40 directly together and sandwiched by two conductor planes 11 (fig. 2d, page 11), Ohigashi fails to explicitly teach the conductor planes 11 being attached to respective resin impregnated glass textile layers 40 prior to laminating the layers 40 together, so that the core is laminated from two half cores. However, this would be obvious in view of a different embodiment of Ohigashi.
Ohigashi teaches another embodiment where conductor planes 11 are secured to respective resin layers 12 prior to laminating the resin layers together (fig. 1, page 11 of Ohigashi). Thus, it would be obvious and predictable to secure the conductor planes 11 of fig. 2d of Ohigashi to respective resin layers 40 prior to laminating the resin layers together. This can allow for easier stacking during the lamination process since only two layers need to be stacked instead of four. MPEP 2144.04(IV)(C) also states that it is prima facie obvious to rearrange the steps of a laminating process.
Regarding claim 7, the embodiment illustrated in fig. 2 of Ohigashi fails to explicitly teach laminating at least two layers of resin impregnated glass textile as intermediate layers of the circuit board onto the conductor planes of the core, wherein the at least two layers of resin impregnated glass textile are each between 50 micrometers and 150 micrometers thick and have a resin content of between 58 percent by volume and 74 percent by volume. However, this would be obvious in view of other teachings of Ohigashi and the ‘169 reference.
Ohigashi teaches the circuit board can be a multilayer board, which comprises laminating at least one more prepreg and conductor plane to the core (pages 12-13 & 16-17). The ‘169 reference also teaches to form a multilayer board by laminating other/intermediate prepregs on the etched/patterned conductor planes d’ (figs. 3-5, page 21).
In this case, the embodiment of figure 2 of Ohigashi teaches a structure having two conductor planes sandwiching resin layers. However, multilayer circuit boards are well known in the art. Each of Ohigashi and the ‘169 reference teach manufacturing multilayer circuit boards where an intermediate prepreg and another conductor layer are stacked onto a patterned conductor plane. Further, Ohigashi et al. as applied to claim 6 teach a known prepreg having good moldability (i.e. the resin impregnated glass textile of claim 1). Thus, it would be obvious and predictable to form a multilayer circuit board by laminating two more resin impregnated glass textile layers and conductor planes on respective conductor planes 11 illustrated in fig. 2e of Ohigashi (wherein the intermediate resin impregnated glass textile layers are the same as the resin impregnated glass textile layers of claim 6).
Claim 8 recites the resin impregnated glass textile layers of the intermediate layers are stacked onto the conductor planes and laminated with the conductor planes and among one another. As detailed in the rejection to claim 7, above, the intermediate resin impregnated glass textile layers are stacked and laminated to respective conductor planes and among each other.
Claim 9 recites the conductor planes are structured before laminating the intermediate layers. One of skill in the art appreciates that it is necessary to create patterns/structures in the conductive planes to provide defined conductive paths. Ohigashi teaches forming a pattern/structure on the conductor planes via a subtractive method (pages 12 & 16). The ‘169 reference also teaches to form a pattern/structure on the conductor planes d via etching before laminating other prepregs c2 to the conductor planes d (figs. 2-4, page 21). Thus, in order to form a circuit board capable of being used as intended, it would be obvious to form a pattern/structure on the conductor planes via a subtractive process such as etching before laminating the intermediate layers.
Regarding claim 10, Ohigashi further teaches the resin impregnated glass textile layers are provided as prepregs (pages 1 & 10-11 of Ohigashi).
Claim 11 recites the conductor planes are structured after laminating the two half cores. One of skill in the art appreciates that it is necessary to create patterns/structures in the conductive planes to provide defined conductive paths. Ohigashi teaches forming a pattern on the conductor planes via a subtractive method (pages 12 & 16). The ‘169 reference also teaches to form a pattern/structure on the conductor planes d via etching after the assembly comprising a plurality of conductor planes and resin layers are laminated (figs. 1-3, page 21). Thus, in order to form a circuit board capable of being used as intended, it would be obvious to form a pattern/structure on the conductor planes 11 of Ohigashi via a subtractive process such as etching after laminating the half cores.
Response to Arguments
Applicant's arguments filed August 12, 2026 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
On pages 6-7 of the remarks, Applicant argues that Meguru fails to teach the resin content since Meguru refers to a “resin composition” that includes a filler—thus does not teach a content of the resin itself.
One of skill in the art appreciates that resins commonly have additivities therein, including fillers, pigments, UV-blockers, etc. to add strength, alter the color, and protect from environmental degradation. However, the entire composition is commonly referred to as a resin. This is also taught by Meguru which states a “resin composition”, wherein “composition” refers to the makeup of the resin (i.e. the elements that the resin is composed of). Thus, as commonly done in the art, Meguru teaches the resin including the filler—not the resin and filler being separate and distinct elements. Thus, the examiner still believes the broadest reasonable interpretation of “resin” includes additives therein that form the resin composition.
Further, Meguru teaches that the filler can also be a resin (e.g. silicone resin powder; see second full paragraph on page 11 of Meguru). Thus, even if the claimed resin content couldn’t include non-resin fillers/additives, the filler can still properly be counted as part of the claimed “resin content”.
Applicant is free to amend the claim to further clarify what is meant by “resin content”.
On pages 7-8 of the remarks, Applicant argues that the cited art fails to teach the two half cores each include at least one layer of resin impregnated glass textile and one conductor plane since the embodiment of figure 1 of Ohigashi doesn’t disclose half cores that each include at least one layer of resin impregnated glass textile and one conductor plane.
One cannot show nonobviousness by attacking references/embodiments individually where the rejections are based on combinations of references/embodiments. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is not stating that either embodiment of Ohigashi discloses half cores that each include at least one layer of resin impregnated glass textile and one conductor plane. The rejection reasons that it would be obvious and predictable in view of the embodiment of figure 1 of Ohigashi to secure the conductor planes 11 of fig. 2d of Ohigashi to respective resin layers 40 prior to laminating the resin layers together.
Applicant also states in the remarks that “combining separate embodiments still requires a reasoned motivation and reasonable expectation of success.” However, Applicant fails to state how the modification lacks motivation or a reasonable expectation of success. Since the embodiment of figure 2 of Ohigashi teaches that the conductor planes can be secured to the resin layers, and the embodiment of figure 1 of Ohigashi teaches the conductor planes can be secured to the resin layers prior to laminating the resin layers together, Ohigashi teaches a reasonable expectation of success and/or predictability of securing the conductor planes to the resin layers prior to laminating the resin layers together.
With respect to motivation, the examiner disagrees that motivation is always required to modify a reference/embodiment (see obviousness rationales outlined in MPEP 2143(1)(A)-(1)(F); see also MPEP 2144.04). However, the examiner provided motivation in the modification (i.e. to provide a less complicated/easier stacking process during the lamination of the half cores). The examiner also believes the modification of the embodiment of Figure 2 of Ohigashi in view of the embodiment of Figure 1 of Ohigashi is proper in view of the rationales of MPEP 2143(I)(C), MPEP 2143(I)(D), and/or an obvious engineering choice such as that outlined in MPEP 2144.04(IV)(C)4.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). 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://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
4 The case cited in MPEP 2144.04(IV)(C) also deals with lamination, i.e. “Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.).”
