DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
2. Claims 4, 16-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 refer to “a perfluorovinyl group” and claim 16 refers to “a fluororesin”, “a tetrafluoroethylene”, “a modifying monomer”, but do not have a preposition “the” or “said” in front of those; therefore, it is not clear if said terms used for the second and more times are the same or different from those previously cited.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
3. Claims 1-4, 7-10, 16-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Imamura et al (US 2016/0319089, Imamura’089).
4. Imamura’089 discloses a modified fluorine-containing copolymer comprising:
a) a tetrafluoroethylene (TFE) unit; and
b) a perfluoro(alkyl vinyl ether)(PAVE) unit (Abstract, also as to instant claim 3,4), wherein the copolymer comprises functional groups ([0038], [0025]).
5. Further disclosed a method for making the modified TFE-PAVE copolymer comprising irradiating the copolymer with a radiation of preferably 5-250 kGy, or more preferably 10 kGy ([0115], [0116]), at a temperature of 20⁰C lower than the melting point of the copolymer, and using electron beams ([0110], [0113], as to instant claims 16-19).
6. Specifically, Example 1 of Imamura’089 shows:
a TFE/PPVE copolymer (94.1/5.9 %mass), Tm 303⁰C in the form of sheet, irradiated with electron beam, with a dose of 40 kGy of electron beams at an electron beam accelerating voltage of 3000 kV and exposure intensity of 20 kGy/5 min ([0161], [0162] of Imamura’089).
On the other hand, Example 1 of instant specification shows:
a TFE/PPVE copolymer (TFE/PPVE=94.5/5.5%mass), Tm 302⁰C ion the form of a sheet, irradiated with electron beams, with a dose of 40 kGy with an electron beam accelerating voltage 3000 kV and a dose intensity of 20 kGy/5 min, wherein the produced modified TFE/PPVE showed the amount of tertiary carbon of 0.01%mol (Example 1 of instant specification).
7. Thus, Example 1 of Imamura’089 is produced by essentially the same process as that of Example 1 of instant invention showing the content of tertiary carbon of 0.01%mol; therefore, the Example 1 of Imamura’089 will inherently comprise, or alternatively would be reasonably expected to comprise the content of tertiary carbon of about 0.01%mol as well.
8. Since the modified TFE/PAVE copolymer, especially modified TFE/PPVE copolymers, of Imamura’089 are essentially the same as those claimed in instant invention, and are produced by essentially the same process of irradiating said copolymers with electron beams at a dose of 10-250 kGy as claimed and disclosed in instant invention, therefore, the modified/irradiated TFE/PAVE (and TFE/PPVE) copolymers of Imamura’089 will inherently comprise the properties as those claimed in instant invention, specifically, having the content of tertiary carbon in the range of 0.008-0.030 %mol and the structure of the tertiary carbon as claimed in instant invention, which are due to said irradiation treatment, and having a linear expansion coefficient increase as claimed in instant invention which is due to the presence of said tertiary carbon as well (as to instant claims 1-2). The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed compositions, if not taught, may be very well met by the compositions of Imamura’089, since the compositions of Imamura’089 are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
9. As to instant claims 7-10, 17, 20, the modified TFE/PAVE copolymer is further mixed with TFE/hexafluoropropylene copolymer and TFE homopolymer ([0105], [0128], [0132]) to form molded articles, specifically a sheet ([0136], [0138], as to instant claims 9-10).
It is noted that the limitation of “for a circuit board” of claims 9-10 is an intended use limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
10. The composition for the molded article further comprises a heat-resistance stabilizer, a nucleating agent ([0135]).
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.
11. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over
Imamura et al (US 2016/0319089, Imamura’089) in view of Saito et al (US 2013/0163253).
12. The discussion with respect to Imamura et al (US 2016/0319089, Imamura’089) set forth in paragraphs 3-10 above, is incorporated here by reference.
13. Imamura’089 does not teach the modified fluoropolymer composition comprising an inorganic filler, and the composition being a layer in a circuit board, specifically printed circuit board.
14. However, Saito et al discloses a white reflective printed circuit board (PCB) comprising:
a) a white reflective layer comprising a copolymer of TFE and perfluoro alkyl vinyl ether ([0015], [0018]) and further an inorganic white pigment such as titanium oxide or aluminum oxide mixed in said copolymer ([0025]-[0026], [0014], as to instant claims 5-6) coated on
b) a copper metal clad laminate comprising a copper layer (claims 1, 4, Figure 1, as to instant claims 9-15).
15. Since a) Imamura’089 comprises the modified TFE/PAVE copolymers being used for making molded articles including sheets having improved heat resistance and crack resistance ([0138], [0024]) and b) Saito et al discloses the printed circuit boards comprising TFE/PAVE copolymer sheet as one of the layers covering a copper layer, wherein said TFE/PAVE copolymer layer is further specified as having titanium oxide white pigment to ensure the PCB has a white reflective surface, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Saito et al and Imamura’089, and to use or obvious to try to use the modified TFE/PAVE copolymer of Imamura’089 as the TFE/PAVE copolymer layer in the PCB of Saito et al, with further adding the white pigment of titanium oxide into said modified TFE/PAVE copolymer of Imamura’089 to ensure said modified TFE/PAVE copolymer of Imamura’089 is having white reflective properties as well, since said modified TFE/PAVE copolymer of Imamura’089 is having improved crack resistance and heat resistance, and thereby would be expected to improve crack resistance and heat resistance of the PCB of Saito et al and since it would have been obvious to choose material based for its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Claims 1-4, 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over
Imamura et al (US 2016/0319089, Imamura’089) in view of Zhang et al (US 6,540,866).
17. The discussion with respect to Imamura et al (US 2016/0319089, Imamura’089) set forth in paragraphs 3-10 above, is incorporated here by reference.
18. Imamura’089 does not teach the modified fluoropolymer composition being a layer in a circuit board, specifically printed circuit board.
19. However, Zhang et al discloses a printed circuit board comprising a copper metal surface laminated with fluoropolymers (Abstract), specifically TFE/PAVE copolymers (col. 3, lines 25-29, as to instant claims 9-15).
20. Since a) Imamura’089 comprises the modified TFE/PAVE copolymers being used for making molded articles including sheets having improved heat resistance and crack resistance ([0138], [0024]) and b) Zhang et al discloses a printed circuit board comprising a copper metal surface laminated with fluoropolymers (Abstract), specifically TFE/PAVE copolymers, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Zhang et al and Imamura’089, and to use or obvious to try to use the modified TFE/PAVE copolymer of Imamura’089 as the TFE/PAVE copolymer layer in the PCB of Zhang et al, since said modified TFE/PAVE copolymer of Imamura’089 is having improved crack resistance and heat resistance, and thereby would be expected to improve crack resistance and heat resistance of the PCB of Zhang et al, and since it would have been obvious to choose material based for its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764