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 .
Status of the Claims
Claims 1-4 are currently pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/13/2025 has been entered.
Response to Amendments
No amendments to the claims were made.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US 2013/0273254 A1) in view of Kamo et al. (US 2022/0396490 A1).
Regarding claim 1-4,
Hsu teaches a black matte polyimide film (Hsu: abstract). The polyimide film has a gloss value at 60° being less than 60 (Hsu: abstract). The polyimide film has a thermal expansion coefficient of 30 ppm/°C or less, which is within the claimed range of less than 35 ppm/°C (Hsu: abstract; par. 0021). The polyimide film has a thickness of between 12 and 250 µm which overlaps with the claimed 5 and 100 µm (Hsu: abstract; par. 0043). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The polyimide film comprises: a polyimide composition formed from at least one aromatic dianhydride, such as 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA), and at least one aromatic diamine, such as p-phenylenediamine (Hsu: abstract; par. 0015-0016, 0037-0038, and 0068); carbon black; and inorganic particles, such as silica (silicon dioxide) powder (Hsu: abstract; par. 0011 and 0012).
The polyimide may be composed of only BPDA dianhydride for the dianhydride component and thus may be 100 mol% of the aromatic dianhydride component when one dianhydride is used (Hsu: par. 0015 and 0038). The polyimide may be composed of at least one of the aromatic diamines and thus there would exist an embodiment in which p-phenylenediamine may be present in overlapping amounts, for example, for an embodiment in which 3 or 4 aromatic diamines are utilized, in equivalent amounts, resulting in 33 or 25 mol% of the p-phenylenediamine, when 3 or 4 aromatic diamines respectively, for the aromatic diamine component which satisfies the claimed amounts of 20 to 25 mol% (Hsu: par. 0016, 0037, and 0068). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
The carbon black and the silica powder may each be present from 1 to 49 wt%, which overlaps with the claimed 2 to 8 wt% of carbon black and 1 to 5 wt% of silica powder (Hsu: abstract). The polyimide would make up the remainder as no other components are present in the final film, resulting in overlapping amounts of the claimed 87 to 98 wt% of the polyimide. The silica powder may have a particle size of from 0.1 to 10 µm, which overlaps with the claimed 1 to 10 µm (Hsu: abstract). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hsu is silent towards the density of the silicon dioxide powder and the silicon dioxide powder being hollow.
Kamo teaches hollow silica particles (silicon dioxide powder) having a density of between 0.35 and 2 g/cm3, which overlaps with the claimed less than 1 g/cm3 (Kamo: abstract; par. 0015 and 0047). The lower density helps retain silica particle shell strength and improve solvent dispersion characteristics (Kamo: par. 0049 and 0053-0054). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hsu and Kamo are in the corresponding field of silica particles for use as fillers in electronic devices (Kamo: par. 0170). Therefore, it would be obvious to one of ordinary skill in the art to utilize the hollow silica particles having the claimed density in the polyimide film of Hsu to provide improved particle strength and solvent dispersability characteristics as taught by Kamo.
Hsu and Kamo are silent towards the polyimide film having a dielectric dissipation factor being less than 0.045 at 10 GHz.
However, Hsu in view of Kamo teaches the claimed black matte polyimide film, having the disclosed structure, such as film thickness, compositions, and proportions of the film components, and the film having the claimed gloss value and CTE properties as explained in the rejection of claims 1-3 above. As such, it is expected that the polyimide film of Hsu and Kamo would have the same properties, such as the claimed dielectric dissipation factor. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
The limitation requiring the “polyimide precursor is chemically cyclized to form the polyimide” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structural difference between the claimed polyimide and the polyimide disclosed by Hsu in view of Kamo.
Response to Arguments
Applicant’s arguments filed 11/13/2025 have been fully considered but they are not found persuasive.
Applicant argues that the silicon dioxide powder density of Kamo cannot be compared to the claimed silicon dioxide density as Kamo and Applicant’s specification utilize different methods of measuring said density. Applicant points out that Kamo teaches three different methods of measuring silicon dioxide particle density and they all give different density ranges with one of the three methods using helium gas and a dry pycnometer giving a range outside the claimed range, while the other two overlap with the claimed range. Applicant presents a data sheet from Taiheiyo Cement Corporation and argues that the silicon dioxide in the specification is measured by the helium gas displacement method and thus, the silicon dioxide of the prior art would be outside of the claimed range as Applicant appears to assert that the method from the datasheet must be read into the claims.
The argument is not found persuasive for several reasons. 1) The helium displacement method allegedly used in the specification for measuring the silicon dioxide apparent density is not required by claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). See MPEP 2145 VI. 2) The data sheet provided by Applicant is of low quality and hard to read and was not provided as a separate document in an IDS. While it does appear the data sheet is from Taiheiyo Cement Corporation, the specification calls the silicon dioxide particles to be “Cell Spheres-NF” which is not referenced in the data sheet, in addition to the data of the resulting density tying it to the method presented in said datasheet. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I. 3) Even if different densities were measured through different methods in Kamo, Kamo clearly teaches a desire for lower apparent density for higher shell strength and better solvent dispersibility and that is possible to adjust said density (Kamo: par. 0051-0054). Thus, one of ordinary skill in the art would be motivated to achieve the claimed apparent density for the claimed silicon dioxide particles.
Applicant argues that Table 1 of the specification details BPDA and PDA contents in Comparative Example 3 fall within the claimed range but have a higher apparent density of more than 1 g/cm3 resulting in gloss value at 60° is more than 60.
The argument is not found persuasive as the primary reference Hsu teaches overlapping ranges for the gloss value and the prior art combination of Hsu and Kamo does teach an apparent density of less than 1 g/cm3. Thus, the prior art combination is not commensurate in scope with Applicant’s Comparative Example 3 in Table 1 of the specification.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783