DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-2, 7-9, 12-18, 20-22, 24-27 are pending.
Claim Rejections - 35 USC § 112
Claims 8, 13, 21 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 8 recites the broad recitation at least 25, and the claim also recites at least 15, 20 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 13, the phrase "e.g. copper" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 13 recites a higher adhesion to (e.g. copper) metal than a random fluoropolymer having the same composition. It would not be clear the meaning and scope of a random fluoropolymer having the same composition. For instance, the Examiner does not understand the meaning of a “random fluoropolymer” or “the same composition” since these are not defined nor do they find antecedent basis in the claims.
Claim 21 recites the broad recitation no greater than 5, and the claim also recites 4,3,2,1 or 0.01 wt% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
Claims 1-2, 7-9, 12-15, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda et al. (US 2019/0144700).
Regarding claim 1: Hosoda is directed to an electronic telecommunication article including antenna parts ([0276] Hosoda) comprising a layer of a fluoropolymer composition comprising:
A fluoropolymer composition comprising polymerized units perfluorinated monomers including 90-99.89 mol% tetrafluoroethylene (TFE) and 0.1-9.99 mol% perfluoropropylvinyl ether (PPVE), (see paragraphs [0064]-[0066], [0293]-[0295], [0297]- [0301], claims 1-8). When converted to weight percent, a TFE/PPVE copolymer comprising 90.01 mol% TFE and 9.99 mol% PPVE would have a wt% TFE of 77 wt% and PPVE of 23 wt%.
While a specific electronic telecommunications article comprising the claimed layer of fluoropolymer composition is not specifically mentioned in a single article, it would have been obvious to have selected such an article since Hosoda discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Regarding claim 2: A pattern layer is formed as well as a coverlay and adhesive layer (equivalent to a protective layer) and insulating layer are disclosed ([0270] - [0274] Hosoda). An integrated circuit and printed circuit board are disclosed ([0270] Hosoda).
Regarding claim 7: The composition has a dielectric constant of 2.10 in Example 1 ([0204] Hosoda).
Regarding claim 8: Hosoda discloses the amorphous fluoropolymer composition comprising polymerized units perfluorinated monomers including 90-99.89 mol% tetrafluoroethylene (TFE) and 0.1-9.99 mol% perfluoropropylvinyl ether (PPVE), (see paragraphs [0064]-[0066], [0293]-[0295], [0297]- [0301], claims 1-8). When converted to weight percent, a TFE/PPVE copolymer comprising 90.01 mol% TFE and 9.99 mol% PPVE would have a wt% TFE of 77 wt% and PPVE of 23 wt%.
Regarding claim 9: Perfluoropropylvinyl ether (PPVE) has the general formula of claim 9 wherein n is 0 and Rf is a perfluoroalkyl group.
Regarding claims 12-13: While claim 12 further limits the core shell fluoropolymer, claim 1 recites the core shell fluoropolymer in the alternative. Therefore, claim 12 is met fluoropolymer comprising TFE is disclosed.
Regarding claim 14: The combination of Hosoda and Jing doesn't specifically recite the fluoropolymer layer exhibits a bond strength to copper of at least 5 N when heat laminated at a temperature no greater than 300, 250, or 200 ˚C for 30 minutes at a pressure of 54 barr.
However, the fluoropolymer composition produced in the combination of Hosoda is substantially identical to the composition produced in the instant invention.
Case law holds that 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).
Hence, the combination of Hosoda suggests a composition having fluoropolymer layer exhibits a bond strength to copper of at least 5 N when heat laminated at a temperature no greater than 300, 250, or 200 ˚C for 30 minutes at a pressure of 54 barr. 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.
Regarding claim 15: The polymer can comprise HFP units ([0049]).
Regarding claim 17: Hosoda teaches the melting temperature is 270-400 ˚C ([0159] Hosoda), and therefore at least overlaps the claimed range.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Claims 16, 18, 20-22, 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda et al. (US 2019/0144700) as applied to claim 1 above, and further in view of Jing et al. (WO 2019/239322).
Regarding claims 16, 20: A blend comprising a crystalline fluoropolymer is not mentioned.
Jing is directed to a coating composition used for a variety of applications including coating electrical electrodes, fuel cells, electrolysis cells and articles of corrosive environments ([0140] Jing) comprising an amorphous fluoropolymer comprising at least 90 wt% weight of polymerized units of perfluorinated monomers including one or more unsaturated perfluorinated alkyl ethers (preferably TFE/PMVE) and
A crystalline submicron fluoropolymer particles wherein the TFE includes 100% units of TFE ([0028] Jing) and therefore a greater amount of TFE than the first copolymer in both Jing and Hosoda.
One skilled in the art would have been motivated to have included the crystalline fluoropolymer of Jing in the composition of Hosoda since Jing teaches the composition comprising an amorphous fluoropolymer and crystalline submicron fluoropolymer particles show good adhesion to various substrates (see p. 26, I. 32-34). Jing also states that the addition of crystalline fluoropolymer particles to the amorphous fluoropolymer leads to a physically crosslinked coating layer (see p. 12, I. 23-30 and Table 3). Therefore, it would be obvious to the person skilled in the art at the time the invention was filed to add crystalline fluoropolymer particles to arrive at claims 16, 20 of the present invention.
Regarding claim 17: With regards to a blend of fluoropolymer, Hosoda teaches the melting temperature is 270-400 ˚C ([0159] Hosoda), and Jing teaches the melting temperature of the crystalline fluoropolymer is 100-300 C. Hence, one skilled in the art would conclude the melting temperature of the blend is at most 270-400 ˚C and at least 100 ˚C, and therefore at least overlaps the claimed range.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 18: The crystalline fluoropolymer of Jing is insoluble in fluorinated solvent (p. 12 Jing) including solvent HFE-7500 solvent ((3-ethoxy-1,1,1,2,3,4,4,5,5,6,6,6-dodecafluoro-2-trifluoromethylhexane) (equivalent to a partially fluorinated ether).
Regarding claim 21: The amount of TFE units and perfluorinated PAVE units range from 90 mol% and 9.99 mol% ([0059] [0046] Hosoda) and therefore the units derived from non-fluorinated or partially fluorinated monomers is at most 0.1 wt%.
Regarding claim 22: The crystalline fluoropolymer contains crystalline submicron fluoropolymer particles (Claim 1 Jing).
Regarding claim 23: The crystalline fluoropolymer of Jing is insoluble in fluorinated solvent (p. 12 Jing).
Regarding claim 24: The composition is heated past the glass transition temperature and melting temperature as taught in both Hosoda and Jing. See [0193] [0222] Hosoda and therefore one skilled in the art would conclude the crystalline fluoropolymer particles are sintered with amorphous fluoropolymer particles.
Regarding claims 25-26: Cure sites of nitrile can be included with the crystalline fluoropolymer of Jing (p. 12 Jing). Chlorine can also be included as a cure site (p. 10 Jing).
Regarding claim 27: A filler of silica is disclosed ([0230] Hosoda).
Response to Arguments
Applicant's arguments filed 5/27/2026 have been fully considered but they are not persuasive.
Applicant argues (p. 6 Remarks) claims 8, 13, 21 recite or and are therefore not indefinite.
This argument is not found persuasive since claims are given their broadest reasonable interpretation.
With regards to claims 8 and 21, MPEP § 2173.05(c) states [a] broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The Examiner should analyze whether the metes and bounds of the claim are clearly set forth. Examples of claim language which have been held to be indefinite are (A) "a temperature of between 45 and 78 degrees Celsius, preferably between 50 and 60 degrees Celsius"
With regards to claim 13, “(e.g. copper)” and hence it would not be clear if a specific metal is required, or if copper is required to meet the claim.
Applicant argues (p. 6-8 Remarks) two types of resin powders are exemplified in Hosoda. Resin powder B made of PTFE and resin powder A, wherein Production Example A has 2 moles of PPVE (about 5 wt%) and the bonding copper clad laminates in Example 5 and the use of high temperature in Example 5 contributes to good adhesion but also results in warpage. Warpage of the single sided copper clad laminate was 4.4% and this warpage was small. Applicant contends that while 4.4% warpage is suitable for some uses, in reality 4.4$ warpage is intolerable for electronic communication articles. As noted by the test results in the present invention, good adhesion can be obtained at lower temperatures and in turn lower warpage.
This argument is not found persuasive since no amount of warpage is currently recited in the present claims. Further, the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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