DETAILED ACTION
Claims 1-3 are pending before the Office for review.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over TOYODA et al (U.S. Patent Application Publication 2014/0008821) in view of AKIMOTO et al (U.S. Patent Application Publication 2015/0037535).
With regards to claim 1, Toyoda discloses a method for producing a resin member used in a production process of electronic devices comprising: a processing step of applying abrasive processing to a surface of a raw member to set a surface roughness Ra 0.5 µm or less (Paragraphs [0041]-[0043], [0087] discloses forming a resin sealing sheet wherein the surface is subjected to a grinding process wherein the ground surface has a mean surface roughness of Rx 0.5µm or less) to 100 nm or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
Toyoda does not explicitly disclose a contact angle of pure water with respect to a surface to 70° or more and less than 110°.
Akimoto discloses a method for producing a resin member comprising forming an composite comprising an epoxy wherein the composite film has a water repellency of 75° or more to provide good water repellency. (Paragraphs [0286, [0315]-[0338]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A) Therefore tit would have been prima facie obvious to optimize the contact angle of the surface to amounts including Applicant’s claimed amount of 70° or more and less than 110° in order to provide a surface that has water repellency as taught by the modified teachings of Toyoda in view of Akimoto. (Akimoto Paragraph [0286], MPEP 2144.05(I)).
Therefore it would have been prime facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the method of Toyoda to include the contact angle as rendered obvious by Akimoto because the reference of Akimoto teaches such contact angle provides desired water repellency (Paragraph[0286]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired resin member using the contact angle as rendered obvious by Akimoto. MPEP 2143D
Allowable Subject Matter
Claims 2-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The Examiner has rejected the subject matter of independent claim 1 under Toyoda in view of Akimoto. With regards to claim 2, the cited prior art fails to teach or render obvious wherein “…the raw member is formed of a fluororesin”. A further search of the prior art has failed to produce analogous art which teaches or renders obvious this limitation. With regards to claims 3-4, the cited prior art fails to teach or render obvious “… the processing step is a step of reducing the contact angle of pure water with respect to the surface by 5° or more than the contact angle before the processing by the abrasive processing.” A further search of the prior art has failed to produce analogous art which teaches or renders obvious this limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713