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 .
Response to Amendment
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. A newly-issue final rejection is included herewith.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 3, 5 – 9, 13 – 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saitoh, et al. (US 2019/0315094 A1) in view of Watari (US 2020/0010632 A1).
With respect to claim 1, Saitoh, et al. teach a prepreg comprising a fiber substrate (figure 1; paragraph 0015) having a thickness of 40 um or more (paragraph 0042; examiner’s notes that Saitoh, et al.t each that the average thickness of the fiber base material may vary between 5 – 120 um), the prepreg has an impregnated region (see figure 1) with the thermosetting resin composition (paragraph 0055), having a surface waviness of 5 micron or less (examiner notes that 5 micron or less encompasses 0 and thus, as the prepreg of Saitoh, et al. is flat or planar on either exterior surface, the examiner contends that the surface waviness is less than 5 um).
Furthermore, Saitoh, et al. teach that the portion of thermosetting resin composition is overlaid on each opposing surface of the fiber substrate, each portion of the thermosetting resin composition overlaid on respective opposing surfaces of the fiber substrate (figure 1; paragraph 0052). While Saitoh, et al. may not explicitly teach that the resin thickness is defined as the minimum distance from the outermost surface of the thermosetting resin composition to the fiber substrate on each of both surfaces of the prepreg, and wherein a difference between the resin thicknesses of the thermosetting resin composition overlaid on the fiber substrate on respective opposing surfaces of the fiber substrate is 0 to 10 pm, examiner notes that the prepreg of Saitoh, et al. has exterior or outer surfaces (see annotated figure below). In addition, Saitoh, et al. does teach thicknesses a1 and a2 (post-curing, thicknesses of the resin on each opposing surface of the fiber base material). The difference in a1 and a2 is desired to be small (paragraph 0046). As such, because a1 and a2 and its ratio must satisfy the following formula:
0.8<a1/a2<1.15
Examiner contends that A1 and A2 should be as close as possible. For example, if A1 = A2 (in other words, the thickness is the same post-curing), such would meet the difference in resin thicknesses between 0 – 10 um as claimed.
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Saitoh, et al. however, do not specifically teach the presence of a non-impregnated region. Turning to Watari, et al., the reference teaches a prepreg with a non-impregnated region (item 7 – figure 2), which acts as an air flow path for continuous removal of volatiles (paragraph 0050).
Therefore, the examiner contends that it would have been obvious to one of ordinary skill in the art to modify the prepreg of Saitoh, et al. with the non-impregnated inner region as taught by Watari, et al. at the time the invention was filed for ensuring an air flow path for volatiles removal.
With respect to claim 2, examiner notes that the references do not teach an existing ratio of the impregnated region obtained by the following calculation method of 25 to 98%: calculation method: a surface of the prepreg is observed with an optical microscope at a magnification of 50 to provide a surface observation image; the resulting surface observation image is converted to monochrome mode with image editing software, and saved in BMP (Microsoft Windows Bitmap Image) format; the surface observation image in monochrome mode saved in BMP format is converted to RGB (red, green, blue) values pixel by pixel with image converting software, and then saved in CSV (comma-separated values) format; the RGB data saved in CSV format is pasted on Microsoft Excel (available from Microsoft Corporation), and calculated for areas of a black part (RGB value = 255) and a white part (RGB value = 0); an area ratio of the black part with respect to the total of the black part and the white part is calculated from the resulting values; and the area ratio of the black part obtained is designated as the existing ratio of the impregnated region. However, the examiner contends that the method by which the impregnation ratio is calculated flows from the product itself. In other words, Saitoh, et al. as modified by Watari, et al. teach a prepreg comprised of the 1) same layers, 2) same composition (epoxy resin, reinforced fibers, carbon fiber as exemplary materials and 3) made by equivalent methods as that disclosed by applicant (vacuum molding the prepreg; it is noted, however, that applicant also states in the specification that the method of making is not particularly limited and may include conventional methods) and thus, the impregnation ratio is expected to flow from the prior art prepreg.
With respect to claim 3, Saitoh, et al. as modified by Watari, et al. render obvious the impregnation ratio (see Watari, et al. paragraph 0021 – 0022).
With respect to claim 5, Saitoh, et al. as modified by Watari, et al. render obvious the fiber substrate thickness of 70 – 120 um (see Saitoh, et al., paragraph 0042).
With respect to claim 6, Saitoh, et al. as modified by Watari, et al. render obvious a laminate as claimed (see Saitoh, et al., paragraph 0188).
With respect to claims 7 – 9, Saitoh, et al. as modified by Watari, et al. render obvious a metal-clad laminate with a metal foil and one of more prepreg plies (see Saitoh, et al., paragraph 0123); a printed wiring board comprised of the laminate (see Saitoh, et al. paragraph 0121) and a semiconductor package comprised of the printed wiring board and a semiconductor device (see Saitoh, et al., paragraph 0121).
With respect to claim 13, Saitoh, et al. in view of Watari, et al. render obvious a printed wiring board as claimed (see Saitoh, et al. paragraph 0121).
With respect to claims 14 – 17, as noted above, Saitoh teaches thicknesses a1 and a2 (post-curing, thicknesses of the resin on each opposing surface of the fiber base material). The difference in a1 and a2 is desired to be small (paragraph 0046). As such, because a1 and a2 and its ratio must satisfy the following formula:
0.8<a1/a2<1.15
Examiner contends that A1 and A2 should be as close as possible. For example, if A1 = A2 (in other words, the thickness is the same post-curing), such would meet the difference in resin thicknesses between 0 – 10 um as claimed and would further meet the difference in resin thickness as recited in claims 14 – 17, which is simply narrowing within the broad range of 0 – 10 um. In addition, Table 1 in Saitoh, et al. includes examples with values for a1 and a2. Ideal thickness differences are 1 um and 0 um, respectively, (see example 1 and 2).
Claims 10 – 12 and 18 – 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saitoh, et al. (US 2019/0315094 A1) in view of Watari (US 2020/0010632 A1).
With respect to claim 10, Saitoh, et al. teach a method of producing a prepreg having a surface waviness (Wa) of 5.0 pm or less (examiner notes that 5 micron or less encompasses 0 and thus, as the prepreg of Saitoh, et al. is flat or planar on either exterior surface, the examiner contends that the surface waviness is less than 5 um), comprising impregnating a fiber substrate having a thickness of 40 pm or more (paragraph 0042) with a film of a thermosetting resin composition through lamination (paragraph 0114),wherein a portion of the thermosetting resin composition is overlaid on each opposing surface of the fiber substrate (figure 1), each portion of the thermosetting resin composition overlaid on respective opposing surfaces of the fiber substrate having a resin thickness (see figure 1).
While Saitoh, et al. may not explicitly teach that the resin thickness is defined as the minimum distance from the outermost surface of the thermosetting resin composition to the fiber substrate on each of both surfaces of the prepreg, and wherein a difference between the resin thicknesses of the thermosetting resin composition overlaid on the fiber substrate on respective opposing surfaces of the fiber substrate is 0 to 10 pm, examiner notes that the prepreg of Saitoh, et al. has exterior or outer surfaces (see annotated figure below). In addition, Saitoh does teach thicknesses a1 and a2 (post-curing, thicknesses of the resin on each opposing surface of the fiber base material). The difference in a1 and a2 is desired to be small (paragraph 0046). As such, because a1 and a2 and its ratio must satisfy the following formula:
0.8<a1/a2<1.15
Examiner contends that A1 and A2 should be as close as possible. For example, if A1 = A2 (in other words, the thickness is the same post-curing), such would meet the difference in resin thicknesses between 0 – 10 um as claimed.
Saitoh, et al. however, do not specifically teach the formation of a non-impregnated region. Turning to Watari, et al., the reference teaches a prepreg with a non-impregnated region (item 7 – figure 2), which acts as an air flow path for continuous removal of volatiles (paragraph 0050).
Therefore, the examiner contends that it would have been obvious to one of ordinary skill in the art to modify the prepreg of Saitoh, et al. with the non-impregnated inner region as taught by Watari, et al. at the time the invention was filed for ensuring an air flow path for volatiles removal.
With respect to claim 11, examiner notes that the references do not teach an existing ratio of the impregnated region obtained by the following calculation method of 25 to 98%: calculation method: a surface of the prepreg is observed with an optical microscope at a magnification of 50 to provide a surface observation image; the resulting surface observation image is converted to monochrome mode with image editing software, and saved in BMP (Microsoft Windows Bitmap Image) format; the surface observation image in monochrome mode saved in BMP format is converted to RGB (red, green, blue) values pixel by pixel with image converting software, and then saved in CSV (comma-separated values) format; the RGB data saved in CSV format is pasted on Microsoft Excel (available from Microsoft Corporation), and calculated for areas of a black part (RGB value = 255) and a white part (RGB value = 0); an area ratio of the black part with respect to the total of the black part and the white part is calculated from the resulting values; and the area ratio of the black part obtained is designated as the existing ratio of the impregnated region. However, the examiner contends that the method by which the impregnation ratio is calculated flows from the product itself. In other words, Saitoh, et al. as modified by Watari, et al. teach a prepreg comprised of the 1) same layers, 2) same composition (epoxy resin, reinforced fibers, carbon fiber as exemplary materials and 3) made by equivalent methods as that disclosed by applicant (vacuum molding the prepreg; it is noted, however, that applicant also states in the specification that the method of making is not particularly limited and may include conventional methods) and thus, the impregnation ratio is expected to flow from the prior art prepreg.
With respect to claim 12, Saitoh, et al. as modified by Watari, et al. render obvious disposing metal foils on both surfaces of one ply of a prepreg produced by the method of claim 10 (paragraph 0019 and 0021). While not specific as to the step of press-molding, Saitoh, et al. as modified by Watari, et al. render obvious such a method as Saitoh, et al. teach lamination and heating (paragraph 0118). Furthermore, the methods in Saitoh, et al. are not particularly limited and as such, press-molding is a conventional method to producing laminates and within the purview of one of ordinary skill in the art.
With respect to claims 18 – 20, as noted above, Saitoh teaches thicknesses a1 and a2 (post-curing, thicknesses of the resin on each opposing surface of the fiber base material). The difference in a1 and a2 is desired to be small (paragraph 0046). As such, because a1 and a2 and its ratio must satisfy the following formula:
0.8<a1/a2<1.15
Examiner contends that A1 and A2 should be as close as possible. For example, if A1 = A2 (in other words, the thickness is the same post-curing), such would meet the difference in resin thicknesses between 0 – 10 um as claimed and would further meet the difference in resin thickness as recited in claims 18 – 20, which is simply narrowing within the broad range of 0 – 10 um. In addition, Table 1 in Saitoh, et al. includes examples with values for a1 and a2. Ideal thickness differences are 1 um and 0 um, respectively, (see example 1 and 2).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Saitoh, et al. (US 2019/0315094 A1) in view of Watari (US 2020/0010632 A1) and further in view of Suh (US 2010/0236820 A1).
Saitoh, et al. and Watari, et al. teach the features as noted above but are both silent with respect to the surface roughness of the prepreg.
In the analogous art of prepregs used in a metal clad laminate for a printed wiring board (see abstract), Suh teaches a surface roughness of 0.1 – 5 um (paragraph 0026). This range of surface roughness is important to promote bond strength between the prepreg and the metal thin film to which it is bonded (paragraph 0051). If the roughness is less than this range, the bond strength is insufficient (paragraph 0051). Alternatively, if the roughness is greater than this range, voids may form between the metal thin film and the prepreg (paragraph 0051).
Thus, it would be obvious to one of ordinary skill in the art to include the surface roughness of Suh in the prepreg of Saitoh, et al. as modified by Watari, et al. before the effective filing date of the claimed invention for the purpose of ensuring bond strength between the prepreg and the metal thin film used to make the printed wiring board per Suh.
Response to Arguments
Applicant’s arguments, see pages 9 – 10, filed June 18, 2026, with respect to the rejection(s) under 35 USC 103 over the prior art of Watari, et al. and Hayashi, et al. as the primary reference(s) have been fully considered and are persuasive. These rejections have thus been withdrawn. Examiner concurs that neither reference specifically teaches or renders obvious the minimum distance or thickness of the resin overlaying the fiber substrate as claimed. With respect to Watari, et al., while the prepreg has the impregnated region and non-impregnated region with resin overlaying the fiber substrate on the opposing exterior surfaces, regardless of whether a point can be drawn from the exterior surface to the fiber substrate, the resin thickness defined as the minimum distance fails to meet the claimed difference of 0 – 10 micron. Additionally, the examiner notes the figure of Watari, et al. included in the final rejection does not accurately show the difference as claimed, nor does Watari, et al. address the resin thicknesses. Similarly, Hayashi, et al. also fails to teach or render obvious the resin thickness as the minimum distance as recited.
Thus, based on the arguments, a review of the prior art and an updated search, the examiner has entered the amendment and rejected the claims over the prior art reference of Saitoh, et al. in view of Watari, et al. (further in view of Suh, et al. – to address surface roughness in claim 4).
Reference(s) of Interest
Spencer, et al. (US 2016/0159998 A1) is cited of interest. Spencer, et al. teach a prepreg with a powder coating on opposing surfaces of the resin-infused prepreg. (see figure 1 and 2). Spencer, et al. also teach that the prepreg itself has void spaces or an interface (23) between resin surfaces of adjacent prepregs which allows for an air path (paragraph 0108).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VERONICA EWALD whose telephone number is (571)272-8519. The examiner can normally be reached Mon-Fri ~9am-5:30pm EST.
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/MARIA V EWALD/ Supervisory Patent Examiner, Art Unit 1783
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