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 .
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.
Priority
3. This application is a CON of PCT/JP2022/037814 10/11/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application JAPAN 2021-168125 10/13/2021 filed on 05/02/24.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 05/16/24 and 04/05/24 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Claim Rejections - 35 USC § 102
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.
Claims 1-11, 13-15, 17, 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito (US 2017/0275491) as evidenced by Youn (US 2015/0022878), Scifinder data for Tinuvin 460, and Tinuvin 460 Basf product data sheet downloaded on 08/08/26.
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Regarding claims 1-11, 13, 22, Saito discloses a film coating composition and method of its production comprising a melt-knealing (para [0002], [0139], [0140]) a fluororesin having melting point of 300 0C (para [0036]), fall into claim 1 range of 240 to320 0C, wherein fluororesin comprises tetrafluoroethylene-hexafluoropropylene copolymer or polyvinylidene fluoride (para [0032]), and a nitrogen containing heterocyclic UV absorber compound such as Tinuvin 460 of molecular weight 629.8 (para [0111]), fall into claim 3 range of 1200 g/mol or lower. As evidenced from Scifinder data for Tinuvin 460 has structure:
Further, as evidenced from Youn (US 2015/0022878), Tinuvin 460 has a 1% by mass reduction temperature pyrolysis at 344 0C (table 1), fall into claim 1 range of 330 0C or higher, wherein the amount of the nitrogen containing heterocyclic UV absorber compound is 4 wt% (table 3), fall into claim 11 range of 0.1 to 5 wt% . Further as evidenced from Tinuvin 460 Basf product data sheet the absorbance at wavelength 355 nm is 0.9, fall into claim 1 range of 0.6 or higher.
Alternatively, since the composition requirement is met by Saito, the properties such as absorbance of light at 355 nm would inherently be the same as claimed “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claims 14-15, Saito discloses a filler and ultrafine powder synthetic silica (para [0136]; no UV absorbency). Even though silica is described as flatting agent may also function as filler in a composition.
Regarding claim 17, since the composition requirement is met by Saito, such composition can be used for any future intended purpose such as insulating material of circuit board or a dielectric material for a board.
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.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Saito (US 2017/0275491) as applied to claims 1, 14-15, and further in view of Tamura (US 2018/0037765).
Saito includes the features of claims 1, 14-15 above.
Regarding claim 16, Saito does not disclose inorganic filler is contained in an amount of 5 to 50 mass% of the composition.
However, Tamura discloses a coating composition comprising fluororesin, UV absorber, and filler such as silica in an amount of 0.1 to 10 wt% (para [0001], [0029], [0078], [0083]), overlapping claimed range of 5 to 50 mass% (wt approx. mass), wherein the filler provides an excellent hardness at high temperature, and abrasion resistance (para [0075]).
At the time of invention, it would have been obvious to one of ordinary skill in the art to use the amount of silica filler disclosed by Saito over the same range as Tamura’s filler, given that both are being used in a similar context for the same purpose, e.g. coating composition, wherein the appropriate amount of the filler provides an excellent hardness at high temperature, and abrasion resistance.
A prima facie case of obviousness exists for the composition, wherein Tamura discloses filler such as silica in an amount of 0.1 to 10 wt%, overlapping the requirement of claim 16. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Claims 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Gonda (WO 2020/0322020) in view of Saito (US 2017/0275491) as evidenced by Youn (US 2015/0022878), Scifinder data for Tinuvin 460, and Tinuvin 460 Basf product data sheet downloaded on 08/08/26.
Regarding claims 18-21, Gonda discloses a high frequency circuit board comprising a conductive layer and a coating film comprising resin such as hexafluoropropyl copolymer polytetrafluoroethylene-perfluoroalkyl vinyl ether copolymer or polyvinylidene fluoride and UV absorber, wherein the conductive layer comprises metal such as copper (abstract, page 2 lines 25-41page 4, lines 1-10), Gonda does not disclose the composition of the instant claim 1.
However, Saito discloses a film coating composition (para [0002], [0139], [0140]) comprising a fluororesin having melting point of 300 0C (para [0036]), fall into claim 1 range of 240 to 320 0C, wherein fluororesin comprises tetrafluoroethylene-hexafluoropropylene copolymer or polyvinylidene fluoride (para [0032]), and a nitrogen containing heterocyclic UV absorber compound such as Tinuvin 460 (para [0111]), wherein the film coating composition provide excellent water resistance, chemical
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resistance, and weather resistance (para [0013]). As evidenced from Scifinder data for Tinuvin 460 has structure:
Further, as evidenced from Youn (US 2015/0022878), Tinuvin 460 has a 1% by mass reduction temperature pyrolysis at 344 0C (table 1), fall into claim 1 range of 330 0C or higher. Further as evidenced from Tinuvin 460 Basf product data sheet the absorbance at wavelength 355 nm is 0.9, fall into claim 1 range of 0.6 or higher.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Gonda with the coating film comprising a fluororesin having melting point of 300 0C, wherein fluororesin comprises tetrafluoroethylene-hexafluoropropylene copolymer or polyvinylidene fluoride, and a nitrogen containing heterocyclic UV absorber compound such as Tinuvin 460, as taught by Saito. The rationale to do so would have been motivation provided by of Saito that to do so would provide excellent water resistance, chemical resistance, and weather resistance.
Allowable Subject Matter
Claim 12 is 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: Closest prior arts are Saito (US 2017/0275491), Tamura (US 2018/0037765), and Gonda (WO 2020/0322020).
Claim 12 require the composition contains less than 2500 masses of the nitrogen-containing heterocyclic compound having a size of 5 µm or greater per area of 1 mm² in image analysis by laser microscopic observation.
The closest prior arts do not suggest or disclose the composition contains less than 2500 masses of the nitrogen-containing heterocyclic compound having a size of 5 µm or greater per area of 1 mm² in image analysis by laser microscopic observation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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