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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is 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.
Regarding claim 4, the claim recites “less than 200 masses of the zinc oxide having a size of 10 µm or greater per area of 1 mm2 in image analysis by laser microscopic observation” in lines 2 through 4. The term “masses” renders the claim indefinite because it has no accepted meaning in the art as a unit of measure, and it is unclear whether the term denotes a number of discrete primary particles, a number of agglomerates of primary particles, or a quantity of material expressed on a weight basis. The claim is indefinite for the further reason that “image analysis by laser microscopic observation” recites no magnification, no specimen preparation, no number or size of fields observed, and no criterion by which a “mass” is to be distinguished from the surrounding matrix, and neither the claim nor the specification identifies an art-recognized standard for such a measurement. The metes and bounds of the claim therefore depend upon a protocol that is not recited. For the purpose of further examination, this limitation will be interpreted as requiring that fewer than 200 discrete particles or agglomerates of zinc oxide having a maximum dimension of 10 µm or greater are present per 1 mm2 of the composition.
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.
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.
Claims 1-4 and 6-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamabe et al. (WO 2021/095662) in view of Kasai et al. (JP 2020-037662) and Taniguchi et al. (JP 2010-143948). For convenience, the citations below for Yamabe et al., Kasai et al., and Taniguchi et al. are taken from English language machine translations included herewith.
Regarding claims 1-3, 6-8, 11, and 14-18, Yamabe et al. teaches a non-aqueous dispersion containing a tetrafluoroethylene-based polymer powder and an inorganic filler, a molded product formed from the dispersion, and a laminate of that molded product with a base material (Abstract; Page 1, lines 14-17). The tetrafluoroethylene-based polymer is polytetrafluoroethylene (PTFE), a copolymer of tetrafluoroethylene and perfluoro(alkyl vinyl ether) (PFA), or a copolymer of tetrafluoroethylene and hexafluoropropylene (FEP) (Page 1, lines 19-21), and the polymer preferably consists of 95.0 to 98.0 mol% of tetrafluoroethylene units and 2.0 to 5.0 mol% of perfluoro(alkyl vinyl ether) units (Page 4, lines 44-45). Tetrafluoroethylene and perfluoro(alkyl vinyl ether) are each a fluorine-containing monomer, so the polymer contains a fluorine-containing monomer in an amount of 100 mol% (a perfluorinated fluororesin containing a fluorine-containing monomer in an amount of 90 mol% or more). The melting temperature of the polymer is preferably 260 to 320 °C, more preferably 285 to 320 °C (Page 4, line 9). The inorganic filler is preferably a metal oxide filler, and the metal oxides recited include zinc oxide (Page 5, lines 36-40); a suitable specific example of the filler is “zinc oxide with a D50 of more than 0.10 µm (‘FINEX’ series manufactured by Sakai Chemical Industry Co., Ltd.)” (Page 7, lines 10-11). Two or more different fillers may be used together, and the filler preferably contains silicon oxide or magnesium metasilicate in an amount of 50% by mass or more and 90% by mass or less of the filler (an inorganic filler other than the zinc oxide) (Page 5, lines 45-52). The molded product “can be suitably used as a printed circuit board material or a member thereof” (Page 3, lines 58-59); the base material upon which the polymer layer is formed is a metal foil of copper, copper alloy, stainless steel, nickel, aluminum or titanium, preferably a rolled copper foil or an electrolytic copper foil (Page 15, lines 1-3) (a circuit board comprising the composition and a conductive layer, the conductive layer comprising metal, the metal being copper); and the resulting laminate is used as a flexible metal-clad laminate or a rigid metal-clad laminate for manufacturing a printed circuit board (Page 16, lines 10-12) (a printed circuit board, multilayer circuit board, or high frequency board).
Yamabe et al. does not teach that the metal oxide filler selected is zinc oxide, that the zinc oxide is contained in an amount of 0.01 to 5.0% by mass of the composition, or that the zinc oxide has an average particle size of 0.01 to 1.0 µm.
However, Taniguchi et al. teaches a fluororesin film containing zinc oxide particles having an average particle diameter of 0.01 to 0.05 µm and having a coating layer made of silicon oxide on the surface of the zinc oxide, the film containing 0.05 to 2.0 parts by mass of the particles with respect to 100 parts by mass of the fluororesin (Page 2, lines 29-32). This amount corresponds to 0.05 to 1.96% by mass of the composition (calculated by Examiner; 0.05/100.05=0.05% and 2.0/102.0=1.96%), which falls within the claimed range of 0.01 to 5.0% by mass, and the recited average particle diameter of 0.01 to 0.05 µm falls within the claimed range of 0.01 to 1.0 µm. Taniguchi et al. teaches that the preferred fluororesins are ethylene-tetrafluoroethylene copolymer, hexafluoropropylene-tetrafluoroethylene copolymer, perfluoro(alkyl vinyl ether)-tetrafluoroethylene copolymer, and polychlorotrifluoroethylene polymers (Page 3, lines 21-23), and that the zinc oxide particles impart long-term weather resistance and ultraviolet blocking ability, an amount below 0.05 parts by mass being insufficient to provide ultraviolet blocking ability at a wavelength of 360 nm (Page 3, lines 25-36).
Kasai et al. teaches a fluororesin film comprising a tetrafluoroethylene-based polymer and particles of a functional compound, the film being used to form the insulating resin layer of a printed wiring board used for transmitting a high-frequency signal (Page 3, lines 18-25). Kasai et al. teaches that “since the TFE-based polymer is inferior in ultraviolet absorption, a fluororesin film containing only the TFE-based polymer cannot be processed by a UV laser,” and that the characteristic to be adjusted by the functional compound is therefore preferably ultraviolet absorption (Page 4, lines 40-43). Kasai et al. further teaches that where the property to be improved is the ultraviolet absorption of the fluororesin film, the functional compound is preferably a compound having a band gap of 3 to 3.5 eV (Page 4, lines 48-50), and that use of such a functional compound sufficiently enhances the ultraviolet absorption of the fluororesin film (Page 4, lines 50-52).
Yamabe et al., Kasai et al., and Taniguchi et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of fluororesin compositions containing inorganic particles and films and layers formed from such compositions. Yamabe et al. and Kasai et al. are further from the same field of endeavor in that both are directed to such compositions used as the insulating layer of a printed circuit board. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to select zinc oxide as the metal oxide filler of the composition of Yamabe et al., and to employ that zinc oxide in the amount and at the average particle diameter taught by Taniguchi et al., and would have been motivated to do so in order to impart ultraviolet absorption to the composition so that the insulating layer formed from it can be processed by a UV laser, as taught by Kasai et al. (Page 4, lines 40-43, 48-52), and in order to impart the ultraviolet blocking ability and long-term weather resistance taught by Taniguchi et al. (Page 3, lines 25-36). Zinc oxide is already named by Yamabe et al. as a metal oxide filler suitable for the composition, and a specific commercial grade of zinc oxide having a D50 of more than 0.10 µm is expressly identified as a suitable specific example of the filler (Page 5, lines 36-40; Page 7, lines 10-11), so its selection is no more than the choice of a known material based on its suitability for its intended use. MPEP 2144.07. Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123. Additionally, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Regarding claim 4, Yamabe et al. teaches that the filler preferably contains substantially no coarse particles, that the particle size of the coarse particles in the filler is preferably 25 µm or more, more preferably 20 µm or more, and still more preferably 10 µm or more, and that in other words the 98% particle size of the filler is preferably less than 25 µm, more preferably less than 20 µm, and even more preferably less than 10 µm (Page 6, lines 17-22). A filler of which at least 98% of the particles are smaller than 10 µm, present in a molded product at the amounts taught by Yamabe et al., necessarily contains fewer than 200 particles or agglomerates having a maximum dimension of 10 µm or greater per 1 mm2 as that limitation is interpreted above. Yamabe et al. further teaches that the tetrafluoroethylene-based polymer powder itself preferably has a 98% particle size of less than 10 µm (Page 5, lines 21-23).
Regarding claim 9, Kasai et al. teaches that the functional compounds which improve the ultraviolet absorption of the fluororesin film are compounds having a band gap of 3 to 3.5 eV, at least one selected from the group consisting of titanium oxide and cerium oxide being more preferred (Page 4, lines 48-51), and that a separate group of functional compounds, namely potassium titanate, silicon oxide, magnesium oxide, aluminum oxide, and the cured product of a thermosetting polyimide resin, is used instead where the characteristic to be improved is the linear expansion coefficient of the fluororesin film (Page 4, lines 54-59). Kasai et al. thus teaches an inorganic filler, silicon oxide, that is added for a purpose other than ultraviolet absorption and that is not among the compounds identified as providing ultraviolet absorption (an inorganic filler having no ultraviolet absorbency). Yamabe et al. likewise teaches that the silica filler is included because it is an inorganic filler having a low linear expansion coefficient, so that the molded product is less likely to be warped (Page 3, lines 55-57). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to employ a silicon oxide filler having no ultraviolet absorbency in addition to the zinc oxide, and would have been motivated to do so in order to reduce the linear expansion coefficient of the film and suppress warping of the molded product, as taught by Kasai et al. and Yamabe et al., while leaving the ultraviolet absorption imparted by the zinc oxide unimpaired.
Regarding claim 10, Yamabe et al. teaches that the dielectric loss tangent of the filler is 0.005 or less, preferably 0.003 or less, and more preferably 0.001 or less, and that the filler is preferably a silica filler (Page 13, lines 22-24), and that the definition and scope of that filler are the same as those of the filler described above, including preferred embodiments (Page 13, lines 21-22). The dielectric loss tangent so taught falls within the claimed range of 0.01 or lower. It is well known in the art that fused silica has a relative permittivity of approximately 3.8, and thus of 5.0 or lower. This is further evidenced by Murai et al., which teaches a fluororesin substrate for high frequency use having a dielectric constant of 2.2 to 3.5 (¶118), a value that could not be obtained at the filler loadings taught by Yamabe et al. were the filler to have a relative permittivity greater than 5.0.
Regarding claim 11, Yamabe et al. teaches that it is preferable that the content of the filler is 5% by mass or more and 25% by mass or less of the dispersion liquid and that the content of the tetrafluoroethylene-based polymer is more than 25% by mass and 50% by mass or less of the dispersion liquid (Page 8, lines 4-6). Because the liquid dispersion medium is removed in forming the molded product, the filler content of the molded product ranges from 9.1% by mass to 50% by mass (calculated by Examiner; 5/(5+50)=9.1% and 25/(25+25)=50%), which overlaps with the claimed range of 10 to 60% by mass.
Regarding claim 12, Yamabe et al. teaches that where the base material is a metal foil, the dielectric loss tangent of the laminate at a frequency of 10 GHz is preferably 0.0020 or less, more preferably 0.0015 or less (Page 14, lines 58-60). Yamabe et al. defines dissipation factor as a value measured by the SPDR method at a frequency of 10 GHz in an environment of 24 °C and 50% RH (Page 3, lines 16-17). Murai et al. (US 2021/0187923) evidences that the dissipation factor of a fluororesin substrate for a high frequency circuit, measured by a cavity resonator perturbation method at a frequency of 10 GHz and a measurement temperature of 25 °C, is 0.0010 to 0.0020 (¶118, 141). The one degree Celsius difference between the measurement temperature of Yamabe et al. and the measurement temperature recited in claim 12 is therefore not a meaningful distinction, and the dielectric loss tangent taught by Yamabe et al. falls within the claimed range of 0.003 or lower.
Regarding claim 13, Yamabe et al. does not explicitly teach that the composition has an increase in the dissipation factor at 25 °C and 10 GHz of 330% or lower relative to a dissipation factor at 25 °C and 10 GHz of the perfluorinated fluororesin. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., the increase in the dissipation factor relative to that of the perfluorinated fluororesin, would naturally arise and be achieved by a composition with all the claimed ingredients. “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 19, Yamabe et al. does not teach melt-kneading the perfluorinated fluororesin and the zinc oxide to provide the composition, the polymer layer of Yamabe et al. being formed from a non-aqueous dispersion. Taniguchi et al. teaches that the fluororesin film is produced by blending zinc oxide particles of the determined particle size and content with the fluororesin using one extruder and melt extruding the blend at a temperature not higher than the melting point of the fluororesin plus 50 °C (Page 4, lines 8-11), and exemplifies charging a blend raw material of 10.0 parts by mass of the zinc oxide particles and 90.0 parts by mass of the fluororesin into a twin screw extruder having a screw diameter of 45 mm and melt-kneading the blend at a barrel temperature of 300 °C to obtain a master chip (Page 4, lines 41-46) (melt-kneading the perfluorinated fluororesin and the zinc oxide to provide the composition). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to melt-knead the zinc oxide with the tetrafluoroethylene-based polymer of Yamabe et al., as taught by Taniguchi et al., and would have been motivated to do so in order to disperse the zinc oxide particles uniformly in the fluororesin and thereby maintain transparency and ultraviolet blocking ability, as taught by Taniguchi et al. (Page 3, lines 25-31).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yamabe et al. (WO 2021/095662) in view of Kasai et al. (JP 2020-037662) and Taniguchi et al. (JP 2010-143948) as applied to claim 1 above, and further in view of Kenny et al. (US 2008/0283271).
Regarding claim 5, Yamabe et al., Kasai et al., and Taniguchi et al. teach the composition of claim 1 as set forth above. Yamabe et al. does not teach that the perfluorinated fluororesin contains less than 200 unstable end groups per 1 x 106 carbon atoms, the unstable end groups including at least one selected from the group consisting of -COF, -COOH, -COOCH3, -CONH2, and -CH2OH present at a main chain end. Kenny et al. teaches the fluorine treatment of tetrafluoroethylene/perfluoro(alkyl vinyl ether) copolymer (PFA) and tetrafluoroethylene/hexafluoropropylene copolymer (FEP) to reduce the dissipation factor for these copolymers, and teaches that the fluorination converts the polymer unstable end groups, “typically -COF, -CONH2, -COOH, and/or -CH2OH,” resulting from the copolymerization process to the stable end group -CF3 (¶2). Kenny et al. teaches that the fluorinated PFA contains less than 6 unstable end groups per 106 carbon atoms and that similar results are obtained when FEP is fluorinated (¶2), and that a partially stabilized copolymer preferably has about 30 to 120 wire affinity end groups, which are the as-polymerized end groups, per 106 carbon atoms (¶10, 11). Each of these values is less than 200 unstable end groups per 1 x 106 carbon atoms. Kenny et al. further teaches that the dissipation factor for the FEP at 1 GHz is reduced from 0.00112 to 0.00057 by fluorination, and that for PFA at 500 MHz the dissipation factor is reduced from 0.00083 to about 0.000366 by fluorination (¶2), and that PFA melts at about 305-310 °C and FEP melts at about 250-255 °C (¶2).
Yamabe et al., Kasai et al., Taniguchi et al., and Kenny et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of perfluorinated fluororesin compositions used as electrical insulating materials. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to employ a perfluorinated fluororesin containing less than 200 unstable end groups per 1 x 106 carbon atoms, as taught by Kenny et al., as the tetrafluoroethylene-based polymer of Yamabe et al., and would have been motivated to do so in order to reduce the dissipation factor of the resin, as Kenny et al. teaches that fluorination to remove the unstable end groups reduces the dissipation factor of both PFA and FEP (¶2). Yamabe et al. seeks a laminate having a dielectric loss tangent at 10 GHz of 0.0020 or less (Page 14, lines 58-60), so the skilled artisan had every reason to select a resin whose unstable end groups had been reduced.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yamabe et al. (WO 2021/095662) in view of Kasai et al. (JP 2020-037662) and Taniguchi et al. (JP 2010-143948) as applied to claim 1 above, and further in view of Pitolaj et al. (US 10,435,534).
Regarding claim 20, Yamabe et al., Kasai et al., and Taniguchi et al. teach the composition of claim 1 as set forth above. Yamabe et al. does not teach paste-extruding or powder-rolling the composition to provide a fluororesin sheet. Pitolaj et al. teaches a dielectric substrate comprising polytetrafluoroethylene and a filler, and teaches that “[t]he PTFE fine powder has the unique property of being processable by ‘paste extrusion,’” in which the PTFE fine powder is blended with a hydrocarbon liquid, lubricated, and then forced through a contracting die, and that variations of the paste extrusion process include paste extruding or molding a preform and calendering the preform to form sheets (Col. 2). Pitolaj et al. teaches forming the mixture into a sheet by molding or extruding, calendering the sheet, heating the sheet to remove the lubricant, and dry calendering the sheet to form the dielectric substrate (Col. 5), and teaches that the dielectric substrate can have a dissipation factor of less than or equal to 0.003 as measured at a frequency of 10 GHz (Col. 7).
Yamabe et al., Kasai et al., Taniguchi et al., and Pitolaj et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of filled perfluorinated fluororesin compositions formed into sheets for use as dielectric substrates of circuit boards. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form the composition of Yamabe et al. into a fluororesin sheet by paste extrusion, as taught by Pitolaj et al., and would have been motivated to do so because Pitolaj et al. teaches that paste extrusion followed by calendering is the conventional means by which a filled polytetrafluoroethylene fine powder composition is formed into a sheet for use as a dielectric substrate (Col. 2), and because it is obvious to choose a known material or process based on its suitability for its intended use. MPEP 2144.07.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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