Prosecution Insights
Last updated: July 17, 2026
Application No. 18/674,079

METHOD OF MANUFACTURING A FILM

Non-Final OA §103§112
Filed
May 24, 2024
Priority
Sep 28, 2022 — TW 111136829 +1 more
Examiner
FLETCHER III, WILLIAM P
Art Unit
1717
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Beyond Manufacture Inc.
OA Round
1 (Non-Final)
76%
Grant Probability
Favorable
1-2
OA Rounds
10m
Est. Remaining
92%
With Interview

Examiner Intelligence

Grants 76% — above average
76%
Career Allowance Rate
855 granted / 1124 resolved
+11.1% vs TC avg
Strong +16% interview lift
Without
With
+16.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
37 currently pending
Career history
1143
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
59.4%
+19.4% vs TC avg
§102
4.9%
-35.1% vs TC avg
§112
25.2%
-14.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1124 resolved cases

Office Action

§103 §112
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(s) Status Claims 1-17 are pending as filed 05/24/2024. Priority This application is a divisional of 18/148,892, filed 12/30/2022, which issued as US 12,017,248 B2. This application also claims benefit of TW 111136829, filed 09/28/2022. Information Disclosure Statement The Primary Examiner has considered the IDS filed 05/24/2024. Drawings The drawings filed 05/24/2024 are acceptable. See MPEP § 608.02(b)(I). Specification The disclosure is objected to because of the following informalities: The cross-reference to parent application 18/148,892 should be updated to reflect that the parent application has issued as US 12,017,248 B2. Appropriate correction is required. The abstract of the disclosure is objected to because it fails to recite process steps. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Applicant is reminded of the proper content of an abstract of the disclosure. A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives. Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts. Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. 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. Claims 16 & 17 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. The term “tiny dust” in claim 16 is a relative term which renders the claim indefinite. The term “tiny dust” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The definiteness of a relative term/term of degree involves comparison to a baseline. See Liberty Ammunition, Inc. v. United States, 835 F.3d 1388, 1395 (Fed. Cir. 2016) (the term of degree “reduced area of contact” entails comparing an “area of contact” that was “reduced” relative to a baseline area of contact). Here, in order to determine whether a dust particle is “tiny” involves comparison with some form of baseline or reference dust particle size. How small does a dust particle have to be in order to be considered “tiny?” Conversely, how large may a dust particle be and still fall within the scope of the claim? The specification provides no guidance to which one of ordinary skill in the art could refer to make this determination. Because the metes and bounds of “tiny” are impossible to determine, claim 16 is indefinite. MPEP § 2173.02. Claim 17 is similarly rejected because it incorporates this indefinite subject matter by virtue of its dependency. 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(s) 1, 3, 6-7, and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 0 509 962 A1 in view of US 5,578,403 A and JP 2010-094630 A. Claims 1 & 14 EP 962 teaches a method of manufacturing a film (thin photoresist) comprising: transporting a printed circuit board substrate (18) on conveyors (14, 15) in direction of travel (T); filtering a photoresist solution having a viscosity of 104-608 MPas ( = 104-608 cPs) and also having a solids content [abstract & 8:11-26]; coating the filtered photoresist solution on the substrate [8:11-26]; baking the coated substrate in a drying zone [8:27-37 & Fig. 2]. EP 962 does not expressly teach: (i) that the photoresist solution has a solids content between 5-17%; or (ii) blowing air on the baked solution. With respect to (i), US 403 teaches that it is known in the art of coating photoresists on printed circuit board substrates to dilute the photoresist composition to a suitable viscosity or solids content in order to improve workability [8:6-9]. It is the Primary Examiner’s position that, based on this teaching, the solids content (and the viscosity) of a photoresist composition is a result-effective variable, affecting the workability of the photoresist composition. Consequently, it would have been obvious to optimize the solids content by routine experimentation, absent evidence of criticality. See MPEP § 2144.05(II). There is no indication in the record that optimization of the solids content was anything other than the exercise of ordinary skill in the art. In re Applied Materials, 692 F.3d 1289, 1297 (Fed. Cir. 2012). Moreover, the Primary Examiner recognizes that both viscosity and solids content are identified in the prior art as affecting workability. “The mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art. Id. at 1298. With respect to (ii), JP 630 teaches a coated film manufacturing apparatus equipped with a drying device for drying a coating applied to the surface of a substrate while moving the substrate, wherein the drying deice comprises a cover body that extends across the width of the coating and is configured such that gas can flow through its interior along the coating, and a blowing means for circulating the gas inside the cover body, wherein the cover body has an inclined surface that decreases in height from one end to the other in the width direction of the coating, and the blowing means is configured to cause the gas to flow in the width direction of the coating by forcibly supplying or exhausting air from only one end of the cover body [0009]. This configuration reduces the pressure difference experienced by the coating film, thereby avoiding uneven drying conditions that can damage the film [0012]. It would have been further obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of EP 962 in view of US 403 so as to utilize, as the drying device, the forced air device of JP 630. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of drying the photoresist film without damaging it, especially in the case of a lower viscosity film. Claim 3 EP 962 teaches completely drying the photoresist solution [8:24-26]. As noted above, the solids content of the photoresist composition is a result-effective variable that it would have been obvious to optimize, in particular by adding solvent. Consequently, since it would have been obvious to optimize the solids content to any desired amount, including 30-60%, this would leave 40-70% solvent. Thus the limitations of claim 3 would have been obvious as well. Claim 6 EP 962 further teaches that the conveyor belts (14, 15) are “set to run at 90 m/min [8:24]. It is the Primary Examiner’s position that the act of setting — spooling up the speed from 0 m/min to 90 m/min — is a form of adjustment, the limitations of this claim are met. Claim 7 EP 962 teched curtain coating [8:21 & Fig. 1], which reads on the claimed delivery of the filtered to the solution in a first direction (in-and-out of the paper in Fig. 1) that is perpendicular to a second direction (direction of travel (T)). Claim 15 JP 630 teaches delivery of the air from only one end of the coating film [0012]. Claim 16 None of the cited references expressly teach that the blowing air removes dust from the substantially baked film. Nevertheless, since the film is completely cured, there is inherently some contact of the blowing air with a substantially baked portion of the film, which would result in the removal of extremely light objects on the surface of the film, such as dust. Claim(s) 2 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 0 509 962 A1 in view of US 5,578,403 A and JP 2010-094630 A, as applied to claims 1 and 16, respectively, above, further in view of US 4,882,245 A. Claims 2 & 17 The combination of EP 962, US 403, and JP 630 above teaches all of the limitations of this claim except: filtering the solution by a filtering material, the filtering material having a plurality of filtering holes, a dimension of each of the filtering holes ranged 5-50 microns. US 245 teaches a photoresist composition suitable for printed circuit board applications wherein the composition is filtered through a 10 micron porous membrane filter (i.e., a filtering material having a plurality of holes), characterizing it as “useful as a photoresist” [6:18-20]. It would have been further obvious to one of ordinary skill in the art to modify the process of the combination of EP 962, US 403, and JP 630 so as to filter the photoresist composition through a 10 micron porous membrane, as taught by US 245. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of producing a photoresist having a suitable particle size for a printed circuit board application. Claim(s) 1, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Savit et al. (US 3,669,073 A) in view of Tojo et al. (US 2011/0242200 A1) and Takada (US 2018/0067454 A1). Claim 1 Savit teaches a method of manufacturing a film [Figs. 1-2 & claim 7], comprising: transporting a substrate (paper, 10) utilizing plenum roll (15), guide plate (16), belt (20), and rolls (22, 22’); filtering a solution utilizing filtering device (20A) [6:6-10 & Fig. 2]; coating the filtered solution utilizing rolls (40, 40’) and plate (25) with openings that squeeze and coat (i.e., squeeze coating) the filtered solution onto the substrate; and baking the solution coated on the substrate utilizing hot air (46) and IR heater (50). Savit does not expressly teach blowing air (on)to the baked solution. The use of various types of heating/drying devices with an electrostatic type printing system is known in the art; such as taught by Tojo [00248]. Takada also teaches [Figs. 1 & 3-4] an electrostatic image forming process wherein heater (40) for heating sheet (5) and blowing fan (64) develops the electrostatic image. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of Savit so as to include an air blowing device cool the substrate as taught by Takada [0088]. Moreover, none of these references teach that the viscosity of the solution is 100-2000 cPs or that the solids content is 5-17%. It is the Primary Examiner’s position that both of the viscosity and solids content are result-effective variables that affect coating properties of the coating solution, such as workability. The coating must be thick/viscous enough to remain in place after being coated, but not so thick/viscous that it does not spread to uniformly cover the substrate. Consequently, it would have been additionally obvious to one of ordinary skill in the art to optimize the viscosity and solids content of the coating composition of Savit by routine experimentation, absent evidence to the contrary. See MPEP § 2144.05(II). There is no indication in the record that optimization of the viscosity and/or solids content was anything other than the exercise of ordinary skill in the art. In re Applied Materials, 692 F.3d 1289, 1297 (Fed. Cir. 2012). Moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art. Id. at 1298. Claim 4 The combination of Savit, Tojo, and Takada, teach all of the limitations of this claim, except: maintaining a minimum distance between the coating device and the substrate, the minimum distance being 200-2000 microns. It is the Primary Examiner’s position that the coating device must have some distance from the substrate and that that distance determines, at least in part, wet coating thickness. Consequently, it would have been obvious to one of ordinary skill in the art to optimize this distance so as to achieve the desired coating thickness. See MPEP § 2144.05(II). Claim 5 Similarly, these references fail to disclose adjusting a flowrate of squeezing the solution. It is the Primary Examiner’s position that the flowrate is also a result-effective variable, affecting the overall coating rate. Consequently, it would have been obvious to one of ordinary skill in the art to optimize this distance so as to achieve the desired coating thickness. See MPEP § 2144.05(II). Allowable Subject Matter Claims 8-13 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 prior art neither teaches nor suggests the claimed process further comprising that the coating device has a main body having a first delivery duct, a first moving portion slidably connected with the main body along a third direction inclined to the first direction and a second moving portion slidably connected with the main body along a fourth direction perpendicular to the first direction, the first moving portion and the second moving portion defining a second delivery duct therebetween, wherein the second delivery duct is located between the first delivery duct and the transporting device. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM. 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, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. WILLIAM PHILLIP FLETCHER III Primary Examiner Art Unit 1759 /WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759 10 June 2026
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Prosecution Timeline

May 24, 2024
Application Filed
Jun 15, 2026
Non-Final Rejection mailed — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
76%
Grant Probability
92%
With Interview (+16.4%)
2y 11m (~10m remaining)
Median Time to Grant
Low
PTA Risk
Based on 1124 resolved cases by this examiner. Grant probability derived from career allowance rate.

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