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 .
Summary
The Applicant’s arguments and claim amendments received on March 30, 2026 are entered into the file. Currently, claim 1 is amended; claims 2, 3, 9-14, and 19-25 are canceled; claims 15-18 are withdrawn; resulting in claims 1 and 4-8 pending for examination.
Specification
The substitute specification filed March 30, 2026 complies with the requirements set forth in 37 CFR 1.125(b) and (c) and has been entered.
However, the disclosure is objected to because in the substitute specification filed March 30, 2026, amendments were made to paragraphs [18], [30], [56], [94], and [122] replacing the original term “bis-phenol bis(trimellitate anhydride)” with “bi-phenol bis(trimellitate anhydride)”. The Applicant similarly notes on page 5 of the corresponding remarks that the claims and specification are amended to correct the typographical error discussed in the previous rejection of claim 1 under 35 U.S.C. 112(b) and to refer to “bi-phenol bis(trimellitate anhydride)”. It is noted, however, that claim 1 was amended to recite “biphenyl bis(trimellitate anhydride)”, whereas the specification was amended to recite “bi-phenol bis(trimellitate anhydride)”.
As explained in the rejection under 35 U.S.C. 112(b) in paragraphs 8-12 of the previous office action, the term “BP-TME” is commonly used in the art to refer to biphenyl bis(trimellitate anhydride). It is noted that bis-phenol bis(trimellitate anhydride) and biphenyl bis(trimellitate anhydride) are not equivalent compounds, as the bis-phenol and biphenyl groups present at the center of the chemical structure are distinct from one another. Therefore, the use of “biphenyl” in the claims and “bis-phenol” in the specification and Applicant’s remarks is confusing and unclear, as these terms refer to different compounds. Further clarification from the Applicant is respectfully requested. For the purpose of examination, the BP-TME compound in the present invention is interpreted as referring to biphenyl bis(trimellitate anhydride).
Appropriate correction is required.
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 1 and 4-8 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.
Regarding claim 1, the newly added limitation reciting “wherein the composite polyimide substrate exhibits … a glass transition temperature of about 350°C” is indefinite because the specification does not provide any indication as to what range is encompassed by the term “about”. See MPEP 2173.05(b)(III)(A).
In looking to the instant specification, the only disclosure directed to glass transition temperature is in Tables 1 and 2, in which the glass transition temperature (Tg) values of various composite polyimide films are shown. In each of the inventive examples and comparative examples shown in Tables 1 and 2, the Tg is shown to be equal to 350°C, even though the composition of the polyester imide and/or the amount of PTFE particles contained therein is adjusted between each sample. It is not entirely clear how or why the Tg does not change when the monomers used to form the polyester imide are adjusted because, for example, different monomers would be expected to produce polymers having at least slight variations in Tg. It is therefore not clear whether the Tg values shown in Tables 1 and 2 are rounded or approximate values rather than precise, empirically derived values.
The instant specification does not provide any indication as to how the Tg values are determined (i.e., how the property was measured, whether any rounding or approximation was performed, etc.). Given that there is no additional disclosure directed to preferred ranges of Tg or any values of Tg other than 350°C for either the inventive or comparative examples, the metes and bounds of the the claimed limitation reciting “a glass transition temperature of about 350°C” are not clearly defined.
Regarding claims 4-8, the claims are rejected based on their dependency on claim 1.
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.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al. (CN 109337070, machine translation previously provided) in view of Lee et al. (US 2005/0096429, previously cited).
Regarding claim 1, Yin et al. teaches a film (composite polyimide substrate) obtained using a resin composition (substrate matrix, polyester imide) [0010]. The resin composition is obtained by reacting an acid dianhydride and a diamine, where the acid dianhydride can be 4,4'-bis(1,3-dioxo-1,3-dihydroisobenzofuran-5-ylcarbonyloxy) biphenyl (BP-TME), and the diamine can be 2,2'-bis(trifluoromethyl)diaminobiphenyl (TFMB) ([0009], [0036], [0041], see Example 10 in Table 2). As shown in Table 2, the (BP-TME)-TFMB film has a dielectric constant of 3.1, a dielectric loss tangent (tan δ) of 0.0020, and a glass transition temperature (Tg) of 386°C, which is considered to fall within the scope of the claimed glass transition temperature of about 350°C.
The ratio of diamine to dianhydride is preferably in the range of 0.95 to 1.05, or 1:1 (substantially equimolar ratio), where high heat resistance and high elastic modulus can be achieved while maintaining dielectric properties if the dianhydride and diamine react in approximately equal amounts [0042].
Although Yin et al. teaches that the resin composition has a low dielectric constant, low dielectric loss tangent, low water absorption, and exhibits minimal dimensional changes at high temperatures, such that the films are suitable for use in circuit boards ([0010]), the reference does not expressly teach that polytetrafluoroethylene particles are contained in the resin composition, or that a dielectric constant of the film is 3.0 or less.
However, in the analogous art of polyester imide films, Lee et al. teaches a thin film used in high-speed digital circuitry, made of a polymeric composite comprising a polyimide component and a fluoropolymer component (Abstract). The polymeric composite is created by incorporating microscopic fluoropolymer powders into a polyamic acid followed by an imidization process to form the polyimide, resulting in continuous and/or discontinuous domains of fluoropolymer integrated into the polyimide ([0007]-[0008]). Lee et al. teaches that such films have high mechanical toughness as well as high dielectric strength, where the fluoropolymer provides low loss, low dielectric constant, low water absorption, and chemical resistance, while the polyimide provides high mechanical strength, high glass transition temperature, resistance to chemical and thermal degradation, and high dielectric strength ([0016], [0032]). Lee et al. teaches that fluoropolymers can include polytetrafluoroethylene (PTFE) ([0034], [0043]).
Lee et al. further demonstrates the effects of adjusting the content of fluoropolymer between 20% and 60% on the tensile properties, dielectric constant, dielectric loss, coefficient of thermal expansion (CTE), and water absorption of the polyimide film (Table 2). In particular, Examples E1-E5 in Table 2 of Lee et al. demonstrate that increasing the fluoropolymer content significantly improves the dielectric constant and dielectric loss properties but also consequently increases the coefficient of thermal expansion of the film.
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 film taught by Yin et al. by incorporating PTFE particles in the polyester imide resin composition matrix, as taught by Lee et al., in order to improve the dielectric properties, dissipation loss, water absorption, and chemical resistance of the polyimide film. It would, moreover, have been obvious to one of ordinary skill in the art to have determined an optimum value of a result-effective variable such as the dielectric constant of the composite polyimide film through routine experimentation, such as by adjusting the content of the PTFE particles, especially given the teachings in Lee et al. showing that the dielectric properties can be improved by increasing the content of fluoropolymer at the expense of increasing the coefficient of thermal expansion. See MPEP 2144.05(II).
Regarding claims 4 and 5, Yin et al. in view of Lee et al. teaches all of the limitations of claim 1 above, and Lee et al. further teaches that the fluoropolymer micro powder has an average particle size between 20 nm and 5.0 microns (Abstract), which overlaps or falls within the ranges of claims 4 and 5. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I). Lee et al. teaches that by using micro powder particles of this size, the final polyimide product will generally have superior phase inter-penetration between the polyimide and fluoropolymer, than when larger particles of fluoropolymer are dispersed into the polyimide [0025].
Regarding claim 6, Yin et al. in view of Lee et al. teaches all of the limitations of claim 1 above, and Lee et al. further teaches that the fluoropolymer component is present in a weight ratio from 10 to 60 percent (Abstract, [0024]), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I). Lee et al. teaches that the weight percent loading of the fluoropolymer component in the polyimide component should generally be greater than about 30 weight percent, but that as weight percent loading of the fluoropolymer component increases, the mechanical properties of the composite film tend to decline [0063].
Regarding claim 7, Yin et al. in view of Lee et al. teaches all of the limitations of claim 1 above, and Lee et al. further teaches that the fluoropolymer micro powders can be dispersed in the polyimide component, where the fluoropolymer and polyimide are initially combined and subjected to sufficient shear and temperature to eliminate or otherwise minimize unwanted fluoropolymer micro powder agglomeration, thereby achieving superior phase inter-penetration between the polyimide and fluoropolymer ([0019], [0025]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yin et al. (CN 109337070, machine translation via EPO provided) in view of Lee et al. (US 2005/0096429, newly cited) as applied to claim 7 above, and further in view of Sato et al. (KR 2017-0134610, machine translation previously provided).
Regarding claim 8, Yin et al. in view of Lee et al. teaches all of the limitations of claim 7 above. Although Lee et al. teaches that the fluoropolymer micro powder can be dispersed in the polyimide component via a dispersing surfactant ([0019], [0056]), the reference does not expressly teach that the surfactant is a fluorine-based surfactant.
However, in the analogous art of polyester imide films, Sato et al. teaches a polyimide film obtained by mixing a non-aqueous dispersion of a fluorine-based resin and a polyimide precursor solution, followed by imidizing the precursor solution and heat-treating the film to remove the solvent ([0066], [0155]-[0158]). The polyimide precursor solution is obtained by reacting a tetracarboxylic dianhydride with a diamine compound, and the non-aqueous dispersion of a fluorine-based resin may be a PTFE micropowder ([0083]-[0086], [0131]-[0132]). Sato et al. teaches that a fluorinated additive (fluorine-based surfactant) having a fluorinated group and a lipophilic group can be added to the non-aqueous dispersion in order to lower the surface tension of the dispersion medium, thereby improving the dispersibility of the micropowder of fluorinated resin (PTFE particles) [0094]. Sato et al. teaches that the non-aqueous dispersion has excellent redispersibility and that the micropowder of fluorine resin can be uniformly mixed when added to a polyimide precursor solution [0130].
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 film taught by Yin et al. in view of Lee et al. be selecting a fluorine-based compound as the surfactant, as taught by Sato et al., in order to improve the dispersibility of the PTFE particles in the polyimide precursor solution.
Response to Arguments
Response-Claim Objections
The previous objection to claim 1 is overcome by the Applicant’s amendment to the claim in the response filed March 30, 2026.
Response-Claim Rejections - 35 USC § 112
The previous rejection of claims 1 and 4-8 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is withdrawn in light of the Applicant’s amendment to claim 1 in the response filed March 30, 2026.
However, although the rejection under 35 U.S.C. 112(b) is overcome by the amendment to the claims, a new objection to the specification is raised above in light of the amendments to the claims and the specification because the language in the specification does not align with the new language in the claims.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments, see pages 5-8 of the remarks filed March 30, 2026, with respect to amended claim 1 have been fully considered but they are not persuasive.
In particular, the Applicant argues that while Yin discloses a BP-TME/TFMB polyester imide, and Lee discloses PTFE particles contained in the resin, neither Yin nor Lee discloses the combination of claimed features along with the claimed features of the substrate exhibiting a dielectric constant of 3.0 or less, a dielectric loss of 0.003 or less, and a glass transition temperature of about 350°C.
This argument is not persuasive. In light of the amendments to claim 1, the rejections based on Yin et al. in view of Lee et al. have been modified in the office action above to address the new limitations. As explained above, Yin et al. teaches a BP-TME/TFMB polyester imide film having the claimed glass transition temperature and dielectric loss properties, and Lee et al. is relied upon to render obvious inclusion of the claimed PTFE particles. Based on the teachings of Yin et al. and Lee et al. regarding the desire to achieve a film having low dielectric constant and low dielectric loss, and in view of the guidance in Lee et al. regarding the effects of incorporating different amount of fluoropolymer particles on the dielectric constant, dielectric loss, and other mechanical properties such as thermal expansion coefficient, it would have been obvious to one of ordinary skill in the art to include an appropriate amount of PTFE particles in order to achieve the desired dielectric properties (e.g., dielectric constant of 3.0 or less) while maintaining the necessary mechanical properties.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Applicant’s argument that neither Yin et al. nor Lee et al. individually teaches the combination of claimed features is not persuasive, as the rejection relies upon the combination of references to address the claimed features.
The Applicant further argues that the amended features cannot be argued as being directed to a routine optimization of known parameters, as they instead recite a specific and unexpected result based on the claimed features.
This argument is not persuasive, as it is not clear exactly what features are being alleged as unexpected, what data is being relied upon, or how the explanation provided by the Applicant serves as a comparison to the prior art. In the event that the Applicant intends to present a showing of unexpected results, a detailed description of the reasons and evidence supporting Applicant’s position is necessary. See MPEP 716.02(b).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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