Prosecution Insights
Last updated: May 29, 2026
Application No. 18/701,376

MULTILAYER STRUCTURE INCLUDING INSULATING LAYER

Non-Final OA §103§112
Filed
Apr 15, 2024
Priority
Oct 14, 2021 — JP 2021-169042 +1 more
Examiner
CHEN, VIVIAN
Art Unit
1787
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Denka Company Limited
OA Round
1 (Non-Final)
57%
Grant Probability
Moderate
1-2
OA Rounds
1y 3m
Est. Remaining
86%
With Interview

Examiner Intelligence

Grants 57% of resolved cases
57%
Career Allowance Rate
561 granted / 984 resolved
-8.0% vs TC avg
Strong +29% interview lift
Without
With
+29.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
45 currently pending
Career history
1048
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
84.5%
+44.5% vs TC avg
§102
2.2%
-37.8% vs TC avg
§112
11.6%
-28.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 984 resolved cases

Office Action

§103 §112
DETAILED ACTION Notice of Pre-AIA or AIA Status Claim(s) 1-18 is/are pending. Claim(s) 1-9, 11, 13, 15, 17 is/are rejected. Claim(s) 10, 12, 14, 16, 18 is/are withdrawn from consideration. 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 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. Response to Election/Restrictions Applicant’s election without traverse of Species (a)(i) (claims 9, 11, 13, 15, 17) in the reply filed on 01/12/2026 is acknowledged. Claim(s) 10, 12, 14, 16, 18 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/12/2026. 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(s) 1-9, 11, 13, 15, 17 is/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 pre-AIA the applicant regards as the invention. Claim 1 is vague and indefinite because in the phrase “at least one surface of the resin layer is bonded to the roughened surface of the copper foil, and the resin layer is not bonded to the smooth surface of the copper foil”, it is unclear whether the phase “the copper foil” refers to: (i) just one copper foil (with a smooth surface and a roughened surface) contacting the resin layer; or (ii) every copper foil (with a smooth surface and a roughened surface) contacting the resin layer. Claim 9, 11, 13, 15, 17 are vague and indefinite because it is unclear whether the phrase “the copper layer” refers to: (i) the previously recited “the first copper layer”; or (ii) another previously unspecified copper layer. Claims 2-9, 11, 13, 15, 17 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter. Claim 13 may be subject to rejections under 35 U.S.C. 103 after the outstanding rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are adequately resolved. Claim Rejections - 35 USC § 103 (AIA ) 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. Claim(s) 1, 3-9, 11, 15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over: • KO ET AL (US 2015/0021084), in view of: • ARAI ET AL (US 2023/0023832), or • ARAI ET AL (US 2023/0023889), or • ARAI ET AL (US 2023/0365797), and in view of KATAGIRI ET AL (US 2023/0035382). The applied references ARAI ET AL ‘832 and ARAI ET AL ‘889 and ARAI ET AL ‘797 each have a common inventor and/or assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). KO ET AL ‘084 discloses laminates (e.g., multilayer copper-clad laminates (CCLs), etc.) comprising: • at least one insulating layer(s); • at least one copper foil layer(s) with a smooth side and a rougher side; • an optional carrier layer (210); wherein an illustrative structure (Figure 5) of a laminate comprises: • a carrier layer (210) (corresponding to the recited “resin layer”), wherein both sides of the carrier layer (210) contacts the rougher side of a copper foil layer (113); • first and second insulating layers (111), each of which have one surface which contacts the smooth side of a copper foil layer (113). PNG media_image1.png 247 472 media_image1.png Greyscale The laminates can be formed by stacking a copper layer (113) and an insulating layer (111) on each side of the carrier layer (210) (corresponding to the recited “resin layer”), with the rougher side of copper layers (113) bonded to the carrier layer (210) and the smooth side of the copper layers (113) bonded to the insulating layers (111). (entire document, e.g., Figures 5, 11-15, etc.; paragraph 0005, 0009, 0015, 0021, 0058, 0085-0086, 0094, 0097-0099, etc.) However, the reference does not specifically discuss the recited insulating layer composition or resin layer composition. ARAI ET AL ‘832 and ARAI ET AL ‘889 and ARAI ET AL ‘797 each discloses an insulating composition comprising: • an olefin-aromatic vinyl compound-aromatic polyene copolymer satisfying the recited conditions (1) to (4) of claim 2; • optionally a surface modifier (e.g., a silane coupling agent, etc.); • optionally solvent; • optionally curing agent; • optionally one or more additive resins (e.g., hydrocarbon elastomers, polyphenylene ether-based resin, aromatic polyene-based resins; etc.); • optionally polar monomer. The reference further discloses a method of forming a coated metal (e.g., copper, etc.) foil, wherein an illustrative method of forming the coated metal foil comprises: • forming a varnish containing the insulating composition and solvent; • applying the varnish to an open surface of a metal foil; • removing the solvent from the applied varnish to form an uncured insulating layer on the metal foil; • curing the insulating layer (e.g., using pressure and/or heat, etc.) to form a cured insulating layer. The reference further discloses that the terms “metal foil” or “copper foil” can encompass metal wiring or copper wiring layers. (ARAI ET AL ‘832, entire document, e.g., paragraph 0010-0019, 0024-0036, 0039, 0044, 0051-0058, 0064, 0082-0093, 0096-0100, etc.) (see corresponding portions of ARAI ET AL ‘889 and ARAI ET AL ‘797) KATAGIRI ET AL ‘382 discloses that it is well known in the art to use polymeric films (e.g., polyimide, liquid crystal polymer (LCP), etc.) as components (e.g., base or support layers, etc.) in laminated bodies for electronic devices (e.g., copper-clad laminate (CCL); flexible printed circuit board (FPC); etc.). (paragraph 0002-0003, 0115-0116, etc.) Regarding claims 1, 3-5, 7-9, 15, 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use known insulating compositions applied by known methods (as disclosed in ARAI ET AL ‘832 or ARAI ET AL ‘889 or ARAI ET AL ‘797) to form the insulating layers (111) in the laminates of KO ET AL ‘084 in order to provide useful multilayer circuitry devices for demanding electronic applications. Further regarding claims 1, 9, one of ordinary skill in the art would have utilized known resin films commonly used as components in CCLs and printed circuit boards (as suggested in KATAGIRI ET AL ‘382) as the carrier layer (210) in the laminates of KO ET AL ‘084 in order to provide support and/or mechanical strength. Regarding claim 6, one of ordinary skill in the art would have utilized an effective amount of a known surface modifier (e.g., silane coupling agent) in the insulating compositions of ARAI ET AL ‘832 or ARAI ET AL ‘889 or ARAI ET AL ‘797 in order to provide improved adhesion to other layers. Regarding claim 9, one of ordinary skill in the art would have formed the laminates of KO ET AL ‘084 by a conventional sequential assembly process -- for example: (i) stacking a copper foil layer (113) on carrier layer (210) with the rougher side of the copper layer (113) contacting the carrier layer (210); (ii) applying a varnish coating containing the insulating composition of ARAI ET AL ‘832 or ARAI ET AL ‘889 or ARAI ET AL ‘797 to the open smooth side of copper foil layer (113); (iii) removing the solvent from the varnish coating to form an uncured insulating layer (111); (iv) curing the uncured insulating layer (111) to form a cured insulating layer (111). Regarding claim 11: (i) ARAI ET AL ‘832 or ARAI ET AL ‘889 or ARAI ET AL ‘797 discloses that metal foil can be discontinuous (e.g., wiring); and (ii) KO ET AL ‘084 discloses various embodiments wherein the copper foil layer can be discontinuous; applying an insulating layer over a discontinuous copper foil layer (e.g., a wiring layer, a pre-structured conductive layer, etc.) would result in an insulating layer (111) formed from a varnish coating which is partially in contact with the smooth surface of copper foil layer (118) (corresponding to the recited “open smooth surface of the first copper foil”) and partially in contact with the second insulating layer (131) (corresponding to the recited “resin layer”) (corresponding to the recited “open pat of the surface of the first resin layer”) This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02. Allowable Subject Matter Claim(s) 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 of record fails to disclose or suggest insulating layers containing a recessed portion with a copper foil contained within the recess, with a portion of the insulating layer bonded to the smooth side of the copper foil and another portion of the insulating layer bonded to the resin layer (claim 2). KO ET AL ‘084 fails to specifically disclose or suggest insulating layers containing copper foil-containing recesses. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JUNG ET AL (US 2012/0125667) and YAMAMOTO ET AL (US 2021/0040360) and YOKONO ET AL (US 5,569,545) and KUWAKO (US 6,107,003) and KUWAKO (US 6,884,944) and JAPP ET AL (US 6,496,356) and HOSOI ET AL (US 2021/0029823) disclose printed circuit boards and/or copper-clad laminates. SYOUJIGUCHI (US 2013/0177739) and SEIP (US 5,779,870) disclose copper foils with smooth and rougher sides. KOMURASAKI ET AL (US 2005/0276958) disclose insulating compositions for circuit boards. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The General Information telephone number for Technology Center 1700 is (571) 272-1700. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form. April 18, 2026 /VIVIAN CHEN/ Primary Examiner, Art Unit 1787
Read full office action

Prosecution Timeline

Apr 15, 2024
Application Filed
Apr 22, 2026
Non-Final Rejection mailed — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12630713
ANTI-CONDENSATION COMPOSITION, ANTI-CONDENSATION LIQUID COOLING PLATE, PREPARATION METHOD AND APPLICATION THEREOF
1y 8m to grant Granted May 19, 2026
Patent 12611851
ALUMINUM-PLASTIC FILM AND SUBSTRATE FOR ALUMINUM-PLASTIC FILM
2y 8m to grant Granted Apr 28, 2026
Patent 12606680
SINGLE-LAYER OR MULTILAYER POLYESTER FILM HAVING A PERMANENT ANTI-FOG COATING AND A TRANSPARENCY OF AT LEAST 92 %
4y 6m to grant Granted Apr 21, 2026
Patent 12559641
PRINTED APPLIANCE COMPONENT
6y 10m to grant Granted Feb 24, 2026
Patent 12533841
ALIPHATIC POLYESTER COPOLYMER
4y 2m to grant Granted Jan 27, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
57%
Grant Probability
86%
With Interview (+29.2%)
3y 5m (~1y 3m remaining)
Median Time to Grant
Low
PTA Risk
Based on 984 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month