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 .
Examiner’s Note
The Examiner acknowledges the amendment of claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (WO 2020/213669 A1), in view of Morgan et al. (CA 1339337) (1998) and Kasagi et al. (US 2019/0074104 A1).
*US 2022/0220265 A1 is cited herein as the English language equivalent of WO 2020/213669 A1
With regard to claim 1, Imamura et al. teach a substrate (i.e. “dielectric sheet”) composed of fluororesin, such as polytetrafluoroethylene (PTFE) (paragraph [0003]). To improve the properties, substrate (dielectric) comprises granular inorganic filler, such as silica (paragraphs [0003] & [0057]). When the total of the resin and the filler is 100 parts by mass, the loading amount of the filler in the composite, which is typically from 10 parts by mass to 90 parts by mass, preferably 50 parts by mass or more and 65 parts by mass or less (paragraph [0059]). A mass ratio of 65:35 is 1.85, which is greater than 1.3.
The average primary particle diameter of the non-porous inorganic fine particles is preferably 0.3 µm or more and 5 µm or less (paragraph [0068]), which includes Applicant’s claimed range of 0.3 – 4.0 µm. As set forth in MPEP 2144.05, in the case where the claimed range “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). Examples of inorganic filler silica or glass balloons (i.e., “spherical”) (paragraph [0058]).
The fluororesin is fibrillated as fibrils (i.e., “fibrous bodies”) which are oriented in one direction or a plurality of directions. The fibrillation or the like of the fluororesin may be recognized through the observation of its surface with a SEM or the like (paragraph [0052]).
Imamura et al. do not teach at least part of fibrous bodies among the plurality of fibrous bodies has areas with a thickness of 0.1 µm or more and 3.0 µm or less and a length of 50 µm or more and 5000 µm or less.
Morgan et al. teach a blend of plastic and fibrillated PTFE. The resulting blend has improved tear strength and abrasion resistance (i.e., “improved durability” described throughout Applicant’s specification) (pg. 5, lines 3 – 4). When blended into an elastomer or a plastic resin by a procedure that involves shearing action, the modified polytetrafluoroethylene resin will be present in the form of platelets that are roughly oblong (fiber-shape), having a size of between 2 – 5 µm in thickness and about 10 – 500 µm in length, which overlaps Applicant’s claimed range of 50 – 5,000 µm (pg. 4, lines 19 – 27).
Therefore, based on the teachings of Morgan et al., it would have been obvious to one of ordinary skill in the art to form the fibrillated PTFE having an elongated platelet (i.e. fiber) form, wherein the fiber has a thickness of 2 – 5 µm and a length of about 10 – 500 µm, in order to achieve a plastic composition of desired tear strength and abrasion resistance (i.e. good durability).
Imamura et al. do not teach an average space between the areas of the at least part of fibrous bodies is 10 µm or less. (See Applicant’s specification, paragraph [0023] and L1 of Fig. 18 regarding the definition of “average space between the at least part of fibrous bodies”). Imamura et al. do not teach the arrangement of the PFTE fibrils or the method of manufacturing the PTFE substrate to achieve the PTFE fibrils observable by SEM.
Kasagi et al. teach an insulating (i.e. dielectric) resin material comprising polytetrafluoroethylene (PTFE) fibrillated into fibrils (i.e. fibrous bodies) (paragraph [0063] and multidirectionally oriented in a three-dimensional network (paragraphs [0014], [0018], [0034], [0066]). Fibrillation of the PTFE particles and the three-dimensional network of multidirectional fibers (i.e. average space between fibrous bodies) is affected by multiple factors, include magnitude of shear force to be applied, temperature, presence of an arbitrary lubricating fluid between inorganic particles, and a multi-stage roll-forming step (paragraphs [0065] – [0066] & [0080]). Furthermore, when the degree of fibrillation of PTFE particles is high, an insulating resin material formed of a structure having high mechanical strength is obtained (paragraph [0065]).
Therefore, based on the teachings of Kasagi et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the degree of fibrillation of PTFE particles and parameters of the multi-stage roll-forming step through routine experimentation in order to achieve the directed three-dimensional orientation and network configuration of the fibrils (i.e. spacing between fibrous bodies to form said network) and thus achieve the desired high mechanical strength. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 2, Imamura et al. do not explicitly teach a peel strength in the 180-degree peel tests is 10 N/cm or more
However, Imamura et al. teach as the thickness of the resin layer (of the substrate) is in the preferred range, peeling of the conductor layer can be effectively suppressed (paragraph [0093]). Furthermore, heating and pressurization to form the resin layer is optimized to suppress peeling (paragraph [0158]). Therefore, the peel strength can be optimized.
Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the thickness and method step conditions (heating and pressure) through routine experimentation in order to achieve a desired peel strength when peeled from a conductor. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 3, Imamura et al. teach the variation value of the contents of the filler be 11% or less (paragraph [0033]). The non-porous inorganic finer particles may be used alone or in combination (paragraph [0067]). Therefore, Imamura et al. suggests an embodiment comprising 89 – 100 mass% silica balloons, which is within Applicant’s claimed range of 70 mass% or more and 100 mass% or less.
With regard to claim 4, Imamura et al. teach the surface of the filler may be modified with a surface modifier includes a hydrocarbon group having 1 – 30 carbon atoms (paragraphs [0074] – [0076]), which overlaps with Applicant’s claimed range of 4 or more carbon atoms.
With regard to claims 5 – 6, Imamura et al. teach a substrate for a high frequency printed wiring board (paragraphs [0002] & [0068] – [0069]), comprising a conductive layer, such as a copper layer, is formed on the substrate (“dielectric sheet”) (paragraphs [0016], [0095] – [0096], & Fig. 5).
Response to Arguments
Applicant argues, “Applicant respectfully submits that, as used in claim 1, the ‘thickness’ of the fibrous body means the width of the fibrous body in a direction perpendicular to its length, as observed in the SEM image after the 180-degree peel test. For example, where the fibrous body is round in cross-section, the thickness is the diameter of the fibrous body. Where the fibrous body is not round in cross-section, the thickness is the dimensions of the cross-section perpendicular to the length of the fibrous body” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: In light of Applicant’s clarification of “thickness” as recited in claim 1, the rejection under 35 U.S.C. § 112(b) has been withdrawn.
Applicant argues, “Applicant’s specification paragraph [0014], [0033], [0034], and [0035] likewise present these measurements in terms of the post-peel SEM measurement test and explains that, in the peel test, the fibrous bodies are extended and oriented in one direction along the peeling surface, and that the resulting post-peel condition is directly correlated with peel strength. Thus, the post-peel features recited in claim 1 define the very way in which Applicant defines claim 1 dielectric sheet, and are not merely an irrelevant testing label. Morgan’s disclosure of platelet dimensions in a different setting, without any peel test at all, therefore does not reasonably teach or suggest Applicant’s claim 1 post-peel fibrous bodies characteristics” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant, on the other hand, appears to argue that the peel-test is a manufacturing step that is performed with the intention of altering the final structure. However, Applicant has failed to provide any evidence to suggest the peel-test alters the final structure of the recited dielectric sheet.
Applicant argues, “The Examiner’s interview position also appears to assume that, so long as Morgan supplies a dimension and Imamura is ‘capable’ of achieving something similar, the claim 1 element is met. Applicant respectfully submits that ‘capable of achieving’ is not a substitute for a reasoned obviousness explanation addressing all claim limitation. The Patent Office must still explain why the claim 1 invention as a whole would have been obvious, including the very specific post-peel features recited in claim 1. Here, that explanation is lacking. Morgan's platelet dimensions, standing alone, do not supply the missing teaching of Applicant’s post-peel SEM-defined fibrous-body features” (Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. By “post-peel SEM-defined fibrous-body features,” it is assumed Applicant is referring to the recited “average space between areas of the at least part of fibrous bodies is 10 µm or less.” This particular feature was discussed in the previous office action. As for any other post-peel features which Applicant may be eluding to, Applicant has failed to provide any evidence to suggest the peel-test alters the final structure of the recited dielectric sheet.
Applicant argues, “Second, the proposed combination of Imamura and Morgan is improper because there is no motivation to combine. A person of ordinary skill in the art starting with Imamura would not have turned to Morgan because Morgan teaches away from utilizing fibrillation, while Imamura recognizes fibrillation as a favorable feature” (Remarks, Pgs. 8 – 11).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Morgan et al. was cited as motivation for forming the plurality of PTFE fibrous (platelet) bodies with Applicant’s claimed dimensions for achieving desired strength and abrasion resistance (i.e., good durability). A person of ordinary skill in the art would consider strength and abrasion resistance to be proper motivation to combine the teachings of Imamura and Morgan et al.
Second, the method of forming said plurality of PTFE fibrous bodies, such as fibrillation, is not pertinent to the rejection because Applicant’s claims are drawn to a product, not a method of manufacturing. There is no reason to believe the fibrillation method taught by Imamura would not be capable of achieving the same fibrous dimensions taught by Morgan et al. and recited by Applicant’s claim 1.
Applicant argues, “Accordingly, because Morgan does not teach or suggest a peel test, teaches away from fibrillation, and instead teaches forming platelets, the Office Action’s assertion that Applicant’s fibrous body is equivalent to Morgan’s platelet is improper. Rather, Morgan teaches the platelet as a replacement for a fibrous body to avoid fibrillation” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The dimensions of Morgan’s platelets are described as oblong and overlap with Applicant’s recited fiber dimensions. A person of ordinary skill in the art at the time of the effective filing date would consider an oblong platelet shape, wherein the length is more than 500x to 1000x longer than the width (i.e., thickness) to meet the definition of a fiber.
Applicant argues, “Applicant respectfully submits that there is insufficient support for ‘routine optimization’ of the claim 1 feature ‘average space between the areas of the at least part of fibrous bodies.’
“In effect, the Office Action equates the claim 1 feature ‘average space between the areas of the least part of fibrous bodies’ with Kasagi’s three-dimensional network of multidirectional fibrils. But those two things cannot reasonably be equated, Like, Imamura and Morgan, Kasaki does not teach anything related to peel test. Applicant’s independent claim 1 recites the average space between fibrous bodies (L1 and L2), as shown in Fig. 18 of Applicant’s application, after a peel test, whereas Kasagi’s fibril network is merely a structure feature of Kasagi’s resin, as described in paragraph [0018] of Kasagi” (Remarks, Pgs. 13 – 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as discussed above, Applicant’s has failed to demonstrate the peel test has any evidence to suggest the peel-test alters the final structure of the recited dielectric sheet compared to the structure before the peel step (i.e., “peel test”) is conducted.
Second, Applicant has failed to demonstrate that the spacing between fibrous bodies can only be achieved via application of a peeling step (Applicant’s recited peel-test), as well as not possible to achieve via routine experimentation of other methods of spacing fibrous bodies, such as taught by Kasaki.
Applicant argues, “Further, the list of factors identified by the Office Action is not short and does not show any realistic way of conducting routine experimentation. The amount of experimentation required to find a balance among all of those factors would not have been routine” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the office listed five factors: (1) degree of fibrillation of PTFE particles, (2) magnitude of force during fibrillation, (3) temperature during fibrillation, (4) lubricating fluid, (5) multi-stage roll-forming step. A person of ordinary skill in the art would consider five factors, which can be counted on one hand, to be a fairly short list. One of ordinary skill in the art would consider each of these variables to be within the skill set of routine experimentation.
Applicant argues, “In response to the Examiner’s argument during the telephone interview of May 4, 2026, that Kasagi’s network configuration effectively corresponds to spacing and that optimization of the network would render Applicant’s claimed spacing obvious, Applicant respectfully requests reconsideration based on the following.
“Applicant respectfully submits that the evidentiary bridge is missing. Kasagi discusses a multidirectional fibril network and mechanical strength in a general sense. Claim 1, however, is directed to a very specific average space measured after a 180-egree peel test in a particular SEM measurement approach. Applicant’s specification explains in detail how the average space is determined, including the projected-line treatment of the fibrous bodies, the approximate line segments, the rotation relative to the peeling vector, and the adjacent distance calculation. This is not the same thing as merely saying that a fibril network exists. The Office Action’s equating of ‘network configuration = spacing’ collapses Applicant’s specific post-peel measurement into a far more general preexisting network structure, and that leap is not supported by Kasagi (or Imamura or Morgan)” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, a person of ordinary skill in the art would describe a three-dimensional network of fibers as a comprising a plurality of fibers, wherein some of the plurality of fibers intersect at occasional locations in the network and a plurality of spaces between some plurality of fibers at other locations in the network. Kasaki et al. clearly describes the variables that effect the formation of said three-dimensional network. Therefore, a person of ordinary skill in the art would recognize the variables that effect the method of forming said network of fibers can be optimized to achieve the desired spacing between said fibers of three-dimensional network.
Based on the teachings of Kasaki, a person of ordinary skill in the art understands that the dimensions of the three-dimensional network, including the spacing of the fibers, directly impacts the mechanical strength of said three-dimensional network.
Second, Applicant’s claims are drawn to a dielectric sheet (i.e., a product). The claims are not drawn to a method of manufacturing. Therefore, as long as it is within the knowledge of one of ordinary skill in the art for achieving the recited spacing, the method of achieving said spacing, such as Applicant’s recited peel step (i.e., peel test), is not a patentable feature.
Third, Applicant has failed to demonstrate that the spacing between fibrous bodies can only be achieved via application of a peeling step (Applicant’s recited peel-test), as well as not possible to achieve via routine experimentation of other methods of spacing fibrous bodies, such as taught by Kasaki.
Fourth, Applicant’s claims are drawn to a product, not a method of measuring spacing between fibers. Therefore, Applicant’s detailed approach to measuring the average spacing, as described in the specification, is not a patentable feature. The rejection of the claimed spacing was not based on simply a statement of a fibril network existing, but rather, that one of ordinary skill in the art would know how to adjust the variables of forming said network to achieve a desired spacing between said fibers of the network which would render the fiber network with a desired mechanical strength.
Fifth, Applicant has failed to demonstrate the claimed spacing between fibers, regardless of the method of achieving said spacing, achieves unexpected results.
Applicant argues, “The Office Action also contents that a ‘showing of criticality with respect to thickness (a result effective variable)’ is required to assert that routine experimentation would result in Applicant’s invention…Applicant respectfully submits that the Office Action’s assertion is misplaced because Kasagi does not teach that the thickness of the fibrous body is a ‘result-effective variable’ that can be adjusted to obtain the claim 1 ‘average space’, much less how such variable peel-resistance strength at all” (Remarks, Pg. 15).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The reference to thickness was a “copy/paste” typographical error, as demonstrated by the non-sensical first sentence of the paragraph. The typographic error has been removed in the current action.
The paragraph in the rejection cited by Applicant clearly discusses the relationship between a number of variables that influence the dimensions (including spacing between fibers) of a three-dimensional fiber network during the fibrillation manufacturing process and a desired mechanical strength of said three-dimensional fiber network.
Applicant argues, “As to the Examiner’s argument that overlapping ranges render the claim 1 range obvious, Applicant submits that the claim 1 upper limit (4.0 µm) is substantially below the upper limit of Imamura’s non-porous filler size (5 µm), and Applicant’s specification provides data tying particle sizes above 4 µm (e.g., 7 µm) with poor workability. In view of Applicant’s Table 1 data, the Examiner’s overlap rationale is insufficient, as it fails to show why a skilled person in the art would have been motivated to selected the narrow range of ‘0.3 – 4.0 µm’, especially in combination with the claim 1 post peel-test SEM-defined fibrous body ‘thickness,’ ‘length,’ and ‘average space’ features.
“The 0.3 – 4.0 µm range together with the last clause of claim 1 ha criticality associated with it. The Table 1 data show that, even when the particle diameter lies within the claim 1 ‘0.3 – 4.0 µm’ range, some comparative samples, e.g. Nos. 1, 2, and 4, do not satisfy the claim 1 fibrous-body thickness, length, and average spacing requirements and correspondingly have poor peel strength and workability. Only the invention samples No. 3 and No. 5 combining the particle-size range of ‘0.3 – 4.0 µm’ with the claim 1 post peel-test fibrous-body thickness, length, and average spacing features achieved the desired excellent high peel strength and workability” (Remarks, Pgs. 17 – 20).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, The Examiner did not assert the claim ranges overlapped. The Examiner asserted Applicant’s claimed range was within the larger range taught by the cited reference.
Second, the Imamura et al. reference teaches the inorganic fine particles have a preferred average diameter ranges of 0.3 µm – 5 µm (paragraph [0068]). A preferred embodiment by the reference is an explicit teaching by said reference that improved properties occur within the preferred range compared to outside said preferred ranges. Therefore, a showing of unexpected results is a comparison to the explicitly disclosed preferred range that is closest to Applicant’s claimed range, not the broadest range disclosed by the reference.
Third, Applicant’s claimed range is an average particle diameter of 0.3 µm – 4 µm. Therefore, Applicant must demonstrate the criticality of the upper endpoint of 4 µm compared to the preferred upper endpoint of 5 µm taught the reference. Applicant’s comparative samples No. 6 & No. 7 comprising silica particles of 7 µm is too far outside the claimed range for demonstrating criticality of the claimed upper endpoint of 4.0 µm.
Applicant’s Table 1 does not provide sufficient criticality of the claimed range. To show the criticality of a claimed range requires providing data for samples containing the claimed endpoints and comparative examples barely outside the claimed range. Applicant’s claimed range is 0.3 – 4.0 µm. The claim does not use the term “about” to describe these endpoints. Therefore, Applicant’s evidence for demonstrate criticality of the claimed range must include a sample comprising silica with a diameter of 0.2 µm (broad range taught by reference), a sample comprising silica with a diameter of 0.3 µm (Applicant’s claimed lower endpoint), another sample comprising silica with a diameter of 4.0 µm (Applicant’s claimed upper endpoint), and another sample comprising silica with a diameter of 5 µm (preferred upper endpoint taught by the reference). Applicant’s Table 1 fails to provide such samples.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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