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 .
DETAILED ACTION
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Tagawa et al. (US Patent 6,402,868 B1, published 11 Jun. 2001, hereinafter Tagawa).
Regarding claims 1 and 3, Tagawa teaches a method of bonding a resin bonding layer with a sheet material, utilizing a hot press (hot plate), and subjecting the material to thermocompression bonding (Abstract). Tagawa teaches the heating temperature is in the range of 200 to 550°C under a pressure of 0.001 to 50 kgf/cm2 (col. 4, lines 4-13), and the time required for hot pressing ranges from 0.1 second to 30 minutes, more preferably 1 second to 5 minutes (col. 4, lines 18-22). Tagawa teaches using his process to bond a sheet material to a resin bonding layer (Abstract), the sheet material is a thermoplastic polyimide (col. 4, lines 48-54), and the resin bonding layer is thermoplastic polyimide (col. 4, line 58 – col. 5, line 3).
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a heating temperature and a heating time from the overlapping portions of the ranges taught by Tagawa because overlapping ranges have been held to be prima facie obviousness.
In light of the overlap between the claimed polyimide film bonding method and that disclosed by Tagawa, it would have been obvious to one of ordinary skill in the art to use a polyimide film bonding method that is both disclosed by Tagawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tagawa et al. (US Patent 6,402,868 B1, published 11 Jun. 2001, hereinafter Tagawa) in view of Kreuz and Edman (“Polyimide Films,” Adv.Mat., Vol. 10, No. 5, pp. 1229-1232, published 1998, hereinafter Kreuz) and evidence provided by Millipore Sigma (“Pyromellitic dianhydride,” accessed 29 Apr. 2026, hereinafter Millipore) and PubChem (“4,4’-Diaminodiphenyl ether,” accessed 29 Apr. 2026, hereinafter PubChem).
Regarding claim 2, Tagawa teaches the elements of claim 1, and Tagawa teaches the polyimide of his bonding layer comprises pyromellitic acid dianhydride (col. 5, lines 4-17) and 4,4’-Diaminodiphenyl ether (col. 5, lines 31-44).
As evidenced by Millipore and PubChem, pyromellitic dianhydride and 4,4’-diaminodiphenyl ether have the structures:
PNG
media_image1.png
350
352
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Greyscale
pyromellitic dianhydride
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456
324
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Greyscale
4,4’-diaminodiphenyl ether
These monomers form the polyimide repeat unit of Chemical Formula 2.
Tagawa teaches his sheet material is polyimide (col. 4, lines 48-54); however, he does not disclose the chemical composition of the polyimide in his sheet material.
Kreuz teaches polyimide films in which the polyimide is comprised of the monomer pyromellitic dianhydride and 4,4’-diaminodiphenyl ether (page 1230, 1st column, 1st paragraph), and these films have been adopted for applications in flexible printed circuits (page 1229, 2nd column, 1.2 Markets section, 1st paragraph).
Given that Tagawa and Kreuz are drawn to polyimide films, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyimide taught by Kreuz as the polyimide for the sheet material in the process taught by Tagawa. Since Tagawa and Kreuz are both drawn to polyimide films, one of ordinary skill in the art would have a reasonable expectation of success in using the polyimide taught by Kreuz as the polyimide for the sheet material in the process taught by Tagawa. Further, Kreuz these polyimide films have been adopted for applications in flexible printed circuits, where their excellent dielectric properties are utilized in the circuitry and dimensional inertness to solvents and to solder bath temperatures (about 250°C) is required in processing (page 1229, 2nd column, 1.2 Markets section, 1st paragraph).
Additionally, Kreuz teaches (page 1229, 2nd column, 1.3 Commercial Films section, 1st paragraph):
“Improvements in polyimide films have been developed over the years in response to market demands. Examples are lower in-plane coefficients of thermal expansion, higher adhesion, lower water absorption, lower coefficients of hygroscopic expansion, better hydrolytic stability, caustic etchability, and lower dielectric constants. These enhancements in the original properties of aromatic polyimide films, as well as the basic thermal/electrical attributes, are represented in the marketplace primarily by Kapton from DuPont, Upilex from Ube, and Apical from Kanegafuchi.”
Response to Arguments
Applicant's arguments filed 03 Jul. 2026 have been fully considered, but they were not persuasive. Applicant’s amendments have necessitated revised grounds of rejection, which are presented above.
Applicant amended claim 1.
Applicant argues that Millipore and PubChem are not prior art.
However, Miller and PubChem are only used as evidence references to teach the chemical structures of the monomers taught by Tagawa. As set forth in MPEP 2124, references cited to show a universal fact need not be available as prior art before applicant’s filing date, In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Therefore, the use of Miller and PubChem is proper.
Applicant argues that Tagawa teaches an intermediate layer between polyimide layers, and amended claim 1 requires direct bonding between polyimide layers.
However, Tagawa teaches his resin bonding layer is a thermoplastic polyimide, as presented above. Tagawa teaches one may use a non-thermoplastic polyimide or other non-flowable film in his invention, in which case the non-flowable material is coated with a thermoplastic polyimide, which also results in a direct contact between two polyimide layers as claimed in the current invention.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. 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, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787
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