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 .
RESPONSE TO AMENDMENT
Claims 1-12 are pending in the application.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in this application on 1 September 2025.
Claim Objections
Claims 5 and 8 are objected to because of the following informalities:
With Regards to Claim 5: Claim 5 recites --biphenyl-tetracarboxylic dianhydride and pyromellitic dianhydride-- in lines 4 to 5, which appears to be a typographical error; for consistency, it is recommended to correct this to read "biphenyl-tetracarboxylic dianhydride (BPDA) and pyromellitic dianhydride (PMDA)".
With Regards to Claim 8: Claim 8 recites --the polyimide film-- in line 5, which appears to be a typographical error; for consistency, it is recommended to correct this to read "the multilayer polyimide film".
With Regards to Claim 8: Claim 8 recites --the polyimide film-- in line 7, which appears to be a typographical error; for consistency, it is recommended to correct this to read "the multilayer polyimide film".
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 1-12 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.
With Regards to Claims 1-12: Instant claim 1 recites --wherein a dielectric dissipation factor is 0.003 or less, and an adhesive strength is 1,000 gf/cm or more-- in lines 4 to 5. The claim is rendered indefinite because it can have several conflicting interpretations: (1) the values pertain to the core; (2) the values pertain to one or more of the skins; or (3) the values pertain to the multilayered polyimide film. For the purposes of examination, the latter interpretation will be applied. As such, the claim will be treated to read as "wherein the multilayer polyimide film has a dielectric dissipation factor of[[is]] 0.003 or less, and an adhesive strength of[[is]] 1,000 gf/cm or more".
Claims 2-12, which depend on claim 1, are rejected for the same reasons as recited above.
With Regards to Claim 4: Instant claim 4 recites processes or reaction steps using the phrase "obtainable by" rather than "obtained by". This renders the claim indefinite as to the scope required by using the phrase "obtainable by" rather than "obtained by". The Federal Circuit has addressed this specific difference in claim wording as "ambiguous language" which is the epitome of indefiniteness. Abbott Laboratories v. Sandoz, Inc., 566 F. 3d 1282, 1295-1296 (Fed. Cir. 2009) (en banc).
With Regards to Claim 5: Instant claim 5 recites processes or reaction steps using the phrase "obtainable by" rather than "obtained by". This renders the claim indefinite as to the scope required by using the phrase "obtainable by" rather than "obtained by". The Federal Circuit has addressed this specific difference in claim wording as "ambiguous language" which is the epitome of indefiniteness. Abbott Laboratories v. Sandoz, Inc., 566 F. 3d 1282, 1295-1296 (Fed. Cir. 2009) (en banc).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kil-Nam et al. (KR 10-2020-0120492 A).
Regarding Claim 1: Kil-Nam teaches a multilayer polyimide film comprising a core layer and one or more skin layers formed on one or more outer surfaces of the core layer, wherein the multilayer polyimide film has a dielectric loss rate (Df, 10GHz) of 0.0030 or less and an adhesion strength of 820 gf/cm or more ([0001] of Kil-Nam).
Regarding Claim 2: Kil-Nam teaches that the multilayer polyimide film comprises the skin layers formed respectively on first and second outer surfaces of the core layer, the second outer surface being a surface opposite to the first outer surface, to have a three-layer structure ([0001], [0024], [0036], and [0052] of Kil-Nam).
Regarding Claim 3: Kil-Nam teaches that the multilayer polyimide film can have a thickness of 25 µm (Table 1, [0223] of Kil-Nam); which anticipates the claimed range of --10 µm or larger and 100 µm or smaller--. See MPEP §2131.03(I). Kil-Nam also teaches that the ratio thickness of the core portion to the sum of the thicknesses of the first skin portion and the second skin portion is 2.5:1 to 5.5:1 (e.g., 5.25), and that the first skin portion can have the same thickness as the second skin portion, and that in one example the core has a thickness of 21 µm (e.g., 84% of the total thickness) and the skins have a thickness of 4 µm (e.g., 16% of the total thickness) (Table 1, [0029], [0069], [0074]-[0075], [0223] of Kil-Nam); which anticipates the claimed range of --70% or more and 95% or less-- and --5% or more and 30% or less--. See MPEP §2131.03(I).
Regarding Claim 4: Kil-Nam teaches the core layer is obtained by reacting a polyamic acid solution through an imidization reaction, the polyamic acid solution comprising: an acid dianhydride component comprising biphenyl-tetracarboxylic dianhydride (BPDA) and pyromellitic dianhydride (PMDA); and a diamine component comprising para-phenylenediamine (PPD) and m-tolidine ([0024] and [0037]-[0038] of Kil-Nam).
(The limitation is considered by the examiner to be a "product-by-process" limitation. As such, only the distinctive structural characteristics imparted by the process to the final product are given weight. See MPEP §2113(I).)
Regarding Claim 5: Kil-Nam teaches the skin layer is obtained by reacting a polyamic acid solution through an imidization reaction, the polyamic acid solution comprising: an acid dianhydride component comprising biphenyl-tetracarboxylic dianhydride (BPDA) and pyromellitic dianhydride (PMDA); and a diamine component comprising para-phenylenediamine (PPD), m-Tolidine, and oxydianiline (ODA) ([0024] and [0037]-[0038] of Kil-Nam).
(The limitation is considered by the examiner to be a "product-by-process" limitation. As such, only the distinctive structural characteristics imparted by the process to the final product are given weight. See MPEP §2113(I).)
Regarding Claims 7 and 8: Kil-Nam teaches the claimed multilayer polyimide film, but does not explicitly recite --the core layer comprises a block copolymer comprising two ore more blocks-- {instant claim 7} or --the block copolymer comprises: a first block comprising 50 mol% or more and 60 mol% or less of the BPDA based on 100 moles of the total content of the dianhydride component in the [multilayer] polyimide film; and a second block comprising 30 mol% or more and 40 mol% or less of the m-Tolidine based on 100 mol% of the total content of the diamine component in the [multilayer] polyimide film-- {instant claim 8}. However, Kil-Nam provides the same materials in the same process to produce the same product (i.e., the multilayer polyimide film comprising a core layer one or more skin layers formed on one or more outer surfaces of the core layer, wherein the multilayer polyimide film has a dielectric dissipation factor of 0.003 or less, and an adhesive strength of 1,000 gf/cm or more; see (Table 1, [0001], [0024]-[0026], [0029], [0036]-[0038], [0069], [0074]-[0075], [0052], [0223]) of Kil-Nam and ([50], [53]-[55], [60], [96]-[100]) of the filed specification). Therefore, it is the decision of the examiner that Kil-Nam inherently possesses a block copolymer comprising two ore more blocks {instant claim 7}, and that the block copolymer comprises: a first block comprising 50 mol% or more and 60 mol% or less of the BPDA based on 100 moles of the total content of the dianhydride component in the [multilayer] polyimide film; and a second block comprising 30 mol% or more and 40 mol% or less of the m-Tolidine based on 100 mol% of the total content of the diamine component in the [multilayer] polyimide film {instant claim 8}
Regarding Claim 10: Kil-Nam teaches that the multilayer polyimide film is formed by one or more selected from the group consisting of co-extrusion ([0036] of Kil-Nam).
(The limitation is considered by the examiner to be a "product-by-process" limitation. As such, only the distinctive structural characteristics imparted by the process to the final product are given weight. See MPEP §2113(I).)
Regarding Claim 11: Kil-Nam teaches a flexible metal-clad laminate comprising the multilayer polyimide film and an electrically conductive metal foil ([0039] of Kil-Nam).
Regarding Claim 12: Kil-Nam teaches an electronic component comprising the flexible metal-clad laminate ([0040] of Kil-Nam).
Claim Rejections - 35 USC § 103
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.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kil-Nam et al. (KR 10-2020-0120492 A) as applied to claims 4 and 5 above.
Kil-Nam is relied upon as stated above.
Regarding Claim 6: Kil-Nam discloses the BPDA has a content of 30 mol% or more and 70 mol% or less, and the PMDA has a content of 30 mol% or more and 70 mol% or less, based on 100 mol% of the total content of the acid dianhydride component, and the PPD has a content of 30 mol% or more and 70 mol% or less, and the m-Tolidine has a content of 30 mol% or more and 70 mol% or less, based on 100 mol% of the total content of the diamine component ([0025] of Kil-Nam); which overlaps the presently claimed ranges. Kil-Nam differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kil-Nam, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05.
Regarding Claim 9: Kil-Nam discloses the BPDA has a content of 20 mol% or more and 80 mol% or less, and the PMDA has a content of 20 mol% or more and 80 mol% or less, based on 100 mol% of the total content of the acid dianhydride component, and the PPD has a content of 3 mol% or more and 30 mol% or less, and the m-Tolidine has a content of 50 mol% or more and 80 mol% or less, and the ODA has a content of 5 mol% or more and 30 mol% or less, based on 100 mol% of the total content of the diamine component ([0026] of Kil-Nam); which overlaps the presently claimed ranges. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kil-Nam, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
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