DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/13/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, 6, and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The disclosure as filed fails to provide written descriptive support for the newly added claim limitation in claim 1 requiring “a F/C ratio of the surface of the low dielectric polymer substrate decreases by 50% or more compared to that prior to the ion beam pretreatment.” Applicant cites data in their arguments that is argued to be “supported by Fig.7.” However, it is not clear how the data in the table is connected to the graph of CPS vs. binding energy in Figure 7.
Furthermore, it is noted that the data only appears to describe decreases in the F/C of about 79% and 96% (i.e., (1- 0.42/1.97)x100 =79% for H2 gas treatment and (1-0.04/1.97)x100= 96% for Ar/H2 gas treatment as per Applicant’s arguments and the table cited therein). Thus, even if Applicant were to establish that this data is part of the original disclosure, it would not provide support for the full scope of the claimed decrease of “50% or more.”
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.
Claim(s) 1-2, 6 and 8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by KR 10-0391778 (English machine translation filed by Applicant with the IDS of 7/12/24) as evidenced by the Technical Data Sheet for PTFE at Alro.com (see https://alro.com/datapdf/plastics/technicaldatasheets/TDS_PTFE/pdf).
With regard to claims 1 and 8, Koh et al. discloses a polymer substrate formed from a fluorine-containing polymer, PTFE (claims 1, 7 and page 6, table in the next to last paragraph), wherein the substrate is surface treated via an ion beam treatment to reduce the water contact angle of the surface and thereby improve adhesion with a metal layer formed thereon (p 5, third full paragraph). The reference teaches that any one of six explicitly names gases can be used for the surface treatment. The group of suitable gases is small enough that one of ordinary skill in the art would immediately envisage an embodiment using hydrogen gas in the ion beam treatment step (see p. 5, first full paragraph). The reference fails to disclose a specific embodiment wherein (1) the dielectric constant of the PTFE is 3 or less, (2) a F/C ratio of the surface of the PTFE decreases by 50% or more compared to that prior to the ion beam pretreatment and (3) the water contact angle of the PTFE is 50° or less.
With regard to (1), PTFE is known in the art to be a low dielectric material with a dielectric constant of 2.1 as evidenced by the Technical Data Sheet for PTFE by Alro (see https://alro.com/datapdf/plastics/technicaldatasheets/TDS_PTFE/pdf).
With regard to (2), the same materials (PTFE) treated in the same manner (ion beam treatment with hydrogen gas) would be expected to inherently exhibit the same properties in the absence of a showing to the contrary.
With regard to the claimed water contact angle of PTFE being 50°or less, the only specific example using PTFE taught by Koh et al. has a water contact angle of 71°. However, this example does not use hydrogen gas. Thus, one of ordinary skill in the art would reasonably expect that the same material (PTFE) treated by the same method (ion bean treatment using hydrogen gas) would inherently produce a layer having a contact angle of 50° or less as claimed.
It has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
With regard to claim 2, see p. 6, next to last paragraph.
With regard to claim 6, the Example on page 6 uses a Cu metal layer.
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.
The rejection of claim(s) 1-6 and 8 under 35 U.S.C. 103 as being unpatentable over Koh et al. (KR 10-0391778 -English translation cited on IDS of 7/12/24) is withdrawn in view of Applicant’s amendments.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koh et al. (KR 10-0391778 -English translation cited on IDS of 7/12/24) as evidenced by the Technical Data Sheet for PTFE by Alro (see https://alro.com/datapdf/plastics/technicaldatasheets/TDS_PTFE/pdf ).
With respect to claim 4, Koh as evidenced by the Technical Data Sheet for PTFE teaches all of the limitations of the claim except for the claimed thickness of the polymer substrate layer. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to determine an optimal thickness for the polymer substrate taught by Koh et al. based on the desired end use of the coated substrate. Determination of suitable thicknesses would have been within the level of ordinary skill in the art.
Claim(s) 1-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koh et al. (KR 10-0391778 -English translation cited on IDS of 7/12/24) in view of JP 2021-116440.
Koh et al. teaches all of the features of the claims, as detailed above under section 102, but does not disclose the use of ceramic instead of metal on the polymer layer.
JP’440 discloses an ion beam irradiated polymer having a thin film of metal such as Cu or oxides such as ITO formed thereon. The reference teaches that the irradiated polymer surface has improved adhesion to all of the disclosed thin film materials (para [0008] and [0017]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use a ceramic oxide layer such as ITO in place of the metal layer taught by Koh et al. in view of the art recognized equivalence of using either in conjunction with a polymer substrate.
Claims 2-6 and 8 are met for the reasons set forth above.
Response to Arguments
Applicant's arguments filed 3/13/26 and entered with the RCE filed 4/14/26 have been fully considered but they are not persuasive.
Applicant argues neither Koh nor Satake teaches or suggests the newly claimed F/C ratio decrease after ion beam pretreatment.
As noted in the statement of rejection under 35USC 102, above, Koh would be expected to inherently meet this limitation as it discloses ion beam treatment of a PTFE layer with H2 gas. The same material treated by the same method would be expected to exhibit the claimed properties of F/C ratio decrease and water contact angle in the absence of evidence to the contrary.
With regard to the claimed low dielectric polymer layer having a dielectric constant of 3 or less, PTFE is known in the art to have a dielectric constant of less than 3 as evidenced by the Technical Data Sheet for PTFE at Alro.com (see https://alro.com/datapdf/plastics/technicaldatasheets/TDS_PTFE/pdf ).
Applicant further argues that while Koh mentions the use of single gases including hydrogen, the reference only describes examples using oxygen and not the claimed hydrogen or argon followed by hydrogen gas now set forth in claim 1. However, the disclosure is not limited to the examples. It explicitly teaches the use of hydrogen gas on its own and the group of disclosed gases is small enough that one of ordinary skill in the art would immediately envisage an embodiment using only hydrogen gas.
Applicant further argues that Koh does not disclose any particular effect attributable to the hydrogen gas treatment as required by the claims. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant’s data supports the conclusion that ion beam treatment with hydrogen gas would result in the claimed properties (Figure 5, for instance, shows that ion beam treatment with H2 gas yields water contact angles less than 50°.
Likewise, the results shown in Figures 7-10 and 12 of the present application would be expected in association with the hydrogen ion beam treatment disclosed by Koh in the absence of evidence to the contrary.
Finally, Applicant argues that Koh discloses a metal layer that is more than 10 times thicker than that of the present invention. This argument is moot because the claims do not particularly limit the thickness of the metal film used therein.
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 HOLLY RICKMAN whose telephone number is (571)272-1514. The examiner can normally be reached Mon, Tues, Thurs, 9am-3pm ET.
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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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/Holly Rickman/Primary Examiner, Art Unit 1785
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