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 .
Applicant's submission filed on 6/19/26 has been entered. Claims 1-4 and 6-9 are currently pending examination, claims 5, and 10-16 are withdrawn.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Komoda et al (“The effect of yielding of dense silica slurry on the uniformity of coated layer” J. Coat. Technol. Res. 19(1) 61-72, July 29, 2021; provided in 9/3/25 IDS; hereafter Komoda).
Claim 1: Komoda teaches a coating method (See, for example, abstract, Fig 3b) comprising:
using a coating apparatus (comma coater) including a conveying roller (back up roller O’) that feeds a substrate that is wound and has an elongated shape (see, for example, Fig 3b, pg 64);
a knife coater (comma roll “O”) that is disposed above the conveying roller with a gap (wet gap) from the conveying roller, has a columnar or cylindrical shape, and is provided with a knife portion (knife edge) (see, for example, Fig 3b, pg 64);
and a liquid-reserving member (such as un-named wall / baffle feature in Fig 3b in contact with, and serving to contain the slurry) having a one end portion positioned on a side of the conveying roller and partitioning a liquid-reserving space together with the conveying roller, to form a coating film of a coating liquid stored by the liquid-reserving member on a surface of the substrate (See, for example, Fig 3b),
wherein the coating liquid contains a resin (such as PVA-1700), a solvent (water), and a filler (silica), an outer diameter of the conveying roller (backup roller) is 120 mm, an outer diameter of the knife coater (comma coater) 90 mm, and a distance from the gap to the one end portion of the liquid-reserving member is on the order of less than ~94.2 mm (as calculated via the arc length of the backup roller assuming an angle of less than or equal to 45o; an arc angle of 45o was selected as the relative proportions / positioning of the features of Fig 3b generally suggest an arc angle well below 45o, (so such a higher angle threshold was selected as the depiction appeared well within such range); the examiner further notes that given the roller diameter of 120mm of Komodo, an angle of less than ~57o would further satisfy the claimed condition, which further still is well above the general suggestion of the angle depicted within Fig 3b) (See, for example, Fig 3b, pg 64); (additionally the examiner notes that although the image is not labeled “to scale” the measured ratio of R1/ R2 as depicted (measured from enlarged computer monitor view at 3.6 cm / 4.9 cm or ~0.735 ) is essentially the same ratio as explicitly recited (90 mm / 120 mm or 0.75) thus suggesting the figure is reasonably to scale. If not anticipated outright, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a distance within the claimed range since such a distance is generally suggested by prior art considering the relative dimensions and orientation of the rollers and coating system components.
Komoda has further taught the formation of a coating film comprising resin (PVA), solvent (water) and filler (fused silica) at a vol% of filler of 40 vol% and further embodiments with additional amounts of PVA, such as 15 wt% being added to influence coating and rheological conditions (see, for example, pg 62-63, and Fig 3). Although not explicitly 65-95 parts by mass with respect to 100 parts by mass of a mixture of the resin and the filler as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a concentration within the claimed range since generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).
Claim 2: Komoda further teaches wherein the solvent (water) is contained in a content of ~60 vol %, or by conversion about 36 to 57 parts to 100 parts by mass of a mixture of the PVA and the filler (see, for example, pg 63, conversion based on an aqueous mixture of 40 vol% silica and 0.2 wt % PVA). Although such a range is not explicitly 10 to 50 parts, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an amount within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim(s) 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Komoda as applied to claim 1 and 2 above, and further in view of Kasai et al (JP 2020180245; citations directed to machine translation provided herein; hereafter Kasai).
Claim 3: Komoda further teaches wherein the viscosity influences the requisite coating conditions of a formulation to achieve uniform layers (See, for example, abstract, 62-63, conclusion). They both are concerned with the uniformity of applied layers, but they do not explicitly teach wherein the coating liquid has a viscosity of 100 to 20000cP at 25oC. Kasai teaches a method of applying coatings comprising resin, filler and solvents, further for producing layers within printed circuit boards (See, for example, [0001], [0007]). Kasai further teaches wherein the viscosity of coating dispersion liquid should preferably be 100 to 5000 cP (mPa-s) at 25C to provide excellent dispersibility and improved filling and thus resulting in enhanced ease of forming a highly flat coating layer (See, for example, [0009], [0037]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a viscosity of 100 to 5000 cP at 25oC since it would predictably provide a coating formulation with excellent dispersibility and improved filling, and enhanced ease of forming a high flat coating.
Claim 6: refer to the rejections of claims 2 (over Komoda) and 3 (over Komoda and Kasai) above.
Claim(s) 1-4, and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al (US 2013/0081865; hereafter Mizuno) in view of Komoda.
Claim 1: Mizuno teaches a coating method (See, for example, abstract, Fig 1, [0096]) comprising:
Using a coating apparatus including a roller to form a film of a coating liquid on a surface of a substrate (See, for example, Fig 1, [0096])
The coating liquid containing a resin (such as liquid crystal polyester), a solvent (such as aprotic solvent) and a filler further wherein the filler is a mixture of boron nitride and aluminum oxide, (see, for example, [0011], [0078], [0086], [0094], Example 11)
Mizuno further teaches wherein the filler in the coating is contained in an amount of 50-80% by volume, and further wherein the filler includes 20-50 % by volume alumina and 50-80 % by volume boron and the resin includes liquid crystal polyester (see, for example, [0078], [0082], [0086], [0112]). By calculation using densities of Al2O3 of 3.89 g/cc, BN of 2.1, LCP as 1.45 g/cc and DMAc as 0.937 and exemplary liquid crystal polyester solution preparation amounts (mass % of LCP in solvent / resin component = 22 wt%) and for a filler being a mixture of Al2O3 and BN at endpoints of 50% filler (20/80 Al2O3/BN) and 80% filler (50/50 Al2O3/BN) (balance LCP / DMAc mixture); the range of possible filler content ratio to 100 parts by mass mixture of the resin and filler range from ~91.7 parts to ~98.2 parts. Although such a range is not explicitly 65-95 parts by mass with respect to 100 parts by mass of a mixture of the resin and the filler as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a concentration within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976), and / or since generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).
Mizuno further teaches the deposition can provide insulation layers for circuit board laminates, and further is concerned with achieving uniformity over the entire insulation layer (See, for example, abstract, [0078-0079]). Beyond general teaching to using roll or bar coating method to apply the coating liquid coating (see, for example, [0096]) Mizuno is silent as to the particulars of the coating apparatus to deposit its insulative films. Therefore Mizuno does not explicitly teach the claimed coating apparatus structure and dimensions of claim 1. Komoda teaches a coating method, including the application of insulative layers with high solids loading, further comprising a filler, resin and solvent (See, for example, abstract, pg 61-63, conclusions section and Fig 3b). Komodo further teaches a comma coating apparatus with the ability to control the shear strain during the deposition, wherein proper control thereof results in improved coating layer uniformity (See, for example, abstract, pg 61-62, conclusion section). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the comma coating apparatus of Komodo as the means to deposit the coating liquid since it would perform predictably in applying insulative coating, further those at higher solids concentration, with the added advantage of improved coating uniformity.
Komodo further teaches its method includes using a coating apparatus (comma coater) including a conveying roller (back up roller O’) that feeds a substrate that is wound and has an elongated shape (see, for example, Fig 3b, pg 64);a knife coater (comma roll “O”) that is disposed above the conveying roller with a gap (wet gap) from the conveying roller, has a columnar or cylindrical shape, and is provided with a knife portion (knife edge) (see, for example, Fig 3b, pg 64); and a liquid-reserving member (such as un-named wall / baffle feature in Fig 3b in contact with, and serving to contain the slurry) having a one end portion positioned on a side of the conveying roller and partitioning a liquid-reserving space together with the conveying roller, to form a coating film of a coating liquid stored by the liquid-reserving member on a surface of the substrate (See, for example, Fig 3b),
wherein an outer diameter of the conveying roller (backup roller) is 120 mm, an outer diameter of the knife coater (comma coater) 90 mm, and a distance from the gap to the one end portion of the liquid-reserving member is on the order of less than ~94.2 mm (as calculated via the arc length of the backup roller assuming an angle of less than or equal to 45o; an arc angle of 45o was selected as the relative proportions / positioning of the features of Fig 3b generally suggest an arc angle well below 45o, (so such a higher angle threshold was selected as the depiction appeared well within such range); the examiner further notes that given the roller diameter of 120mm of Komodo, an angle of less than ~57o would further satisfy the claimed condition, which further still is well above the general suggestion of the angle depicted within Fig 3b) (See, for example, Fig 3b, pg 64); (additionally the examiner notes that although the image is not labeled “to scale” the measured ratio of R1/ R2 as depicted (measured from enlarged computer monitor view at 3.6 cm / 4.9 cm or ~0.735 ) is essentially the same ratio as explicitly recited (90 mm / 120 mm or 0.75) thus suggesting the figure is reasonably to scale. If not anticipated outright, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a distance within the claimed range since such a distance is generally suggested by prior art considering the relative dimensions and orientation of the rollers and coating system components.
Claim 2: Mizuno has taught teaches wherein the filler in the coating is contained in an amount of 50-80% by volume, and further wherein the filler includes 20-50 % by volume alumina and 50-80 % by volume boron and the resin includes liquid crystal polyester and an exemplary solvent as DMAc, further wherein the DMAc is initially prepared with the resin as solvent % by weight of 78% by mass (see, for example, [0078], [0082], [0086], [0112]). By calculation using densities of Al2O3 of 3.89 g/cc, BN of 2.1, LCP as 1.45 g/cc and DMAc as 0.937 and the exemplary liquid crystal polyester solution preparation amounts (mass % of LCP in solvent / resin component = 22 wt%) and for a filler being a mixture of Al2O3 and BN at endpoints of 50% filler (20/80 Al2O3/BN) and 80% filler (50/50 Al2O3/BN) (balance LCP / DMAc mixture); the range of possible solvent content to 100 parts by mass mixture of the resin and filler range from 6.5 to 30 parts. Although such a range is not explicitly 10-50 parts by mass with respect to 100 parts by mass of a mixture of the resin and the filler as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a concentration within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976), and / or since generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).
Claim 3: Mizuno further teaches wherein the resin / solvent mixture possesses a viscosity of 320 cP (See, for example, [0112]), Mizuno further teaches wherein the coating liquid is further mixed with from 50-80% by volume of filler, therefore, naturally, depending on the amount of additional solids, in the form of filler added thereto the viscosity would be a value greater than 320 cP (see, for example, [0078]). Komoda further teaches wherein the viscosity influences the requisite coating conditions of a formulation to achieve uniform layers (See, for example, abstract, 62-63, conclusion). Although such a range is not explicitly 100-20000 cP at a temperature of 25oC, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976), and / or since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Claim 4: Mizuno further teaches wherein the boron nitride is contained in a content ratio of ~68 parts by mass with respect to 100 parts by mass of a mixture of boron nitride and the aluminum oxide (see, for example, [0082, [0086], example 11, Table 1; such as a 80:20 volume ratio of Boron to alumina, such as in example 11 wherein 80 vol % of Boron ratio by conversion using the density of BN as 2.1 g/cc and Al2O-3- as 3.89 g/cc results in a 68:32 ratio by weight, or ~68 parts as claimed).
Claim 6: refer to the rejections of claims 2 and 3 above.
Claim 7: refer to the rejections of claims 2 and 4 above.
Claim 8 refer to the rejections of claims 3 and 4 above.
Claim 9: refer to the rejections of claims 6 and 4 above.
Claim(s) 3, 6, 8, and 9 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Mizuno in view of Komoda as applied to claim 1, 2, and 4 above, and further in view of Kasai.
Claim 3: Mizuno further teaches wherein the resin / solvent mixture possesses a viscosity of 320 cP (See, for example, [0112]), but is silent as to the viscosity of the final coating liquid. Komoda further teaches wherein the viscosity influences the requisite coating conditions of a formulation to achieve uniform layers (See, for example, abstract, 62-63, conclusion). They both are concerned with the uniformity of applied layers, but they do not explicitly teach wherein the coating liquid has a viscosity of 100 to 20000cP at 25oC. Kasai teaches a method of applying coatings comprising resin, filler and solvents, further for producing layers within printed circuit boards (See, for example, [0001], [0007]). Kasai further teaches wherein the viscosity of coating dispersion liquid should preferably be 100 to 5000 cP (mPa-s) at 25C to provide excellent dispersibility and improved filling and thus resulting in enhanced ease of forming a highly flat coating layer (See, for example, [0009], [0037]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a viscosity of 100 to 5000 cP at 25oC since it would predictably provide a coating formulation with excellent dispersibility and improved filling, and enhanced ease of forming a high flat coating.
Claim 6: refer to the rejections of claims 2 (over Mizuno in view of Komoda) and 3 (over Mizuno in view of Komoda and Kasai) above.
Claim 8 refer to the rejections of claims 3(over Mizuno in view of Komoda and Kasai) and 4 (over Mizuno in view of Komoda) above.
Claim 9: refer to the rejections of claims 6 (over Mizuno in view of Komoda and Kasai) and 4 (over Mizuno in view of Komoda) above.
Response to Arguments
Applicant's arguments filed 6/19/26 have been fully considered but they are not fully persuasive.
With respect to the 35 USC 103 rejection of claim 1-2 over Komoda, the Applicant argues that the examiner offered calculation of filler content was inclusive of water, while the claimed content was not; thus when accounting for the removal of water the claimed dry content of filler was >99.93 parts by mass. The examiner agrees that the examiner calculated content had erroneously incorporated water into the calculation, therefore the mis-calculation based on the exemplary embodiment of Komoda has been removed from the rejection. The examiner does however note that in addition to this exemplary embodiment, Komodo had taught embodiments wherein additional amounts of PVA, such as 15 wt% solutions are being added to influence coating and rheological conditions (see, for example, pg 62-63, and Fig 3) thus Komodo is not solely bound to the % of the exemplary embodiment, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). In the 3/20/26 Office Action (at pg 4, lines 17-19) the examiner had alternatively stated explicitly: “generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).” As the relative amount of PVA has been demonstrated to influence coating and rheological conditions, and as Applicant has not provided such evidence of criticality, the examiner maintains the position of obviousness over Komoda is apt.
With respect to the 35 USC 103 rejections over Mizuno in view of Komoda, Applicant argues that that there is no teaching, suggestion, or motivation to combine the references. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Komodo explicitly teaches comma coating apparatuses possess the ability to control the shear strain during the deposition, allowing enhanced control for improved coating layer uniformity (See, for example, abstract, pg 61-62, conclusion section). Therefore the references themselves have provided the motivation; thus the examiner maintains reliance upon the combination is /apt.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided.
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NATHAN H EMPIE/Primary Examiner, Art Unit 1712
Prosecution Insights