DETAILED ACTION
This is an Office action based on application number 18/860,296 filed 25 October 2024, which is a national stage entry of PCT/KR2023/005813 filed 27 April 2023, which claims priority to KR10-2022-0053662 filed 29 April 2022. Claims 1 and 4-12 are pending.
Amendments to the claims, filed 24 July 2026, have been entered into the above-identified application.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 16- and 11-12 in the reply filed on 24 July 2026 is acknowledged. The traversal is on the ground(s) that Applicant’s amended claim 1 specifically limits the respective amounts of BPDA, PMDA, TAHQ, ODA, PPD, and mTD, whereas Son merely lists BPDA, PMDA, and TAHQ as examples of dianhydrides, and ODA, PPD, and mTD (m-tolidine) as examples of diamines without disclosing any specific content ranges for these components. Applicant concludes that a person of ordinary skill in the art would not have readily arrived from Son at the polyimide film. Applicant argues that the ranges of their claims ensures that both the Df (dielectric dissipation factor) and Tg (glass transition temperature) of the produced polyamide film fall within a certain range, whereas Son does not disclose a mechanism for simultaneously controlling the
This is not found persuasive because Applicant’s amendments necessitate an amended reasons for restriction (i.e., new reasons for lack of unity due to the shared technical feature not making a contribution over the prior art). As set forth in the prior art rejection below, Applicant’s claimed invention does not make a contribution over the prior art, Applicant’s claims lack unity of invention, and the restriction requirement is proper.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The disclosure is objected to because of the following informalities:
In Table 1, on pages 24-25, “mTB” should be “mTd” (i.e., indicative of m-tolidine).
Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
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.
Claims 1, 6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al. (WIPO International Publication No. WO 2020/080598 A1 with citations taken from English language equivalent US Patent Application Publication No. US 2022/0033597 A1) (Son) in view of Matsuyama et al. (US Patent Application Publication No. US 2011/0303438 A1) (Matsuyama).
Regarding instant claims 1 and 6;
Son discloses a polyimide film manufactured by imidizing a polyamic acid solution (paragraph [0014]).
Son further discloses that the polyamic acid is prepared by polymerizing a dianhydride monomer and a diamine monomer (paragraph [0060]).
Son further discloses that the dianhydride monomer may be at least one selected from the group consisting of pyromellitic dianhydride (or PMDA); 3,3′,4,4′-biphenyltetracarboxylic dianhydride (or s-BPDA); 2,3,3′,4′-biphenyltetracarboxylic dianhydride (or a-BPDA); p-phenylenebis(trimellitic monoester acid anhydride); p-biphenylenebis(trimellitic monoester acid anhydride) (paragraph [0061]).
Son further discloses that the diamine monomer may be at least one selected from the group consisting of 1,4-diaminobenzene (or paraphenylenediamine, PDA, PPD); 4,4′-diaminodiphenyl ether (or oxydianiline, ODA); and 2,2′-dimethylbenzidine (or m-tolidine) (paragraph [0062]).
Son does not explicitly disclose the amounts of the dianhydride and diamine monomers. Son does not explicitly disclose the dielectric dissipation factor (Df) or the glass transition temperature (Tg) of the polyimide film.
However, Matsuyama discloses a composition for a polyamide resin comprising at least a polyamic acid (paragraph [0025]).
Matsuyama further discloses that the polyamic acid is obtained by polymerization of a tetracarboxylic acid dianhydride and a diamine compound (paragraph [0026]).
Matsuyama further discloses that from the viewpoint of heat resistance, the glass transition temperature Tg (° C) of the polyimide resin layer is preferably 300 to 400° C (paragraph [0061]).
Matsuyama further discloses that the dielectric dissipation factor of the polyimide resin layer is not more than 0.02 such that the electrical properties of a metal clad laminate or a flexible printed wiring board including the polyimide resin layer are improved (paragraph [0063]). It is noted that the claimed range falls within the disclosed by Matsuyama; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the polyimide film of Son has the glass transition temperature and dielectric dissipation factor described by Matsuyama. The motivation for doing so would have been to improve both the heat resistance and electrical properties of the film.
As to the relative amounts of each monomer type, one of ordinary skill in the art would readily conclude that the properties of a polyimide resin composition would depends on the selection of the individual component monomers and the amounts thereof. Therefore, since the instant specification is silent to unexpected results, the specific amounts of the monomer components are not considered to confer patentability to the claims. As at least the glass transition temperature and dielectric dissipation factor of the polyimide film are variables that can be modified, among others, by adjusting the amount of the component monomers, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of the specific component monomers in the prior art to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Matsuyama with Son to obtain the invention as specified by the instant claims.
Regarding instant claim 11:
Son further discloses that polyimides are used as an insulating material for microelectronic parts inclusive of flexible metal foil clad laminates having high circuit integration (paragraph [0002]).
Son does not explicitly disclose the claimed multilayer film.
However, Matsuyama discloses a coverlay comprising a polyamide film and an adhesive layer, and a flexible printed wiring board wherein said coverlay is provided on a metallic foil having a circuit formed (Claims 6-9).
Said coverlay provided on the metallic foil meets the claimed multilayer film.
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the polyimide of Son to form the multilayer film of Matsuyama. The motivation for doing so would have been that said multilayer film meets provides an art-recognized structure for the flexible metal foil clad laminated desired by Son.
Therefore, it would have been obvious to combine Matsuayama with Son to obtain the invention as set forth by the instant claim.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Matsuyama as applied to claim 1 above, and further in view of Katsuki et al. (US Patent Application Publication No. US 2002/0177000 A1) (Katsuki).
Regarding instant claims 4-5:
Son in view of Matsuyama discloses a polyimide film that obviates the claimed polyamide film of claim 1, above.
Son in view of Matsuyama does not explicitly disclose the claimed block copolymer.
However, Katsuki discloses that heat-resistant polyimides are obtainable as block copolymers obtained by preparing two kinds of polyamic acid solutions, mixing them, and allowing them to recombine (paragraph [0032]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to form the polyimide of Son in view of Matsuyama as the block copolymer described by Katsuki. The motivation for doing so would have been that block copolymer forms are recognized as heat-resistant polyimides.
As to the limitations set forth by claim 5, said limitations are construed as product-by-process limitations. As the prior art discloses the polyimide resin composed of the recited monomers, the manner by which they polymerized is a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, it would have been obvious to combine Katsuki with Son in view of Matsuyama to obtain the invention as set forth by the instant claims.
Claim 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Matsuyama and as applied to claims 1 and 11 above, and further in view of Yanagida et al. (US Patent Application Publication No. US 2008/0138637 A1) (Yanagida).
Regarding instant claim 12:
Son in view of Matsuyama discloses the polyimide film; the coverlay comprising the polyamide film and the adhesive layer; and the flexible printed wiring board wherein said coverlay is provided on a metallic foil having a circuit formed, as cited in the rejection of claims 1 and 11, above.
Son in view of Matsuyama does not explicitly disclose the thermoplastic resin layer.
However, Yanagida discloses flexible printed circuit boards comprising a thermoplastic polyimide adhesive overcome problems associated with heat resistance, flexibility, and electrical requirements (paragraph [0002-0004]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the
thermoplastic polyimide of Yanagida as the adhesive desired in the multilayer structure of Son in view of Matsuyama. The motivation for doing so would have been that the use of such an adhesive overcomes problems associated with heat resistance, flexibility, and electrical requirements.
Therefore, it would have been obvious to combine Yanagida with Son in view of Matsuyama to obtain the invention as specified by the instant claim.
Conclusion
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/TAM/Examiner, Art Unit 1788 09/15/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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