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 .
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.
Claims 21-24, 26 are pending.
Response to Amendment
Applicant’s amendment of 08/06/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(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 21-24, 26 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the claimed invention without undue experimentation.
Claim 21 recites properties that are based on two specific examples and yet those examples are described with such breadth that one having ordinary skill in the art would not be enabled to make the claimed invention without undue experimentation. The narrowest disclosure of the core substrate that achieves the claimed properties is “A core substrate with copper foil (thickness: 0.7 mm) in which a copper foil was attached to a core substrate containing a resin cured product of an epoxy resin, an inorganic filler, and a glass cloth was cut into a size of 70 mmx60 mm” ([0107], the copper foil is removed in the next paragraph prior to testing). The second example is only disclosed as having a different epoxy resin and provides no further narrowing information. This disclosure lacks any specificity with respect to:
the type of epoxy,
the type of inorganic filler,
the shape of the inorganic filler,
the size of the inorganic filler,
the type of glass,
the weave of the glass cloth,
the diameter of the glass fibers in the cloth,
the length of the glass fibers in the cloth,
the amount of epoxy resin,
the amount of inorganic filler, and
the amount of the glass cloth.
Each of the above aspects (a-k) alone would constitute countless possibilities with which to experiment, and the combination of experimenting with all of those aspects cumulatively would constitute a nearly impossible/unlimited amount of experimentation. The specification also does not appear to offer any other guidance as to how to achieve the claimed properties. Therefore, the claims are not enabled based on the present disclosure.
Upon applying the Wands factors to claim 21, undue experimentation would be required:
The breadth of the claims; (as explained above, the claims are broad in terms of the types and amounts of epoxy resin, inorganic filler, and glass cloth)
The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the properties as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the claimed invention with the limited guidance provided in the specification would require testing various types/amounts of epoxy resin, inorganic filler, and glass cloth without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (while there are “working examples” in the specification, they lack any disclosure that would allow one having ordinary skill in the art to make the claimed invention without undue experimentation)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure (based on the lack of specific guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(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.
Claim(s) 22-24 and 26 is/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 pre-AIA the applicant regards as the invention.
Claim 22 recites thermosetting resin which is vague because it is unclear if this is a second thermosetting resin or if it is a duplicate of the epoxy resin already recited.
Claim 23 recite inorganic filler which is vague because it is unclear if this is a second inorganic filler or if it is a duplicate of the inorganic filler already recited.
Claim 24 recites reinforcing fibers which is vague because it is unclear if this is a second reinforcing fiber or if it is a duplicate of the reinforcing fibers (glass cloth) already recited.
Claim 26 refers to satisfying formula 1 to 3 but that language is no longer used in claim 21, such that the scope of claim 26 is unclear.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that claim 21 has been amended based on the specific material system in the working examples. However, there are no specific materials disclosed with the examples. The materials disclosed are highly generalized which is the heart of the enablement problem.
Applicant argues that the DIC in the present disclosure allows for easy measurement of the claimed properties. This has nothing to do with the amount of experimentation (in terms of the countless embodiments of the types and amounts of materials) used to form the countless laminates that would need to be tested to determine which laminates are within the claimed property. That amount of experimentation is based on how to form the laminate, and is not affected by the ease through which the property is measured once the laminate is formed. Applicant asserts this DIC measurement constitutes a “screening method” but there is nothing about the DIC method that provides any predictive guidance that narrow the scope of experimentation from what is outlined in the enablement rejection above (i.e., items a-k).
For item l, Applicant’s remarks are persuasive but the other items (a-k) still constitute vastly more experimentation than would be permissible for the present claimed subject matter to be enabled.
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.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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