DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 25 February 2026.
The applicant's request for rejoinder of the non-elected method claim if/when the product claims are found allowable is noted. It is further noted that withdrawn claim 16 contains multiple references to claim 1 (improper for the reasons set forth in paragraph 8 of the Office action mailed 20 April 2026) and phrases such "the first film" and "the second film" lack antecedent basis.
In order for rejoinder to occur, the applicant is advised that the process claim should be amended during prosecution to require the limitations of the product/apparatus claims and must meet all criteria for patentability including the requirements of 35 U.S.C. 112. Failure to do so may result in no rejoinder.
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)(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, 9, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) or 35 U.S.C. 102(a)(2) as being anticipated by Sasada (WO 2022/113964).
Since WO 2022/113964 was not published in the English language, citations in this action refer to US 2023/0286250 which is its published US national stage application.
Additionally, since the publication date of WO 2022/113964 is before the filing date of PCT/JP2023/016329 but after the filing date of the applicant's priority document, WO 2022/113964 qualifies as prior art under 35 U.S.C. 102(a)(1). In the event that the applicant perfects the claim for priority (e.g., as set forth in MPEP 216), WO 2022/113964 would remain prior art under 35 U.S.C. 102(a)(2).
Example 21 of Sasada is a film having a dielectric loss tangent of 0.005 which comprises surface layer B and core layer A (Table 1). Surface layer B has an elastic modulus at 160 oC of 0.3 GPa and core layer A has an elastic modulus at 160 oC of 3 GPa (Table 1) such that the ratio of elastic moduli at 160 oC of layer B to layer A is 0.1. Surface layer B is formed from a resin composition comprising a polymer (e.g., polyphenylene ether) as well as compounds having a reactive group (e.g., an epoxy resin and a cyanate ester resin) (paragraph 0365). A flexible wiring board is made from the film comprising a ground layer (paragraph 0397) - the wiring layer corresponds to the metal wire layer of claim 14 while the ground layer corresponds to the metal layer disposed on the other surface.
Claim Rejections - 35 USC § 102 / 103
Claims 4, 5, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) or 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sasada (WO 2022/113964).
Sasada exemplifies embodiments wherein: (i) the thickness of layer B is 13 mm, (ii) layer A is contains a liquid crystal polymer, (iii) a layer C is present on the opposite side of layer A from layer B, and (iv) the thickness of layer C is 3 mm.
While Sasada does not illustrate a single embodiment having all these features, one of ordinary skill in the art would have immediately envisaged such an embodiment based on the other embodiments explicitly taught by Sasada. Alternatively, it would have been obvious to one of ordinary skill in the art to construct a film using components shown in other embodiments to be suitable (e.g., a 13 mm thick layer B).
Claim Rejections - 35 USC § 103
Claims 2, 6, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sasada (WO 2022/113964).
Sasada teaches or suggests all the limitations of claims 2, 6, 7, and 12, as outlined above, except for illustrating an embodiment wherein: the elastic modulus of layer B is 0.1 GPa or less (claim 2), the melting point of layer A is 315 oC or higher (claim 6), layer A contains a polyolefin (claim 7), and layer C comprises a cured substance of a polymer and a compound having a reactive group (claim 12).
Regarding claim 2, Sasada teaches that the surface of the film may have an elastic modulus at 160 oC of as low as 0.01 GPa (paragraph 0096). As such, it would have been obvious to one of ordinary skill in the art to provide layer B (i.e., a surface layer) with an elastic modulus at 160 oC of as low as 0.01 GPa.
Regarding claim 6, LC-A, the liquid crystal polymer used for layer A in embodiments (Table 1) has a melting point of 311 oC (paragraph 0346). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In this case, it would have been obvious to one skilled in the art to have expected the same properties (i.e., permittivity, flexibility, etc.) for a core layer having a melting temperature of 311 oC compared to one having a melting temperature of 315 oC, particularly since the printed wiring board made from the film would be expected to be employed at a temperature significantly below both of these temperatures.
Regarding claim 7, Sasada teaches that layer A may be formed of a liquid crystal polymer containing a thermoplastic resin, such as a polypropylene (paragraph 0237-0238).
Regarding claim 12, Sasada teaches layer C may comprise a liquid crystal polymer and an additive as described for layer A (paragraphs 0277-0278). The additives for layer A include antioxidants (paragraph 0236), i.e., compounds that one of ordinary skill in the art would expect to have a reactive group.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sasada (WO 2022/113964) in view of Imamura (US 2022/0041932).
Sasada teaches or suggests all the limitations of claim 8, as outlined above, except for the inclusion of 5 to 30 mass% polyolefin in layer A. However, Sasada does teach that a resin may be added to the liquid crystal polymer used for layer A (paragraph 0237).
Imamura is directed to a low dielectric resin composition suitable for use in a printed wiring board (paragraph 0009). The composition comprises a liquid crystal polymer and a graft-modified polyolefin (paragraph 0011). The composition has good melt processibility when compared to a composition containing only the liquid crystal polymer (paragraphs 0007 and 0009). In the embodiments of Examples 1-8, 11, and 12, the composition contains 70 to 95 mass% liquid crystal polymer and 5 to 30 mass% polyolefin (Tables 1-3).
It would have been obvious to one of ordinary skill in the art to add 5 to 30 mass% of a graft-modified polyolefin to the liquid crystal layer of Suzuki to improve processibility.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Sasada (WO 2022/113964) in view of AdvancedPCB, The Benefits of Multilayer PCBs.
Sasada teaches or suggests all the limitations of claim 15, as outlined above, except for a circuit board having multiple resin films/metal layers with metal wire embedded in the film resin films.
AdvancedPCB teach that multilayer printed circuit boards are known in which multiple circuit boards are laminated and glued together with connections taking place between the layers through plating through holes (page 2). Because of the layered design, the boards are smaller and weigh less than other boards while still having the same level of functionality (page 3).
It would have been obvious to one of ordinary skill in the art to use the resin film of Sasada in fabricating multilayer printed circuit boards for applications in which reduced size and/or weight is desired, with the plated through holes corresponding to the embedded wires.
Response to Arguments
The applicant's arguments with respect to Suzuki (JP 2021-160148) that the material identified as "Vecter" in the machine translation of JP 2021-160148 and understood to be Vectran™ in the Office action is actually Vecstar™ is not, itself, persuasive as this appears to be opinion that is not supported by a certified translation. However, the examiner submitted the passage in question to Scientific & Technical Information Center at USPTO for a human translation, which identified the material as "Bexter." Based on the conflicting names, it cannot be said that the resin film of Suzuki inherently possesses an elastic modulus at 160 oC such that the limitations of claim 1 are inherently satisfied. Inherency requires a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art (see MPEP 2112), a burden that cannot reasonably be said to be met based on the discrepancies denoted above.
Therefore, the rejections over Suzuki (JP 2021-160148) have been withdrawn.
However, new grounds of rejection are made in view of Sasada as set forth above.
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 RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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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.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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