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 (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.
Election/Restrictions
Applicant’s election of Group I in the reply filed on 25 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 It is noted that withdrawn claim 16 contains multiple references to claim 1 (which is improper for the reasons set forth below) and phrases such as "the first film" and "the second film" that lack antecedent basis.
In order for rejoinder to occur, applicant is advised that the process claims 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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is objected to because 35 U.S.C. 112(d) requires that claims in dependent form "shall containing a reference to a claim previously set forth" (emphasis added) while claim 15 contains multiple references to claim 1. This objection may be overcome by deleting "according to claim 1" on lines 3 and 5 of the claim and inserting the phrase --wherein the first and second films are each according to claim 1-- at the end of the claim.
Claim Rejections - 35 USC § 102 / 103
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.
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.
Claims 1-3, 5, and 9-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Suzuki (JP 2021-160148) as evidenced by MatWeb Vectran™ data sheet.
Suzuki is directed to a resin film comprising a liquid crystal layer sandwiched between adhesive layers and a metal clad laminate used to form a circuit board comprising the resin film (paragraphs 0006-0007). The resin film has a dielectric loss tangent of 0.005 or less at 10 GHz (paragraph 0009). The adhesive layers have a storage modulus of 1800 MPa or less at 50 oC and 800 MPa or less at 180 to 260 oC (paragraph 0008). Preferably, the liquid crystal is Vectran™ manufactured by Kuraray (paragraph 0031). The adhesive layers are preferably polyimide layers containing polyimide as the main component (paragraph 0035). The adhesive may be reacted with a crosslinking agent having a functional group to improve heat resistance (paragraph 0084).
The liquid crystal layer corresponds to layer A of the claims; one adhesive layer corresponds to layer B of the claims; the other adhesive layer corresponds to layer C of claims 10-12.
While Suzuki is silent regarding the ratio of elastic modulus at 160 oC of the adhesive layer to the elastic modulus at 160 oC of liquid crystal layer, one of ordinary skill in the art would expect the resin film of Suzuki to inherently possess a ratio that would satisfy the limitations of claim 1 and 3 for the following reasons. According to the MatWeb data sheet, Vectran™ from Kuraray - taught by Suzuki as a preferred liquid crystal for the resin film - has a tensile modulus of 75 GPa. As such, one of ordinary skill in the art would expect the ratio of the modulus of the adhesive layer to that of the liquid crystal to be about 1800 MPa:75 GPa, i.e., about 0.02. While the MatWeb does not report the temperature at which the Vectran™ modulus was determined, of one of ordinary skill in the art would not expect this value to change by more than about a factor of 2 based on the difference in the adhesive's modulus at 50 oC compared to that at 180 to 260 oC. Since this value is about 4 orders of magnitude greater than the lower limit of claim 1 and an order of magnitude less than the upper limit of claim 3, one of ordinary skill in the art would expect the resin film of Suzuki to intrinsically satisfy the limitations of claims 1 and 3.
Regarding claims 13 and 14, the circuit board comprises wiring layers disposed on either side of an intermediate layer formed from the resin film (see claim 10). One wiring layer reads on the metal layer while the other wiring layer reads on the metal wire.
Claim Rejections - 35 USC § 103
Claims 4, 6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (JP 2021-160148) as evidenced by MatWeb Vectran™ data sheet.
Suzuki teaches or suggests all the limitations of claims 4, 6, and 11, as outlined above, except for illustrating embodiment wherein the adhesive layers have thicknesses of 15 mm or less or a liquid crystal having a melting point of 315 oC or higher. However, Suzuki does teach that (i) the adhesive layers may have thicknesses of 1 to 100 mm (paragraph 0097) and (ii) the liquid crystal preferably has a melting point of 300 oC or higher (paragraph 0026).
Since the ranges of thicknesses for the adhesive layer and melting point for the liquid crystal overlaps the range recited in claims 4, 6, and 11, a prima facie case of obviousness exists. See MPEP 2144.05.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (JP 2021-160148), as evidenced by MatWeb Vectran™ data sheet, and further in view of Imamura et al. (US 2022/0041932).
Suzuki teaches or suggests all the limitations of claims 7 and 8, as outlined above, except for the inclusion of 5 to 30 mass% of a polyolefin in the liquid crystal layer. However, Suzuki does teach that the liquid crystal layer may contain as little as 70 wt% liquid crystal (paragraph 0024).
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 Suzuki (JP 2021-160148), as evidenced by MatWeb Vectran™ data sheet, and further in view of AdvancedPCB, The Benefits of Multilayer PCBs.
Suzuki 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 Suzuki 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 5, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, 11, and 13 of U.S. Patent No. 12,570,076.
Although the conflicting claims are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims, such as claim 5, with the independent claim to yield a film exhibiting the benefits conveyed by the limitations of the dependent claims.
Claims 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, 11, and 13 of U.S. Patent No. 12,570,076 in view of Imamura et al. (US 2022/0041932).
Claims 1, 3, 5, 6, 11, and 13 of U.S. Patent No. 12,570,076 recite all the limitations of claims 7 and 8 except for the inclusion of 5 to 30 mass% of a polyolefin in the liquid crystal of layer A.
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 recited in the claims of U.S. Patent No. 12,570,076 to improve processibility.
Claims 1, 2, 5, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 12 of U.S. Patent No. 12,358,259.
Although the conflicting claims are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims, such as claim 2, with the independent claim to yield a film exhibiting the benefits conveyed by the limitations of the dependent claims.
Claims 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 12 of U.S. Patent No. 12,358,259 in view of Imamura et al. (US 2022/0041932).
Claims 1-3, 5, and 12 of U.S. Patent No. 12,358,259 recite all the limitations of claims 7 and 8 except for the inclusion of 5 to 30 mass% of a polyolefin in the liquid crystal of layer A.
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 recited in the claims of U.S. Patent No. 12,358,259 to improve processibility.
Conclusion
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 afternoons, 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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