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 without traverse of Group II in the reply filed on 22 December 2025 is acknowledged.
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.
Claims 8-13, 16-18, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jing et al. (US 2004/0241395) in view of Feit et al. (US 4,136,225) as evidenced by Duchesne et al. (US 6,489,420).
Jing is directed to an article comprising a substrate with a surface on which is coated a fluoropolymer (paragraph 0006). The coating is formed from a fluoropolymer solution comprising a vaporizable solvent and a fluoropolymer (paragraph 0017). The fluoropolymer may be a copolymer of vinylidene fluoride, hexafluoropropylene, and/or tetrafluoroethylene with a non-fluorine containing monomer, such as an alkyl (meth)acrylate (paragraph 0026). A copolymer of an alkyl (meth)acrylate and one of the recited fluorinated monomers reads on a (meth)acrylic fluorine-containing polymer. The coating has a thickness of at least 0.5 mm (paragraph 0028). The vaporizable solvent may be 3M™ Novec™ Engineering Fluid 7100 or 7200 (paragraph 0031). 3M™ Novec™ Engineering Fluid 7100 is C4F9OCH3, i.e., 1,1,1,2,2,3,3,4,4-nonafluoro-4-methoxybutane; 3M™ Novec™ Engineering Fluid 7200 is C4F9OC2H5, i.e., 1,1,1,2,2,3,3,4,4-nonafluoro-4-ethoxybutane (see the 3M™ Novec™ data sheets submitted in the Information Disclosure Statement filed 02 January 2025). The substrate may be a circuit board comprising an organic polymer, such as polyimide (paragraph 0035). The substrate may be subjected to corona treatment to promote adhesion (paragraph 0036).
Jing does not teach the addition of fumed silica having its surface modified with hydrophobic functional groups. However, Jing does teach that the solution may contain additives, such as thixotropes or thickeners (paragraph 0033).
Feit is directed to a coating for printed wiring board (column 1, lines 5-11). Two parts per hundred of hydrophobic fumed silica is used as a thixotropic agent in the coating composition (column 2, lines 30-37). One of ordinary skill in the art would immediately recognize hydrophobic fumed silica as silica with a surface that has been modified with hydrophobic groups.
It would have been obvious to one of ordinary skill in the art to use hydrophobic fumed silica as the thixotrope in Jing since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07.
Regarding the limitation that the coating layer is a self-assembled coating layer, one of ordinary skill in the art would expect a copolymer of an alkyl (meth)acrylate and a fluorinated monomer to contain hydrophilic and hydrophobic local domains formed the alkyl (meth)acrylate monomer and a fluorinated monomer, respectively. As such and since the polymer is dissolved in a hydrophobic solvent, one of ordinary skill in the art would expect the copolymer to form self-assembled structures such that the resulting coating reads on a self-assembled coating layer.
Regarding the limitation that the coating is a conformal coating, one of ordinary skill in the art would expect the coating of Jing - particularly when taken in view of Feit - to conform to the surface on which it is applied since it comprises the same materials as the coating composition used by the applicant. Particularly since the solution of Jing may be a non-Newtonian fluid that exhibit substantial shear thinning behavior (paragraph 0042) and paragraph 0030 on page 7 of the specification states that the surface treatment composition of the invention is a non-Newtonian fluid having a higher viscosity under slow speed shear than high speed shear.
Regarding the limitation that the (meth)acrylic fluorine-containing polymer has a weight average molecular weight of 25,000 to 500,000, Jing teaches that the fluoropolymer may be formed using the technique set forth in Duchesne (paragraph 0027). The polymerization process of Duchesne results in the fluoropolymers having a number average molecular weight of 25,000 to 1,000,000 (see column 3, lines 21-29 of Duchesne). Since one of ordinary skill in the art would expect a polymer having a number average molecular weight of 25,000 to 1,000,000 to overlap a polymer has a weight average molecular weight of 25,000 to 500,000 and since the court have held that a prime facie case of obviousness exists for overlapping ranges (see MPEP 2144.05), it would have been obvious to one of ordinary skill in the art to use a fluoropolymer satisfying the weight average molecular weight recited in claims 8, 9, and 16.
Regarding the thickness of the coating layer recited in claims 8, 13, and 18, since the thickness range recited by Jing (i.e., at least 0.5 mm) overlaps the range recited in the claims, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding the variance of the coating thickness recited in claims 8, 13, and 18, it would have been obvious to one of ordinary skill in the art to strive towards thickness uniformity for the coating to ensure uniformity of the properties conferred by the coating. Additionally, since the coating composition reads on that of the instant invention, one of ordinary skill in the art would expect to be able to attain a thickness for the coating of Jing that is sufficiently uniform to satisfy the limitations of claims 8, 13, and 18.
Regarding the limitation in claim 8 that the surface treatment is by immersion, spin coating, or flow coating, these represent product-by-process type limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same 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, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the coating of Jing taken in view of Feit suggests all the physical limitations of the claimed coating, the burden is on the applicant to conclusively demonstrate that applying the coating by immersion, spin coating, or flow coating would result in a patentably distinct product.
Likewise, since (i) the limitation in claim 21 directed to the argon plasma treatment is also a product-by-process type limitation and (ii) the product of Jing taken in view of Feit suggests all the physical limitations of the claimed coating, the burden is on the applicant to conclusively demonstrate that cleaning by argon plasma treatment would result in a patentably distinct product.
Regarding claim 22, the solution of Jing may be a non-Newtonian fluid that exhibit substantial shear thinning behavior (paragraph 0042). Since thixotropic index is a ratio of the viscosity under slow speed shear to that under high shear speed (see paragraph 0030 on page 7 of the specification), one of ordinary skill in the art would expect the non-Newtonian fluid that exhibit substantial shear thinning behavior of Jing to have a thixotropic index satisfying the limitations of claim 22.
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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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787