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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for specific fluororesins, i.e. tetrafluoroethylene- perfluoroalkyl vinyl ether copolymer (PFA) or a tetrafluoroethylene-hexafluoropropylene copolymer (FEP), and specific process for making a fluororesin long film (see paragraph [0028] of present specification), does not reasonably provide enablement for any fluororesin long film made by any process that has the number of unstable functional groups of less than 350 per 1 x 106 carbon atoms. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1-10 can be used as claimed and whether claims 1-10 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-10, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-10 read on any fluororesin long film made by any process that has the number of unstable functional groups of less than 350 per 1 x 106 carbon atoms while the specification discloses specific fluororesins and specific process for making a fluororesin long film.
(b) There is no direction or guidance presented for any fluororesin long film made by any process that has the number of unstable functional groups of less than 350 per 1 x 106 carbon atoms.
(c) There is an absence of working examples concerning any fluororesin long film made by any process that has the number of unstable functional groups of less than 350 per 1 x 106 carbon atoms.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-10.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 1-10 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 Kasai (JP 2021160856). An English copy of Kasai was provided by Applicant with the IDS filed 01/17/2025.
Regarding claim 1, Kasai teaches a roll film, i.e. long film, composed of a tetrafluoroethylene based polymer (See Abstract), wherein the number of polar functional groups of the polymer is less than 500 per 1 x 106 carbon atoms, more preferably less than 50 (paragraph [0019]) which falls within the claimed range of less than 350 per 1 x 106 carbon atoms.
Given that the originally filed specification discloses the number of unstable functional groups leads to suppression of thickness deviation (See paragraph [0028] of present specification) and given that Kasai teaches the number of unstable/polar functional groups as presently claimed, the film would necessarily have a thickness as claimed, absent evidence to the contrary.
Regarding claim 2, Kasai teaches FEP and PFA (paragraph [0015]).
Regarding claim 3, Kasai teaches less than 50 polar functional groups per 1 x 106 carbon atoms (paragraph [0019]).
Regarding claim 4, given that Kasai teaches film comprising materials and structure as presently claimed, the film of Kasai would necessarily have an adhesive strength as claimed, absent evidence to the contrary.
Regarding claim 5, the recitation in the claims that the fluororesin long film is “for a metal-clad laminate” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kasai disclose fluororesin long film as presently claimed, it is clear that the fluororesin long film of Kasai would be capable of performing the intended use, i.e. for a metal-clad laminate, presently claimed as required in the above cited portion of the MPEP. Further, t is noted that Kasai et al. teaches using the film for a metal-clad laminate (paragraph [0044]).
Regarding claim 6, Kasai teaches the laminate includes a metal-clad laminated having a metal foil and a polymer layer on at least one surface of the metal foil, and a multilayer film having a polyimide film and a polymer layer on both surfaces of the polyimide film (paragraph [0044]).
Regarding claim 7, Kasai teaches wherein the substrate may be a multilayer film include polyimide, etc. (paragraph [0042]).
Regarding claim 8, given that Kasai teaches film comprising materials and structure as presently claimed, the film of Kasai would necessarily have a roughness as claimed, absent evidence to the contrary. Further, it is noted that Kasai teaches a ten point surface roughness of 0.01 to 0.5 µm (paragraph [0039]).
Regarding claim 9, given that Kasai teaches film comprising materials and structure as presently claimed, the film of Kasai would necessarily have an adhesive strength as claimed, absent evidence to the contrary.
Regarding claim 10, Kasai teaches the metal foil of the laminate may be used as a baser material for a circuit (paragraph [0046]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 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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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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