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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, Claims 1-14, 16-17, and 28-29, drawn to a method of producing a metal foil-clad laminate.
Group II, Claims 22-23, drawn to a resin composite sheet.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a resin composite sheet comprising a metal foil and a resin composition layer disposed on one side of the metal foil is laminated on a surface of a circuit board comprising an insulating layer and a conductor circuit layer as set forth below, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Tsurui et al (JP2022039763 cited in IDS with references to the machine English translation provided herewith).
Tsurui teaches a resin composite sheet [0086] comprising a metal foil ([0086]- support; [0088]- the support material may be a metal foil) and a resin composition layer disposed on one side of the metal foil ([0086]- resin composition provided on the support) is laminated ([0109]- discussing vacuum lamination) on a surface of a circuit board [0108]; [0158] comprising an insulating layer ([0158]- insulating layer 100 on inner layer circuit board) and a conductor circuit layer ([0158]- conductor layer 110 on inner layer circuit board).
Examiner notes the limitations in the product claim discussing the method by which the product is made is recited as product-by-process claim. In a product by process claim, so long as the product has the same claimed composition or properties, the method by which it was made or by which the properties were tested is not material. According to the MPEP, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113 [R-1], see In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966). Thus, those limitations are not included in the common technical feature.
During a telephone conversation with Arthur Reginelli on June 18, 2026 a provisional election was made with traverse to prosecute the invention of Group I, Claims 1-14, 16-17, and 28-29. Affirmation of this election must be made by applicant in replying to this Office action. Claims 22-23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, 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. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 7 is objected to because of the following informalities:
In Claim 7, “the heating in the step 4 is conducted at a temperature of from 100 to 180°C, and then further conducted at a temperature of higher than 180°C and 250°C or lower” should read “the heating in the step 4 is conducted at a temperature of 100 to 180°C, and then further conducted at a temperature of 180°C to 250°C”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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.
Claims 1-14 16-17, and 28-29 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a metal foil” and “a resin composition layer” in Lines 2 and 9-10. It is unclear whether these limitations refer to the same metal foils and resin composition layers or different metal foils and resin composition layers. For examination purposes, it will be assumed that the metal foils and resin composition layers are the same (and the second recitation should read “the metal foil” and “the resin composition layer”, respectively.
Claims 2-11, 13-14, 16-17, 28-29 are also rejected by virtue of their dependency on Claim 1.
Claim 12 recites “the heating in the step 1”. There is insufficient antecedent basis for this limitation in the claim as step 1 of Claim 1 does not explicitly recite the step of reducing content of moisture and/or solvent as a heating step. For examination purposes, the claim will be interpreted as “the reducing content of moisture and/or solvent in the step 1”. Alternatively, Step 1 of Claim 1 could be amended to explicitly recite the reducing content of moisture and/or solvent step as a heating step.
Claim Rejections - 35 USC § 102
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.
(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 1-2, 4-5, 8-9, 11-14, 16-17, and 28-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsurui et al (JP2022039763 cited in IDS with references to the machine English translation provided herewith).
Regarding Claim 1, Tsurui teaches a method for producing a metal foil-clad laminate [0001]; [0086], which is a method where a vacuum laminator [0109] is used to produce a metal foil-clad laminate [0001]; [0086] in which a resin composite sheet C [0086] comprising a metal foil ([0086]- support; [0088]- the support material may be a metal foil) and a resin composition layer disposed on one side of the metal foil ([0086]- resin composition provided on the support) is laminated ([0109]- discussing vacuum lamination) on a surface of a circuit board A [0108]; [0158] comprising an insulating layer ([0158]- insulating layer 100 on inner layer circuit board) and a conductor circuit layer ([0158]- conductor layer 110 on inner layer circuit board), the method comprising steps set forth below;
Step 1: a step of reducing a content of moisture and/or a solvent contained in the circuit board A to obtain a circuit board B ([0097]- drying to reduce the content of organic solvent);
Step 2: a step of disposing the resin composite sheet C [0086] comprising a metal foil ([0086]- support; [0088]- the support material may be a metal foil) and a resin composition layer disposed on one side of the metal foil ([0086]- resin composition provided on the support) on at least one surface of the circuit board B in a way that a side of the resin composition layer is in contact with the circuit board B [0108]-[0109]; [0158], and heating and applying pressure from a surface on a side of the metal foil under an environment of reduced pressure or vacuum ([0109]- vacuum lamination] to obtain a laminated substrate D in which the resin composite sheet C is laminated on at least one surface of the circuit board B [0108]-[0109]; [0158]; and
Step 3: a step of heating and applying pressure from a surface on a side of the metal foil of the laminated substrate D obtained in the step 2 by using a pressing metal plate or a laminating metal roll to smooth a surface of the resin composition layer of the laminated substrate D to obtain a laminated substrate E ([0111]- smoothed by a hot press).
Regarding Claim 2, Tsurui further teaches after the step 3, conducting a below-mentioned step; Step 4: a step of heating the laminated substrate E obtained in the step 3 to cure the resin composition layer to obtain a cured board F ([0113]- discussing thermal curing).
Regarding Claim 4, Tsurui further teaches the steps 2 to 4 are conducted repeatedly for the cured board F ([0111]- lamination and smoothing are carried out continuously).
Regarding Claim 5, Tsurui further teaches the heating in the step 4 is conducted at a temperature of from 100 to 250°C ([0114]- the curing temperature is preferably 120°C to 240°C).
Regarding Claim 8, Tsurui further teaches the circuit board B obtained in the step 1 is made less likely to absorb moisture ([0024]- the component is preferably treated with a surface treatment agent from the viewpoint of improving moisture resistance).
Regarding Claim 9, Tsurui further teaches the step 2 is conducted immediately after the step 1 ([0109]-[0113]- discussing a continuous process).
Regarding Claim 11, Tsurui further teaches in the step 1, obtaining the circuit board B in which a content of moisture contained in the circuit board A is reduced ([0097]- drying to reduce the content of organic solvent).
Regarding Claim 12, Tsurui further teaches the heating in the step 1 is conducted at a temperature of from 30 to 200°C ([0097]- drying at 50°C to 150°C).
Regarding Claim 13, Tsurui further teaches the heating in the step 2 is conducted at a temperature of from 80 to 190°C ([0109]- heat-sealing temperature is preferably in the range of 60°C to 160°C) and at a pressure of from 3 to 30 kgf/cm2 ([0109]- the heat-sealing pressure is preferably in the range of 0.098 MPa to 1.77 MPa≈0.999 to 18 kgf/cm2).
Regarding Claim 14, Tsurui further teaches the heating in the step 3 is conducted at a temperature of from 80 to 190°C (([0109]- heat-sealing temperature is preferably in the range of 60°C to 160°C; [0111]- The pressing conditions for the smoothing process can be the same as those for the heat bonding conditions for the lamination process)and at a pressure of from 3 to 30 kgf/cm2 ([0109]- the heat-sealing pressure is preferably in the range of 0.098 MPa to 1.77 MPa≈0.999 to 18 kgf/cm2; [0111]- The pressing conditions for the smoothing process can be the same as those for the heat bonding conditions for the lamination process).
Regarding Claim 16, Tsurui further teaches the resin composite sheet C comprises a carrier substrate ([0104]- inner layer circuit board typically comprises a support substrate and a metal layer provided on the surface of the support substrate; [0105]- the support substrate includes a copper foil with a carrier), the metal foil ([0086]- support; [0088]- the support material may be a metal foil; [0105]- the support substrate includes a copper foil with a carrier)), and the resin composition layer ([0086]- resin composition provided on the support), in this order ([0086]; [0088]; [0104]-[0105].
Regarding Claim 17, Tsurui further teaches the resin composition comprises a thermosetting resin [0105], and an inorganic filler in an amount of from 0 to 250 parts by mass per 100 parts by mass of a resin solid content contained in the resin composition [0016]; [0044].
Regarding Claim 28, Tsurui further teaches a method for producing a printed wiring board [0099]; [0160], the method comprising the method for producing a metal foil-clad laminate according to claim 1 (See rejection of Claim 1 above).
Regarding Claim 29, Tsurui further teaches a method for producing a semiconductor device [0160], the method comprising the method for producing a metal foil-clad laminate according to claim 1 (See rejection of Claim 1 above).
Claim Rejections - 35 USC § 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tsurui et al (JP2022039763 cited in IDS with references to the machine English translation provided herewith) in view of Nii (PGPub 2022/0185945)
Regarding Claim 3, Tsurui does not specify a mass reduction ratio of the laminated substrate E by the heating in the step 4 is 1.0 mass% or less.
Nii teaches an alternative method for producing a foil-clad laminate (Abstract) wherein a mass reduction ratio of the laminated substrate E by the heating in the step 4 is 1.0 mass% or less ([0184]- Grade A laminates with a mass reduction ratio of 0-0.2% by mass, Grade B laminates with a mass reduction ratio of 0.2-0.3% by mass) in order to reduce linear expansivity of the cured product and reduce shrinkage caused by curing [0138].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsurui to include a mass reduction ratio of less than 1 mass% as taught by Nii with reasonable expectation of success to reduce linear expansivity of the cured product and reduce shrinkage caused by curing [0138].
Claims 6-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tsurui et al (JP2022039763 cited in IDS with references to the machine English translation provided herewith) in view of Takenaka et al (JPH10256726A cited in IDS with references to the machine English translation provided herewith).
Regarding Claim 6, Tsurui does not specify in the heating of the step 4, the temperature is raised in stages with two or more stages.
Takenaka teaches an alternative method of producing a foil clad laminate [0001]; [0003] wherein in the curing step, the temperature is raised in stages with two or more stages ([0050]- drying zones) in order to suppress defects in the curing oven [0055].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsurui to include a two-stage curing oven as taught by Takenaka with reasonable expectation of success to suppress defects in the curing oven [0055].
Regarding Claim 7, Tsurui does not specify the heating in the step 4 is conducted at a temperature of from 100 to 180°C, and then further conducted at a temperature of higher than 180°C and 250°C or lower.
Takenaka teaches an alternative method of producing a foil clad laminate [0001]; [0003] wherein the heating in the step 4 is conducted at a temperature of from 100 to 180°C ([0050]- 120°C zone), and then further conducted at a temperature of higher than 180°C and 250°C or lower ([0050]- 200°C zone) in order to suppress defects in the curing oven [0055].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsurui to include a two-stage curing oven with zones at a temperature of 100 to 180°C and 180°C to 250°C as taught by Takenaka with reasonable expectation of success to suppress defects in the curing oven [0055].
Regarding Claim 10, Tsurui does not specify the circuit board B obtained in the step 1 is stored in an atmosphere where moisture absorption is less likely to occur, and then the step 2 is conducted.
Takenaka teaches an alternative method of producing a foil clad laminate [0001]; [0003] wherein the circuit board B obtained in the step 1 is stored in an atmosphere where moisture absorption is less likely to occur, and then the step 2 is conducted [0016] to improve solder heat resistance and suppress the amount of moisture absorbed by the circuit board [0016].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsurui to include storing the circuit board between stages as taught by Takenaka with reasonable expectation of success to improve solder heat resistance and suppress the amount of moisture absorbed by the circuit board [0016].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 6/18/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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