DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-14, 17 and 18 in the reply filed on 7/8/26 is acknowledged.
Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/8/26.
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 1-8 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for a fluororesin and a spherical silica filler, does not reasonably provide enablement for any layer that is known or will be known to have the claimed dielectric properties. 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 and use 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 14-23, 25-27 and 30-34, can be used as claimed and whether claims 14-27, and 30-34 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 14-23, 25-27, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-8 read on any possible layer of materials with or without fillers. One would not know what which materials and combination of materials could possibly have these properties.
(b) There is no direction or guidance presented for meeting the properties of the claims as it is unclear what combination of materials could possibly have those dielectric properties outside the fluororesin and spherical silica.
(c) There is an absence of working examples concerning forming any type of material with different types or resins or fillers to obtain these dielectric properties.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-8.
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 1-12 and 14 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaimori (WO 2021235276 which is being directly translated by US 20220272838).
As to claims 1-11, Kaimori discloses a dielectric sheet that includes powder polytetrafluoroethylene and spherical silica (abs) that is used for a printed wiring board. The silica has a diameter of .1 to 3 microns (paragraph 20). The polytetrafluoroethylene used can have average diameter of .1 to .5 microns (paragraph 45) as a fine powder and wherein the polytetrafluoroethylene powder can have an average diameter of 20 microns to 1000 microns. It should be noted that the dielectric sheet of Kaimori is made with the same materials with the same particle sizes as claimed and is used for the same purposes as claimed, therefore Kaimori will inherently teach a dielectric film having the claimed features of 1-4. In the alternative it would have been obvious to one of ordinary skill in the art to have modified Kaimori to have obtained these properties.
As to claim 12, Kaimori is silent to having the fluororesin particle have a particle size at a cumulative volume of 50% of .5 to 40 microns. Kaimori discloses that the polytetrafluoroethylene used can have average diameter of .1 to .5 microns (paragraph 45) as a fine powder and wherein the polytetrafluoroethylene powder can have an average diameter of 20 microns to 1000 microns. Therefore it would have been obvious to one of ordinary skill in the art to have had the cumulative volume of 50% at .5 to 40 microns as Kaimori discloses that the size of the fine particle used can be .5 and it would have been obvious to have used all the particles at that size absent unexpectedly better results as Kaimori overlaps in scope.
As to claim 14, Kaimori discloses a copper clad film laminated to the dielectric sheet (paragraph 104).
Claim Rejections - 35 USC § 103
Claims 13, 17 and 18are rejected under 35 U.S.C. 103 as being unpatentable over Kaimori (WO 2021235276 which is being directly translated by US 20220272838) in view of Honda (JP 2007086766 which has been machine translated).
As to claims 13, 17 and 18, Kaimori anticipates/renders obvious claim 1 for the reasons noted above, however is silent to being a terahertz band circuit board.
Honda discloses a terahertz band circuit board for a printed wiring board formed from a coper clad laminate.
It would have been obvious to one of ordinary skill in the art to have modified Honda and used the copper clad laminate of Kaimori within the terahertz band circuit board.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 5712721291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785
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