DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 19, 21 and 26-28 in the amendments filed 12/18/2025.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/18/2025, with respect to the objection to claim 19 as set forth in paragraph 4 of the action mailed 6/20/2025 have been fully considered and are persuasive. The objection to claim 19 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 12/18/2025, with respect to the rejection of claims 13-14 under 35 U.S.C. 112(d) as set forth in paragraph 7 of the action mailed 6/20/2025 have been fully considered and are persuasive. The rejection of claims 13-14 has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, 6, 17 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP 2015131866 A) in view of Tochihira et al. (US 2018/0258324 A1). The Examiner notes that citations from the ‘866 reference were taken from a machine translation which was included with a previous action.
Regarding claim(s) 1, 3, 6, 17 and 24, Takahashi teaches an adhesive elastomer composition (para 0015) comprising (A) a styrene-based thermoplastic elastomer (TPE), (B) an epoxy resin, (C) a polyphenylene ether oligomer having styrene groups at both ends (polymerizable group at an end is a vinyl benzyl group), (D) a liquid rubber (para 0015-0016) and an amine-based curing agent for the epoxy resin (B) (para 0028), which said styrene-based TPE is present at 70 to 95 mass% with respect to the total of (A) and (B) epoxy resin towards a balance of moldability and high-frequency characteristics (para 0005, 0017) and component (C) is present at 10 to 40 % by mass with respect to the total of (A), (B) and (C) towards a balance of moldability and adhesiveness (para 0027).
The Examiner also notes that the compositions of Takahashi are heat cured at elevated temperatures (latent epoxy curing agent, current claims 6 and 17) (para 0046). The Examiner further notes that, while the mass % values for components (A), (B) and (C) are not with respect to the adhesive composition as a whole, Takahashi does instruct one skilled in the art as to the motivations for providing said components (A), (B) and (C) in the disclosed proportions as noted (current claim 1). In addition, while Takahashi does teach the proportions of the epoxy curing agent, one skilled in the art would recognize the advantages of providing the epoxy resin (B) and its associated curing in agent in the amount presently claimed (i.e., more than 0 and no more than 10 parts by weight, more than 0 and no more than 5 parts by weight, current claim 24) based on the degree of curing of the epoxy resin (B) required.
Takahashi is silent to the disclosed TPE (A) comprising a styrene content of 5 to 25 wt% (current claim 1), or 10 to 20 wt% (current claim 3).
However, Tochihira teaches a weight ratio of styrene units of 10 to 25 % by weight towards a balance of resin compatibility and adequate post-curing storage modulus (para 0085)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the components (A), (B), (C) and the epoxy curing agent in the amounts presently claimed based on the balance of moldability, high-frequency characteristics and adhesiveness, and the degree of cure, required of the prior art’s intended application as in the present invention; and to provide the styrenic elastomer(s) of the prior art’s adhesive composition with styrene content(s) identical to that presently claimed based on the balance of resin compatibility and adequate post-curing storage modulus as in the present invention.
Regarding claim 23, Takahashi also teaches that the compositions comprises component (H) (another epoxy resin curing agent) is, inter alia, an imidazole (para 0035).
Claim(s) 2, 10, 16 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP 2015131866 A) in view of Tochihira et al. (US 2018/0258324 A1) and in further view of Holguin et al. (US 6558790 B1).
Regarding claim(s) 2, 10 and 16, Takahashi teaches the adhesive elastomer composition comprising as in the rejection of claims 1, 3, 6, 17 and 23-24 set forth above.
Takahashi is silent to the mass average molecular weight (Mw) of the disclosed styrene-based TPE.
However, Holguin instructs that the molecular weight of adhesive polymers is selected based on a balance of coatability, cohesion and tack (column 4, lines 18-24).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the styrene-based TPE of Takahashi with Mw presently claimed based on the balance of coatability, cohesion and tack required of the prior art’s intended application as in the present invention.
Regarding claim 25, while Takahashi/Tochihira/Holguin does not disclose the presently claimed peel strength under the presently claimed conditions, the Examiner respectfully submits that, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Furthermore, in addition to the cited prior art teaching or rendering obvious all the limitations of the presently claimed invention as recited in current claims 1-3, 6, 10, 16-17 and 23-24, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the proportion(s) of the disclosed components towards providing the adhesive of the cited prior art with the presently claimed peel strength under the presently claimed conditions based on the peel strength and the conditions of use as required by the prior art’s intended application as in the present invention.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP 2015131866 A) in view of Tochihira et al. (US 2018/0258324 A1) and in further view of Takahashi et al. (JP 2018001632 A). The Examiner notes that citations from the ‘632 reference were taken from a machine translation, which is included with the current action.
Regarding claim(s) 22, Takahashi ‘866/Tochihira teaches the adhesive elastomer composition comprising the (C) a polyphenylene ether oligomer having styrene groups at both ends, but is silent to the end groups also comprising (meth)acryloyl groups.
However, Takahashi ‘632 teaches a polyphenylene ether resin (C) comprising a substituent (c2) having terminal carbon-carbon double bond such as substituent (c21) of formula (6) such as, inter alia, vinylbenzyl, or substituent (c22) of formula (7) (para 0034-0041). Formula (7) as presented in the original ‘632 document demonstrates that the substituent (c22) is a (meth)acryloyl group.
The Examiner respectfully notes that case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ (meth)acryloyl-functional polyphenylene ethers in tandem with the vinylbenzyl-functional polyphenylene ethers, and thereby arrive at the presently claimed invention from the disclosures of the prior art.
Response to Arguments
Applicant’s arguments with respect to prior art rejections set forth in the previous action have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 13-14 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter: The cited prior art as set forth above teaches all the limitations of the presently claimed invention, but does not teach or suggest a (C) polyphenylene ether oligomer terminated with an epoxy polymerizable group as required in current claims 13-14.
Also, JP 2016027131 A to Saito et al. teaches an adhesive resin component (adhesive composition) comprising:
a polyphenylene ether towards adjusting the glass transition temperature (Tg) and heat resistance;
a styrene-based elastomer towards adjusting the B-stage elastic modulus, embeddability and post-curing adhesive strength;
epoxy resins;
and imidazole curing accelerator (epoxy curing agent) and is present at 0.01 to 0.2 % by mass (para 0041-0044);
which said polyphenylene ether is SA 9000 (para 0097), which is identical to that presently disclosed as providing the presently claimed modified polyphenylene ether with methacryloyl groups (modified having ethylenically unsaturated polymerizable group(s).
Saito continues to teach that the styrene-based elastomer includes those listed in paragraph 0032 and specific elastomers such as, inter alia, HYBRAR 7125 (para 0098), which is identical to that presently disclosed as providing the presently claimed styrene content of 20 wt%.
Saito also teaches that the mass ratio of the polyphenylene ether to the styrene-based elastomer is 1/5, which overlaps that presently claimed (75 to 90 parts by mass, 5 to 20 parts by mass), towards a balance of appropriate Tg, air release properties, elastic modulus and embeddability (para 0033), with the polyphenylene and elastomer, with or without the acrylic polymer, present in a combined amount of 90 mass % or more (para 0038; see also para 0013-0014).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Saito further teaches that epoxy resin improves the heat resistance, and is provided in an amount of 1 to 5 mass % towards a balance of heat resistance and adhesion to a substrate (para 0039). The Examiner notes that the proportions of the epoxy resin and the imidazole curing accelerator provides an overlap with the presently claimed proportions for the combined amounts of the recited epoxy resin and epoxy resin curing agent (more than 0 to 10 parts by mass).
Saito does not teach that said polyphenylene ether comprises end groups of vinylbenzyl as presently required.
Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/24/2026