DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 13-14 and the addition of new claim 29 in the amendments filed 6/24/2026.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/24/2026 has been entered.
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 § 112
Claims 1-3, 6, 10, 16-17, 22-25 and 29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim recites a thermosetting adhesive sheet having a dielectric loss tangent of less than 0.020 after thermosetting the recited adhesive composition. The specification as originally filed discloses a dielectric loss tangent less than 0.002 (result A), 0.002 to less than 0.0035 (result B), 0.0035 to less than 0.005 (result C) and 0.005 or more (result D) (para 0044).
While results A-D provide for any numerical range of the dielectric loss tangent, including that presently claimed, result D does not encompass all the compositional elements/proportional ranges presently claimed. Example 8, which demonstrates result D for the dielectric loss tangent, comprises more of the epoxy resin/curing agent than that claimed. Thus, the is no support in the specification as originally filed for a dielectric loss tangent with an upper limit of 0.020.
Claim 22 is 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 22 recites the limitation "the (meth)acryloyl group" in line 2. There is insufficient antecedent basis for this limitation in the claim as a (meth)acryloyl group has not been previously introduced.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 10 and 22-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP 2016027131 A). The Examiner notes that citations from the ‘131 reference were taken from a machine translation, which was included with a previous action.
Regarding claims 1-3, 10 and 22-24, Saito 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; and,
epoxy resins and imidazole curing accelerator (imidazole-based epoxy curing agent, current claim 23) present at 0.01 to 0.2 % by mass (para 0041-0044).
The 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), current claim 22).
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% (current claims 3 and 10) and the presently claimed mass-average molecular weight (Mw) of 110,000 (current claim 2).
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).
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, more than 0 to 5 parts by mass, current claim 24).
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).
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 composition of Saito with the polyphenylene ether, styrene-based elastomer, epoxy resin and epoxy curing accelerator in the presently claimed proportions based on the balance of the Tg, heat resistance, B-stage elastic modulus, embeddability, post-curing adhesive strength, air release properties, embeddability and/or adhesion to a substrate required of the prior art’s intended application as in the present invention.
While Saito does not disclose the presently claimed dielectric loss tangent following thermosetting the adhesive composition into a thermosetting adhesive sheet, Saito does instruct that the adhesive composition is cured at elevated temperatures to form an adhesive layer (thermoset adhesive sheet) (para 0087, 0089, 0118). Saito also discloses that the adhesive demonstrates a dielectric constant less than 2.5 (para 0030), which is identical to that presently disclosed (see para 0042 of the specification as originally filed).
The Examiner further reminds the Applicant 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.
Therefore, given that the cited prior art teaches an adhesive composition identical to that presently claimed comprising identical compositional elements, and in identical proportions, and demonstrates a dielectric constant identical to that presently disclosed, it is reasonable to conclude that the invention of the cited prior art would further demonstrate the presently claimed dielectric loss tangent (less than 0.20 after thermosetting) under identical conditions.
Regarding claim 25, while Saito does not disclose the presently claimed peel strength under the presently claimed conditions, the Examiner respectfully submits that, as noted above, Saito teaches an adhesive composition identical to that presently claimed comprising identical compositional elements, and in identical proportions, it is reasonable to conclude that the invention of the cited prior art would further demonstrate the presently claimed peel strength (i.e., 5 N/cm or more) under identical conditions.
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 and 22-24, 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 (e.g., the styrene-based elastomer towards adjusting the post-curing adhesive strength) 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) 6 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP 2016027131 A) in view of Kaku (US 10428249 B2).
Regarding claims 6 and 16-17, Saito is silent to the imidazole curing accelerator (i.e., the presently claimed epoxy curing agent) being a latent curing accelerator.
In addition, Kaku teaches an adhesive composition comprising an epoxy resin and a latent curing agent (abstract) such as microcapsule imidazole particles coated with a polyurethane material (column 4, lines 48-56).
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 imidazole curing accelerator of Saito with the latent imidazole curing agents of Kaku based on the curing temperature of the prior art’s intended application as in the present invention.
Claim(s) 1, 3, 6, 17, 23-24 and 29 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, 24 and 29, 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, current claim 29), (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) 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 notes that the compositions of Takahashi are heat cured at elevated temperatures (thermosetting adhesive sheet, latent epoxy curing agent, current claims 6 and 17) (para 0046). The Examiner also 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 not teach the proportions of the epoxy curing agent, one skilled in the art would been apprised to provide 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. Paragraph 0052 of the machine translation and Table 1 of the original document demonstrate that Takahashi teaches a dielectric lost tangent of 0.0032 to 0.0047 (less than 0.020) after thermosetting (para 0046).
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) promotes curing of the epoxy resin and 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, 23-24 and 29 set forth above.
Takahashi is silent to the mass average molecular weight (Mw) of the disclosed styrene-based TPE being 1000,000 or more.
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 the 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, 23-24 and 29, 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.
Response to Arguments
Applicant's arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the presently claimed invention and the cited prior art references noted above, have been fully considered but they are not persuasive.
The Applicant is respectfully reminded that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). Tochihira was only cited to remedy Takahashi’s silence to the styrene content of Takahashi’s (A) styrene-based thermoplastic elastomer.
In addition, the Applicant is reminded that according to MPEP 2141.01 (a), a reference may be relied on as a basis for rejection of an applicants’ invention if it is “reasonably pertinent to the particular problem with which the inventor is concerned.” A reasonably pertinent reference is further described as one which “even though it maybe in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Indeed, both Takahashi and Tochihira are both directed adhesive compositions comprising polyphenylene ethers and styrene-based thermoplastic elastomers.
Turning now to the data presently disclosed in Table 1, the Examiner submits that the proportions of the styrene elastomer and the modified polyphenylene ether presently claimed are commensurate in scope with said data, but that the proportions of the epoxy resin/curing agent are not as the claimed invention ranges from greater than 0 parts by weight to no more than 10 parts by mass while the data only represents 5 parts by mass. In addition, Examples 1-5, 9 and 13-14 demonstrate dielectric loss tangent values in the A and B categories, which designate dielectric loss tangents with an upper limit of less than 0.0035 but which are much smaller than the upper limit presently claimed of 0.020.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
In regard to the mass average molecular weight (Mw and the styrene content of the styrene elastomer, it is noted that Example 9, which the Applicant asserts is an inventive example, employs the TUFTEC H1041 styrene elastomer, which only has a Mw of 90,000; below that presently argued. TUFTEC H1041 also comprises a styrene content of 30 wt%, which is above the upper limit of 25 wt% presently claimed.
Conclusion
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/29/2026
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