Prosecution Insights
Last updated: April 19, 2026
Application No. 17/311,542

RESIN COMPOSITION, PREPREG, FILM WITH RESIN, METAL FOIL WITH RESIN, METAL-CLAD LAMINATE, AND PRINTED WIRING BOARD

Final Rejection §103
Filed
Jun 07, 2021
Examiner
MILLER, BETHANY MACKENZIE
Art Unit
1787
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Panasonic Intellectual Property Management Co., Ltd.
OA Round
6 (Final)
56%
Grant Probability
Moderate
7-8
OA Rounds
3y 4m
To Grant
99%
With Interview

Examiner Intelligence

Grants 56% of resolved cases
56%
Career Allow Rate
78 granted / 140 resolved
-9.3% vs TC avg
Strong +49% interview lift
Without
With
+48.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
48 currently pending
Career history
188
Total Applications
across all art units

Statute-Specific Performance

§103
62.8%
+22.8% vs TC avg
§102
10.4%
-29.6% vs TC avg
§112
21.7%
-18.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 140 resolved cases

Office Action

§103
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 § 103 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. Claims 1-3, 5-6, 8-9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2017/0313854 A1, "Kobayashi '854") in view of Chen et al. (CN 102115600 A), Hoshino et al. (WO 2017/0147033 using US 2018/0327559 as a translation), and Hasebe et al. (US 2016/0125971 A1). Regarding Claims 1-3, 6, 8-9, Kobayashi ‘854 discloses resin composition comprising maleimide of general Formula (1): PNG media_image1.png 183 426 media_image1.png Greyscale Wherein R each independently represents a group selected from the group consisting of a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, and a phenyl group, and n is an average value and represents 1<n≦5 (para 0041), in an amount of 1 to 90 parts relative to 100 parts resin solids (para 0043). Kobayashi ‘854 discloses the resin composition may further comprise epoxy resin and phenolic resin (para 0050), inorganic filler including silica and magnesium hydroxide (para 0045), and core-shell-based rubber powders (para 0046). The phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin to promote flame retardancy (para 0052). Kobayashi ‘854 does not disclose the phosphorus-containing phenolic resin having a structure as claimed. Chen discloses a resin composition comprising bismaleimide resin and epoxy resin (pg 1, lines 25-29) and 0-20 parts halogen-free flame retardant such as phosphorus-containing phenolic resin XZ92741 by Dow Chemical (pg 2, lines 31-35; pg 3, line 46). This produced good halogen-free flame retardant property (pg 3, lines 25-30). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘854 to incorporate the teachings of Chen and produce the resin composition using 0-20 parts flame retardant XZ92741 by Dow Chemical as the phosphorus-containing phenolic resin. Doing so would produce good halogen-free flame retardant property. The present specification discloses XZ92741 by Dow Chemical has the structure of Chemical Formula (4) and a bisphenol A structure (para 0044) as claimed. Kobayashi ‘854 in view of Chen does not disclose the core-shell-based rubber powders having structure as claimed. Hoshino discloses resin composition for prepregs and printed wiring boards (para 0020) where the composition comprises epoxy resin (para 0025), maleimide resin, phenolic resin (para 0027) and core-shell particles having an average particle diameter of 0.2-2 microns (para 0044). The core-shell particle includes those with core made from silicone rubber and acrylic rubber (para 0043). The core-shell particles include those known under the tradename SRK200A (para 0088) which has a silicone/acrylic core. SRK200A is identical to the core-shore particles of the present invention (see paragraph 0146 of the present specification) and therefore necessarily has a shell made from styrene-acrylonitrile and mean particle size as claimed. Hoshino discloses the core-shell particles produce a stress relief effect and provide excellent hygroscopic heat resistance (para 0041). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘854 in view of Chen to incorporate the teachings of Hoshino and use the SRK200A core-shell particles of Hoshino as the core-shell-based rubber powders. Doing so would produce a stress relief effect and provide excellent hygroscopic heat resistance. While Kobayashi ‘854 discloses the inorganic filler may include silica and magnesium hydroxide (para 0045), Kobayashi ‘854 in view of Chen and Hoshino does not disclose the mass ratio of silica to magnesium hydroxide as claimed. Hasebe discloses a resin composition for printed wiring board, comprising epoxy, maleimide, and inorganic filler (Abstract). The inorganic filler may be a mixture of silica and magnesium hydroxide, where the silica improves thermal expansion properties and the magnesium hydroxide improves flame resistance (paras 0070-0072). While Hasebe does not disclose a specific ratio of silica to magnesium hydroxide, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to modify Kobayashi ‘854 in view of Chen and Hoshino to incorporate the teachings of Hasebe and select amounts of silica and magnesium hydroxide, including within the ratio claimed, in order to optimize and balance the thermal expansion properties and flame resistance. Regarding Claim 5, Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses the epoxy resin may be biphenyl-based epoxy or naphthalene-based epoxy (para 0051). Regarding Claim 11, Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a prepreg comprising a base material and the resin composition, which is semi-cured (para 0062). Regarding Claims 12-13, Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a semi-cured prepreg comprising the resin composition (para 0062) and a metal foil disposed on the semi-cured prepreg (para 0064). Regarding Claim 14, Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a metal foil-clad laminate comprising a prepreg comprising the resin composition, laminated to a metal foil (para 0064). Regarding Claim 15, Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a printed wiring board comprising an insulating layer comprising the resin composition, laminated with metal foil to form circuits (para 0065). Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe as applied to claim 1 above, and further in view of Wang et al. (US 2018/0072884). Regarding Claims 7 and 16, Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above, including that the phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin (Kobayashi ‘854, para 0052), and 0-20 parts phosphorus-containing phenolic resin may be used (Chen, pg 2, lines 31-35). Kobayashi ‘854 further discloses the use of phenolic resin include dicyclopentadiene phenolic resin (para 0052) but does not disclose an amount of the phenolic resin. Wang discloses a resin composition for prepregs and printed wiring boards (paras 0007-0010) that comprises epoxy resin (para 0012), maleimide resin (para 0083), and 10-50 parts dicyclopentadiene phenolic resin (para 0014). The dicyclopentadiene phenolic resin produces composition with desired low dielectric constant, heat resistance, and glass transition temperature (para 0051). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘854 in view of Chen, Hoshino, and Hasebe to incorporate the teachings of Wang and use 10-50 parts dicyclopentadiene phenolic resin. Doing so would produce composition with desired low dielectric constant, heat resistance, and glass transition temperature Therefore, the total amount of phenolic compound would be 10-70 parts (0+10 to 20+50), and the ratio of phosphorus containing phenolic resin to dicyclopentadiene phenolic resin would be 0/10-20/50, or 0-40/100. Claims 1, 4-6, 8-9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2017/0231090 A1, "Kobayashi ‘090") in view of Chen, Hoshino, and Hasebe. Regarding Claims 1, 4, 6, and 8-9, Kobayashi ‘090 discloses resin composition comprising maleimide compound (para 0067) such as BMI-2300 (para 0112), in an amount of 1 to 90 parts relative to 100 parts resin solids (para 0069). According to paragraph 0145 of the present specification, BMI-2300 has a phenyl methane maleimide structure according to claimed Chemical Formula (2). Kobayashi ‘090 further discloses the resin composition may further comprise epoxy resin and phenolic resin (para 0085), inorganic filler such as silica and magnesium hydroxide (paras 0077-0078), and core-shell-based rubber powders (para 0079). The phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin to promote flame retardancy (para 0087). Kobayashi ‘090 does not disclose the phosphorus-containing phenolic resin having a structure as claimed. Chen discloses a resin composition comprising bismaleimide resin and epoxy resin (pg 1, lines 25-29) and 0-20 parts halogen-free flame retardant such as phosphorus-containing phenolic resin XZ92741 by Dow Chemical (pg 2, lines 31-35; pg 3, line 46). This produced good halogen-free flame retardant property (pg 3, lines 25-30). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘090 to incorporate the teachings of Chen and produce the resin composition using 0-20 parts flame retardant XZ92741 by Dow Chemical as the phenolic resin. Doing so would produce good halogen-free flame retardant property. The present specification discloses XZ92741 by Dow Chemical has the structure of Chemical Formula (4) and a bisphenol A structure (para 0044) as claimed. Kobayashi ‘090 in view of Chen does not disclose the core-shell-based rubber powders having structure as claimed. Hoshino discloses resin composition for prepregs and printed wiring boards (para 0020) where the composition comprises epoxy resin (para 0025), maleimide resin, phenolic resin (para 0027) and core-shell particles having an average particle diameter of 0.2-2 microns (para 0044). The core-shell particle includes those with core made from silicone rubber and acrylic rubber (para 0043). The core-shell particles include those known under the tradename SRK200A (para 0088) which has a silicone/acrylic core. SRK200A is identical to the core-shore particles of the present invention (see paragraph 0146 of the present specification) and therefore necessarily has a shell made from styrene-acrylonitrile and mean particle size as claimed. Hoshino discloses the core-shell particles produce a stress relief effect and provide excellent hygroscopic heat resistance (para 0041). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘090 in view of Chen to incorporate the teachings of Hoshino and use the SRK200A core-shell particles of Hoshino as the core-shell-based rubber powders. Doing so would produce a stress relief effect and provide excellent hygroscopic heat resistance. While Kobayashi ‘090 discloses the inorganic filler may include silica and magnesium hydroxide (paras 0077-0078), Kobayashi ‘090 in view of Chen and Hoshino does not disclose the mass ratio of silica to magnesium hydroxide as claimed. Hasebe discloses a resin composition for printed wiring board, comprising epoxy, maleimide, and inorganic filler (Abstract). The inorganic filler may be a mixture of silica and magnesium hydroxide, where the silica improves thermal expansion properties and the magnesium hydroxide improves flame resistance (paras 0070-0072). While Hasebe does not disclose a specific ratio of silica to magnesium hydroxide, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to modify Kobayashi ‘090 in view of Chen and Hoshino to incorporate the teachings of Hasebe and select amounts of silica and magnesium hydroxide, including within the ratio claimed, in order to optimize and balance the thermal expansion properties and flame resistance. Regarding Claim 5, Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses the epoxy resin may be biphenyl-based epoxy or naphthalene-based epoxy (para 0086). Regarding Claim 11, Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a prepreg comprising a base material and the resin composition, which is semi-cured (para 0096). Regarding Claims 12-13, Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a semi-cured prepreg comprising the resin composition (para 0096) and a metal foil disposed on the semi-cured prepreg (para 0098). Regarding Claim 14, Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a metal foil-clad laminate comprising a prepreg comprising the resin composition, laminated to a metal foil (para 0098). Regarding Claim 15, Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a printed wiring board comprising an insulating layer comprising the resin composition, laminated with metal foil to form circuits (para 0099). Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe as applied to claim 1 above, and further in view of Wang. Regarding Claims 7 and 16, Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe discloses all the limitations of the present invention according to Claim 1 above, including that the phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin (Kobayashi ‘090, para 0087), and 0-20 parts phosphorus-containing phenolic resin may be used (Chen, pg 2, lines 31-35). Kobayashi ‘090 further discloses the use of phenolic resin include dicyclopentadiene phenolic resin (para 0087) but does not disclose an amount of the phenolic resin. Wang discloses a resin composition for prepregs and printed wiring boards (paras 0007-0010) that comprises epoxy resin (para 0012), maleimide resin (para 0083), and 10-50 parts dicyclopentadiene phenolic resin (para 0014). The dicyclopentadiene phenolic resin produces composition with desired low dielectric constant, heat resistance, and glass transition temperature (para 0051). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘090 in view of Chen, Hoshino, and Hasebe to incorporate the teachings of Wang and use 10-50 parts dicyclopentadiene phenolic resin. Doing so would produce composition with desired low dielectric constant, heat resistance, and glass transition temperature Therefore, the total amount of phenolic compound would be 10-70 parts (0+10 to 20+50), and the ratio of phosphorus containing phenolic resin to dicyclopentadiene phenolic resin would be 0/10-20/50, or 0-40/100. Claims 1-3, 5-6, 8-9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2017/0313854 A1, "Kobayashi '854") in view of Chen et al. (CN 102115600 A), Hoshino et al. (WO 2017/0147033 using US 2018/0327559 as a translation), and Ando et al. (KR 20020028917 A, using machine translation of equivalent publication KR100687519B1). Regarding Claims 1-3, 6, 8-9, Kobayashi ‘854 discloses resin composition comprising maleimide of general Formula (1): PNG media_image1.png 183 426 media_image1.png Greyscale Wherein R each independently represents a group selected from the group consisting of a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, and a phenyl group, and n is an average value and represents 1<n≦5 (para 0041), in an amount of 1 to 90 parts relative to 100 parts resin solids (para 0043). Kobayashi ‘854 discloses the resin composition may further comprise epoxy resin and phenolic resin (para 0050), inorganic filler including silica (paras 0045), and core-shell-based rubber powders (para 0046). The phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin to promote flame retardancy (para 0052). Kobayashi ‘854 does not disclose the phosphorus-containing phenolic resin having a structure as claimed. Chen discloses a resin composition comprising bismaleimide resin and epoxy resin (pg 1, lines 25-29) and 0-20 parts halogen-free flame retardant such as phosphorus-containing phenolic resin XZ92741 by Dow Chemical (pg 2, lines 31-35; pg 3, line 46). This produced good halogen-free flame retardant property (pg 3, lines 25-30). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘854 to incorporate the teachings of Chen and produce the resin composition using 0-20 parts flame retardant XZ92741 by Dow Chemical as the phosphorus-containing phenolic resin. Doing so would produce good halogen-free flame retardant property. The present specification discloses XZ92741 by Dow Chemical has the structure of Chemical Formula (4) and a bisphenol A structure (para 0044) as claimed. Kobayashi ‘854 in view of Chen does not disclose the core-shell-based rubber powders having structure as claimed. Hoshino discloses resin composition for prepregs and printed wiring boards (para 0020) where the composition comprises epoxy resin (para 0025), maleimide resin, phenolic resin (para 0027) and core-shell particles having an average particle diameter of 0.2-2 microns (para 0044). The core-shell particle includes those with core made from silicone rubber and acrylic rubber (para 0043). The core-shell particles include those known under the tradename SRK200A (para 0088) which has a silicone/acrylic core. SRK200A is identical to the core-shore particles of the present invention (see paragraph 0146 of the present specification) and therefore necessarily has a shell made from styrene-acrylonitrile and mean particle size as claimed. Hoshino discloses the core-shell particles produce a stress relief effect and provide excellent hygroscopic heat resistance (para 0041). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘854 in view of Chen to incorporate the teachings of Hoshino and use the SRK200A core-shell particles of Hoshino as the core-shell-based rubber powders. Doing so would produce a stress relief effect and provide excellent hygroscopic heat resistance. Kobayashi ‘854 discloses the inorganic filler is present in an amount of 50-1600 parts per 100 parts resin solids and that the filler includes silica (paras 0045, 0047). However, Kobayashi ‘854 in view of Chen and Hoshino do not disclose the mass ratio of silica to magnesium hydroxide as claimed. Ando discloses a thermosetting resin composition for prepregs and circuit boards (paras 1, 4) where the composition includes magnesium hydroxide particles, other inorganic filler, and synthetic thermosetting resin (paras 13, 14). The other inorganic filler includes silica (para 49) and the synthetic thermosetting resin includes epoxy resin (para 50). The magnesium hydroxide is present in an amount of 5-500 parts per 100 parts of the thermosetting resin (para 48). The motivation is to produce a resin composition having sufficient water resistance even under high temperature and humidity, corrosion resistance, excellent flame retardancy and thermal conductivity (para 13). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Kobayashi ‘854 in view of Chen and Hoshino to incorporate the teachings of Ando and produce the resin composition using 5-500 parts of the magnesium hydroxide as disclosed by Ando. Doing so would produce a resin composition having sufficient water resistance even under high temperature and humidity, corrosion resistance, excellent flame retardancy and thermal conductivity. Given that Kobayashi ‘854 discloses 5-1600 parts silica per 100 parts resin solids and Ando discloses 5-500 parts magnesium hydroxide, the ratio of silica to magnesium hydroxide is calculated as 0.01- 320 (5/500 – 1600/5). Regarding Claim 5, Kobayashi ‘854 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses the epoxy resin may be biphenyl-based epoxy or naphthalene-based epoxy (para 0051). Regarding Claim 11, Kobayashi ‘854 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a prepreg comprising a base material and the resin composition, which is semi-cured (para 0062). Regarding Claims 12-13, Kobayashi ‘854 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a semi-cured prepreg comprising the resin composition (para 0062) and a metal foil disposed on the semi-cured prepreg (para 0064). Regarding Claim 14, Kobayashi ‘854 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a metal foil-clad laminate comprising a prepreg comprising the resin composition, laminated to a metal foil (para 0064). Regarding Claim 15, Kobayashi ‘854 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘854 further discloses a printed wiring board comprising an insulating layer comprising the resin composition, laminated with metal foil to form circuits (para 0065). Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi ‘854 in view of Chen, Hoshino, and Ando as applied to claim 1 above, and further in view of Wang et al. (US 2018/0072884). Regarding Claims 7 and 16, Kobayashi ‘854 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above, including that the phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin (Kobayashi ‘854, para 0052), and 0-20 parts phosphorus-containing phenolic resin may be used (Chen, pg 2, lines 31-35). Kobayashi ‘854 further discloses the use of phenolic resin include dicyclopentadiene phenolic resin (para 0052) but does not disclose an amount of the phenolic resin. Wang discloses a resin composition for prepregs and printed wiring boards (paras 0007-0010) that comprises epoxy resin (para 0012), maleimide resin (para 0083), and 10-50 parts dicyclopentadiene phenolic resin (para 0014). The dicyclopentadiene phenolic resin produces composition with desired low dielectric constant, heat resistance, and glass transition temperature (para 0051). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘854 in view of Chen, Hoshino, and Ando to incorporate the teachings of Wang and use 10-50 parts dicyclopentadiene phenolic resin. Doing so would produce composition with desired low dielectric constant, heat resistance, and glass transition temperature Therefore, the total amount of phenolic compound would be 10-70 parts (0+10 to 20+50), and the ratio of phosphorus containing phenolic resin to dicyclopentadiene phenolic resin would be 0/10-20/50, or 0-40/100. Claims 1, 4-6, 8-9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US 2017/0231090 A1, "Kobayashi ‘090") in view of Chen, Hoshino, and Ando. Regarding Claims 1, 4, 6, and 8-9, Kobayashi ‘090 discloses resin composition comprising maleimide compound (para 0067) such as BMI-2300 (para 0112), in an amount of 1 to 90 parts relative to 100 parts resin solids (para 0069). According to paragraph 0145 of the present specification, BMI-2300 has a phenyl methane maleimide structure according to claimed Chemical Formula (2). Kobayashi ‘090 further discloses the resin composition may further comprise epoxy resin and phenolic resin (para 0085), inorganic filler such as silica and magnesium hydroxide (paras 0077-0078), and core-shell-based rubber powders (para 0079). The phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin to promote flame retardancy (para 0087). Kobayashi ‘090 does not disclose the phosphorus-containing phenolic resin having a structure as claimed. Chen discloses a resin composition comprising bismaleimide resin and epoxy resin (pg 1, lines 25-29) and 0-20 parts halogen-free flame retardant such as phosphorus-containing phenolic resin XZ92741 by Dow Chemical (pg 2, lines 31-35; pg 3, line 46). This produced good halogen-free flame retardant property (pg 3, lines 25-30). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘090 to incorporate the teachings of Chen and produce the resin composition using 0-20 parts flame retardant XZ92741 by Dow Chemical as the phenolic resin. Doing so would produce good halogen-free flame retardant property. The present specification discloses XZ92741 by Dow Chemical has the structure of Chemical Formula (4) and a bisphenol A structure (para 0044) as claimed. Kobayashi ‘090 in view of Chen does not disclose the core-shell-based rubber powders having structure as claimed. Hoshino discloses resin composition for prepregs and printed wiring boards (para 0020) where the composition comprises epoxy resin (para 0025), maleimide resin, phenolic resin (para 0027) and core-shell particles having an average particle diameter of 0.2-2 microns (para 0044). The core-shell particle includes those with core made from silicone rubber and acrylic rubber (para 0043). The core-shell particles include those known under the tradename SRK200A (para 0088) which has a silicone/acrylic core. SRK200A is identical to the core-shore particles of the present invention (see paragraph 0146 of the present specification) and therefore necessarily has a shell made from styrene-acrylonitrile and mean particle size as claimed. Hoshino discloses the core-shell particles produce a stress relief effect and provide excellent hygroscopic heat resistance (para 0041). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘090 in view of Chen to incorporate the teachings of Hoshino and use the SRK200A core-shell particles of Hoshino as the core-shell-based rubber powders. Doing so would produce a stress relief effect and provide excellent hygroscopic heat resistance. Kobayashi ‘090 discloses the inorganic filler is present in an amount of 50-1600 parts per 100 parts resin solids and that the filler includes silica (paras 0045, 0047). However, Kobayashi ‘090 in view of Chen and Hoshino do not disclose the mass ratio of silica to magnesium hydroxide as claimed. Ando discloses a thermosetting resin composition for prepregs and circuit boards (paras 1, 4) where the composition includes magnesium hydroxide particles, other inorganic filler, and synthetic thermosetting resin (paras 13, 14). The other inorganic filler includes silica (para 49) and the synthetic thermosetting resin includes epoxy resin (para 50). The magnesium hydroxide is present in an amount of 5-500 parts per 100 parts of the thermosetting resin (para 48). The motivation is to produce a resin composition having sufficient water resistance even under high temperature and humidity, corrosion resistance, excellent flame retardancy and thermal conductivity (para 13). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Kobayashi ‘090 in view of Chen and Hoshino to incorporate the teachings of Ando and produce the resin composition using 5-500 parts of the magnesium hydroxide as disclosed by Ando. Doing so would produce a resin composition having sufficient water resistance even under high temperature and humidity, corrosion resistance, excellent flame retardancy and thermal conductivity. Given that Kobayashi ‘090 discloses 5-1600 parts silica per 100 parts resin solids and Ando discloses 5-500 parts magnesium hydroxide, the ratio of silica to magnesium hydroxide is calculated as 0.01- 320 (5/500 – 1600/5). Regarding Claim 5, Kobayashi ‘090 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses the epoxy resin may be biphenyl-based epoxy or naphthalene-based epoxy (para 0086). Regarding Claim 11, Kobayashi ‘090 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a prepreg comprising a base material and the resin composition, which is semi-cured (para 0096). Regarding Claims 12-13, Kobayashi ‘090 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a semi-cured prepreg comprising the resin composition (para 0096) and a metal foil disposed on the semi-cured prepreg (para 0098). Regarding Claim 14, Kobayashi ‘090 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a metal foil-clad laminate comprising a prepreg comprising the resin composition, laminated to a metal foil (para 0098). Regarding Claim 15, Kobayashi ‘090 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above. Kobayashi ‘090 further discloses a printed wiring board comprising an insulating layer comprising the resin composition, laminated with metal foil to form circuits (para 0099). Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi ‘090 in view of Chen, Hoshino, and Ando as applied to claim 1 above, and further in view of Wang. Regarding Claims 7 and 16, Kobayashi ‘090 in view of Chen, Hoshino, and Ando discloses all the limitations of the present invention according to Claim 1 above, including that the phenolic resin may be a combination of biphenyl aralkyl phenolic resin and phosphorus-containing phenolic resin (Kobayashi ‘090, para 0087), and 0-20 parts phosphorus-containing phenolic resin may be used (Chen, pg 2, lines 31-35). Kobayashi ‘090 further discloses the use of phenolic resin include dicyclopentadiene phenolic resin (para 0087) but does not disclose an amount of the phenolic resin. Wang discloses a resin composition for prepregs and printed wiring boards (paras 0007-0010) that comprises epoxy resin (para 0012), maleimide resin (para 0083), and 10-50 parts dicyclopentadiene phenolic resin (para 0014). The dicyclopentadiene phenolic resin produces composition with desired low dielectric constant, heat resistance, and glass transition temperature (para 0051). Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Kobayashi ‘090 in view of Chen, Hoshino, and Ando to incorporate the teachings of Wang and use 10-50 parts dicyclopentadiene phenolic resin. Doing so would produce composition with desired low dielectric constant, heat resistance, and glass transition temperature Therefore, the total amount of phenolic compound would be 10-70 parts (0+10 to 20+50), and the ratio of phosphorus containing phenolic resin to dicyclopentadiene phenolic resin would be 0/10-20/50, or 0-40/100. Response to Arguments In light of applicant’s amendments filed 10/27/2025, the 35 USC 112(b) rejections of record are withdrawn. In light of applicant’s amendments filed 10/27/2025, the 35 USC 13 rejections of record are withdrawn. New grounds of rejection are set forth above. 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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00. 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, 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. 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. /BETHANY M MILLER/Examiner, Art Unit 1787 /CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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Prosecution Timeline

Jun 07, 2021
Application Filed
Oct 06, 2023
Non-Final Rejection — §103
Jan 02, 2024
Response Filed
Apr 01, 2024
Final Rejection — §103
Jul 02, 2024
Request for Continued Examination
Jul 06, 2024
Response after Non-Final Action
Aug 22, 2024
Non-Final Rejection — §103
Nov 06, 2024
Examiner Interview Summary
Nov 06, 2024
Applicant Interview (Telephonic)
Nov 14, 2024
Response Filed
Jan 29, 2025
Final Rejection — §103
Apr 22, 2025
Request for Continued Examination
Apr 24, 2025
Response after Non-Final Action
Aug 05, 2025
Non-Final Rejection — §103
Oct 22, 2025
Applicant Interview (Telephonic)
Oct 22, 2025
Examiner Interview Summary
Oct 27, 2025
Response Filed
Jan 21, 2026
Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12604540
BACK PANEL OF SOLAR CELL AND METHOD FOR MANUFACTURING THE SAME
2y 5m to grant Granted Apr 14, 2026
Patent 12584011
EPOXY RESIN COMPOSITION, GAS BARRIER LAMINATE, AND PACKAGING MATERIAL
2y 5m to grant Granted Mar 24, 2026
Patent 12581593
PREPREG, AND METAL-CLAD LAMINATED BOARD AND WIRING SUBSTRATE OBTAINED USING SAME
2y 5m to grant Granted Mar 17, 2026
Patent 12565582
RESIN COMPOSITION AND METAL CLAD SUBSTRATE
2y 5m to grant Granted Mar 03, 2026
Patent 12522688
PULTRUSION WITH EXTRUDED GASKET FOAM
2y 5m to grant Granted Jan 13, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

7-8
Expected OA Rounds
56%
Grant Probability
99%
With Interview (+48.6%)
3y 4m
Median Time to Grant
High
PTA Risk
Based on 140 resolved cases by this examiner. Grant probability derived from career allow rate.

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