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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 4, 2025 has been entered.
Applicant’s response of December 4, 2025 has been fully considered. Claims 1 and 5 are amended and claim 21 is added. Claims 1-5 and 7-21 are pending with claims 10-17 withdrawn from consideration. Claims 1-5, 7-9, and 18-21 are treated on the merits.
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 1-5, 7-9, and 18-21 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.
Regarding claims 1, 5, and 21, each of these claims recites the phrase “bismuth oxide particles having a specific gravity of 7.0 or higher.” This phrase is unclear. Bismuth oxide has a determined specific gravity of 8.9 (see, ¶71 of instant specification). While this specific gravity is higher than 7.0, the specific gravity of bismuth oxide is defined by a number and not by a range. Additionally, the instant specification describes the insulating filler as a whole as having a specific gravity of 7.0 or higher, which accounts for different fillers or blends of fillers being used in the composition. Therefore, this phrase is unclear as to whether or not some other component is also present to make the particles have a different specific gravity. For the purpose of further examination, the composition will be interpreted as simply comprising bismuth oxide particles, which as stated above, do have a specific gravity of 7.0 or higher.
Regarding claims 2-4, 7-9, and 18-20, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
Claim Interpretation
Amended independent claim 1 recites the limitation that the content of the bismuth oxide particles is 50% by volume or more with respect to a total solid content of the resin composition; and the content of the bismuth oxide particles is 88% by mass or more with respect to the total solid content of the resin composition. The instant specification states in paragraph 19 that the content of the insulating filler (the bismuth oxide particles in this case) is 50% by volume or more with the widest preferred range of 50% to 80% by volume. The instant specification also states in paragraph 20 that the content of the insulating filler is 88% by mass or more with the widest preferred range of from 88% to 99% by mass. The Office is interpreting these two ranges as representing the same amount of bismuth oxide particles, simply expressed in different terms. Therefore, if one amount is met by the reference, the other amount will also implicitly be met.
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.
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.
Claims 1, 3-5, 9, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Noboru et al. (JP 2006-160934) in view of Yu et al. (CN 108752827). The citations below for Noboru et al. are taken from an English language machine translation provided previously by applicant; and the citations below for Yu et al. are taken from an English language machine translation included previously.
Regarding claim 1, 3, 4, 9, 20, and 21, Noboru et al. teaches a composition comprising an insulating inorganic filler, a resin, and a solvent, wherein the content of the insulating inorganic filler is 40% to 90% by volume of the solid content concentration of the composition (¶8). This amount of filler overlaps with the claimed range of 88% by mass or more as claimed and as discussed above. Noboru et al. teaches that the insulating inorganic filler can be bismuth titanate (¶21). The resin may be an epoxy resin (resin having a polar group) (¶26, 43).
Noboru et al. does not teach that the insulating filler is bismuth oxide particles. However, Yu et al. teaches a resin composition comprising an auxiliary filler that can be bismuth titanate (Bi2(TiO3)3) or bismuth oxide (Bi2O3) (Page 2, lines 14-16). Noboru et al. and Yu et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of film-forming resin compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to substitute bismuth oxide, as taught by Yu et al., into the composition for bismuth titanate, as taught by Noboru et al., and would have been motivated to do so because bismuth titanate and bismuth oxide are art recognized equivalents used for the same purpose as fillers in resin compositions and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
Regarding claim 5, Noboru et al. teaches that the average particle size of the conductive filler is 1 micron or less (¶19).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Noboru et al. (JP 2006-160934) in view of Yu et al. (CN 108752827), as applied to claim 1 above, and further in view of Arata et al. (JP 2019-166688). The citations below for Arata et al. are taken from an English language machine translation included previously.
Regarding claim 2, Noboru et al. and Yu et al. teach the composition of claim 1 as set forth above, and that the resin containing a polar group may be an acrylic resin, a phenol resin, a siloxane resin, or a polyimide resin (¶26). Noboru et al. does not teach that the resin having a polar group has a weight-average molecular weight of 10,000 or more. However, Arata et al. teaches a resin layer for a film wherein the resin is preferably an acrylic copolymer having a weight average molecular weight of 200,000 or higher (Page 3, lines 14-45). Noboru et al. and Arata et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of film forming, insulating resin compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use a resin with molecular weight of 200,000 or more, as taught by Arata et al., in the composition, as taught by Noboru et al., and would have been motivated to do so because Arata et al. teaches that the higher the weight average molecular weight is of the resin, the greater the effect is of preventing the inorganic filler from settling or the cured product from curving (Page 3, lines 25-45).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Noboru et al. (JP 2006-160934) in view of Yu et al. (CN 108752827), as applied to claim 1 above, and further in view of Yoshinori et al. (JP 2019-044081). The citations below for Yoshinori et al. are taken from an English language machine translation included previously.
Regarding claims 7 and 8, Noboru et al. and Yu et al. teach the composition of claim 1 as set forth above. Noboru et al. does not teach that the composition comprises a silane coupling agent. However, Yoshinori et al. teaches a composition comprising an epoxy resin and an inorganic filler (Page 1, lines 44-48) that further contains a silane coupling agent (Page 5, line 43). Noboru et al. and Yoshinori et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of resin compositions comprising insulating inorganic fillers used for cured products. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a silane coupling agent, as taught by Yoshinori et al., to the composition, as taught by Noboru et al., and would have been motivated to do so because Yoshinori et al. teaches that by adding the silane coupling agent to a curable composition containing an inorganic filler, it is possible to improve the mechanical strength or to reduce the viscosity of the curable composition when it is melted (Page 6, lines 51-53).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Noboru et al. (JP 2006-160934) in view of Yu et al. (CN 108752827), as applied to claim 1 above, and further in view of Ohkoshi et al. (US 2015/0250052).
Regarding claims 18 and 19, Noboru et al. and Yu et al. teach the composition of claim 1 as set forth above. Noboru et al. does not teach that the resin having a polar group comprises a polyamide-imide resin having at least one of a polyalkylene oxide structure or a polysiloxane structure. However, Ohkoshi et al. teaches a resin composition for an insulating layer (¶82) comprising an inorganic filler, an epoxy resin, a curing agent, and a thermoplastic resin such as a polyamide-imide resin having a polysiloxane structure (¶82, 95, 103, 113, and 118). Noboru et al. and Ohkoshi et al. are analogous art because they are from the same field of endeavor, namely that of resin compositions containing inorganic fillers used for film/sheet forming. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a polyamide-imide resin having a polysiloxane structure, as taught by Ohkoshi et al., to the composition, as taught by Noboru et al., and would have been motivated to do so in order to produce a composition with a moderate viscosity which results in the composition having uniform thickness and uniform bulk properties (¶121).
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive.
Applicant argues that one of ordinary skill in the art would have found it difficult to replace the filler contained in the composition of Noboru et al. with the bismuth oxide filler of Yu et al. First, applicant argues that Noboru et al. must contain a certain amount of solvent, whereas Yu et al. teaches away from using solvent, and one of ordinary skill in the art would not have applied a filler of Yu et al. to the composition of Noboru et al. because the compositions are different and used for different purposes. Second, applicant argues that even if the filler of Noboru et al. is replaced with the filler of Yu et al., it would only be present in from 1 to 50% by weight (taught by Yu et al.), which does not satisfy the currently amended claim. These arguments are unpersuasive.
To address both arguments above, it is noted that the rejection of record is based on bismuth titanate and bismuth oxide being functional equivalent fillers. Yu et al. teaches that both compounds are useful as insulating fillers in a resin composition useful for making a flat sheet used in a laminate. Noboru et al. teaches a resin composition used for making films, which also uses an insulating filler. Based on this similarity, one of ordinary skill in the art could easily have substituted bismuth oxide in place of bismuth titanate as the filler in the composition of Noboru et al. Additionally, in making this substitution, it is only the filler that is changed. The amount of insulating filler used in Noboru et al. is still applicable to the composition, and is not affected by the teaching of Yu et al. as the whole composition of Yu et al. is not bodily incorporated into the composition of Noboru et al. Moreover, the presence or absence of a solvent does not affect the equivalency of bismuth titanate and bismuth oxide being used as insulating fillers. Therefore, applicant’s arguments are unpersuasive and the rejection of record stands.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767