DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 and 5 limit the composition to further comprising an inorganic filler. However, independent claims 1 and 3 already require an inorganic filler. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara et al. (US 2018/0298186) in view of Okuno et al. (JP 2011-157505) using the English language machine translation for the citations below.
Regarding claim 1: Yoshihara et al. teaches a thermosetting (para. 92) epoxy resin composition (abstract) comprising an epoxy resin (abstract), an aromatic amine such as diethyltoluenediamine (para. 51), where n is 3, m is 2 and R1 is alkyl. Yoshihara et al. also discloses triphenylphosphine (para. 52) and a triphenylborane complex thereof (para. 52). Yoshihara et al. further discloses a thermal conductive filler in a volume ratio of the resin to the filler of 70:30 to 20:80 (para. 75), which overlaps the claimed range. The thermal conductive filler can be an inorganic filler such as zinc oxide (para. 79).
Yoshihara et al. does not teach the blending ratio of the phosphorus compound to the boron-phosphorus complex. However, Okuno et al. teaches a similar thermosetting composition wherein the blending ratio of the total of compound (d)/triphenylphosphine (abstract) to the total of compound (c)/compound represented by formula (II)/
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(abstract) is 0.1 to 1 by weight/mass (page 4). Yoshihara et al. and Okuno et al. are analogous art since they are both concerned with the same field of endeavor, namely thermosetting resins with aromatic amine curing agents, triphenylphosphine and triphenylphosphine triphenylborane. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the ratio as taught in Okuno et al. in the composition of Yoshihara et al. and would have been motivated to do so since Okuno et al. teaches this ratio leads to excellent curability and a higher glass transition temperature.
Regarding claim 2: Yoshihara et al. teaches inorganic filler (para. 79).
Regarding claims 8 and 9: Yoshihara et al. teaches the aromatic amine can be the sole curing agent (para. 51).
Claims 3, 5-7, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Uenda et al. (US 2012/0126379) in view of Yoshihara et al. (US 2018/0298186) and Okuno et al. (JP 2011-157505) using the English language machine translation for the citations below.
Regarding claims 3, 10 and 11: Uenda et al. teaches a circuit board laminate comprising a metal substrate (para. 136) and an insulating layer/adhesive layer provided on the metal substrate and a metal foil provided on the adhesive layer (para. 49-50). The insulating/adhesive layer is a thermosetting epoxy resin composition (para. 57-58) comprising an epoxy resin (para. 58).
Uenda et al. does not disclose the claimed curing agents and curing accelerators. However, Yoshihara et al. teaches a circuit board laminate (para. 92) comprising a thermosetting (para. 92) epoxy resin composition (abstract) comprising an epoxy resin (abstract), an aromatic amine such as diethyltoluenediamine (para. 51), where n is 3, m is 2 and R1 is alkyl. Yoshihara et al. also discloses triphenylphosphine (para. 52) and a triphenylborane complex thereof (para. 52). Yoshihara et al. further discloses a thermal conductive filler in a volume ratio of the resin to the filler of 70:30 to 20:80 (para. 75), which overlaps the claimed range. The thermal conductive filler can be an inorganic filler such as zinc oxide (para. 79). Yoshihara et al. teaches the aromatic amine can be the sole curing agent (para. 51). Uenda et al. and Yoshihara et al. are analogous art since they are both concerned with the same field of endeavor, namely epoxy resin compositions for circuit boards. At the time of the invention a person having ordinary skill in the art would have found it obvious to use the composition of Yoshihara et al. in the structure of Uenda et al. and would have been motivated to do so since Yoshihara et al. teaches the composition is useful for circuit board lamination.
Uenda et al. also does not teach the blending ratio. However, Okuno et al. teaches a similar thermosetting composition wherein the blending ratio of the total of compound (d)/triphenylphosphine (abstract) to the total of compound (c)/compound represented by formula (II)/
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(abstract) is 0.1 to 1 by weight/mass (page 4). Okuno et al. and Uenda et al. are analogous art since they are both concerned with the same field of endeavor, namely thermosetting resins to be used in electronic materials. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the ratio as taught in Okuno et al. in the composition of Uenda et al. and would have been motivated to do so since Okuno et al. teaches this ratio leads to excellent curability and a higher glass transition temperature when used in electronic materials.
Regarding claim 5: Uenda et al. teaches inorganic filler (para. 83).
Regarding claim 6: Uenda et al. teaches a metal-based circuit board (para. 136) with patterned/diced metal foil (para. 88).
Regarding claim 7: Uenda et al. teaches a power module (para. 4) comprising a metal-based circuit board (para. 136).
Response to Arguments
Applicant’s arguments filed December 15, 2025 with respect to the claims have been considered but are moot because of the new grounds of rejection.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/
Primary Examiner, Art Unit 1767