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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/3/2025, has been entered.
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 16 is 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. Specifically, claim 16 broadens the scope of the mass ratio “mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B) is in a range of 0.01 to 0.3” whereas claim 1 recites a narrower “mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B) is in a range of 0.01 to 0.14”. For the purpose of further examination, it is taken to mean in claim 16 that mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B) is in a range of 0.01 to 0.14”.
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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 5, 6, 8-16, 18-19 are rejected 35 U.S.C. 103 as being unpatentable over Obara (JP2012162585, herein Obara, a machine translation is being used for citation purpose), in the view of Chiba (JP2014185218, herein Chiba, a machine translation is being used for citation purpose) and Matsuda (JP2014167102, herein Matsuda, a machine translation is being used for citation purpose).
Regarding Claims 1, 2, 5, 6, 16, 18, 19, Obara teaches epoxy resin composition [0009] consisting of: polypropylene glycol diglycidyl ether, E1 [0055] reads on epoxy resin (A) with linear aliphatic structure of 3 carbon atoms and total chlorine content: 1000 ppm [0055], which further comprising: butanediol glycidyl ether [0021]; Epoxy resin A1: Bisphenol F type epoxy resin [0019] reads on epoxy resin (B); core-shell rubber of component (D) [0033] reads on core-shell rubber particle (C) with size of 0.1 μm [0055] lies in the claimed range, and in the range of “component (D) is more preferably 5 to 50 parts by mass per 100 parts by mass of the epoxy resin as the component (A).” [0034] overlaps the claimed concentration range; amine-based curing agent [0025] reads on amine curing agent (D); urea; curing agent [0040] reads on curing accelerator.
Obara teaches the Example 7 [FOR; page 13], wherein, E1/A1=1/100=0.01, lies in the claimed range of the mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B).
Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary skill in the art to have utilized mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B) of 0.01 with a reasonable expectation of success, and would have been motivated to do as Obara discloses that such amount is suitable for the invention.
Obara teaches Epoxy resin A1: Bisphenol F type epoxy resin [0019] reads on epoxy resin (B), but does not explicitly teach the specific epoxy resin (B) contains a dicyclopentadiene epoxy resin as an essential component, and the dicyclopentadiene epoxy resin has an average functionality in a range of 2.3 to 3.6, however, Chiba teaches “compound (A) having a condensed polycyclic structure include epoxy compounds having a dicyclopentadiene structure, such as Epicron HP7200” [0017] with epoxy equivalent; 260 g/equivalent, average functionality; 2.3, lie in the claimed range.
Obara and Chiba are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy resin composition formation as cured product. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modify Obara to substitute “compound (A) having a condensed polycyclic structure include epoxy compounds having a dicyclopentadiene structure, such as Epicron HP7200” [0017] into the epoxy resin formulation. Doing so would further achieve the desired property of “curable epoxy composition capable of forming an electrical insulating layer having excellent desmear properties, electrical properties, and heat resistance, as well as a film, a laminated film, a prepreg, a laminate, a cured product” [0007].
Obara teaches amine-based curing agent [0025], but is silent on wherein an active hydrogen equivalent ratio of the amine curing agent (D) is in a range of 0.25 to 0.45 relative to a total epoxy equivalent of the epoxy resin (A) and the epoxy resin (B), however, Matsuda teaches “dicyandiamide products include DICY-7” [0053] reads on the specific amine curing agent (D), with an active hydrogen equivalent ratio relative to a total epoxy equivalent of the epoxy resin (A) and the epoxy resin (B) can be met, due to the instant application uses the same chemicals from Matsuda. Obara and Matsuda are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy resin composition formation as cured product. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Obara to substitute the “dicyandiamide products include DICY-7” [0053] into the epoxy resin formulation. Doing so would further achieve the desired property of “excellent heat resistance and strength characteristics, and an epoxy resin composition suitable as a matrix resin.” [0009].
In the case where the claimed ranges "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).
As the composition of Obara does not have any substances that would materially affect the basic and novel characteristics of the claimed invention, the teaching is deemed to anticipate the claim language "consisting essentially of" (see MPEP 2111.03).
Regarding Claim 8, Obara, Chiba and Matsuda teach epoxy resin composition [0009] as set forth in claim 1 above, Obara teaches “urea; curing agent” [0040], but Obara is silent on the amine curing agent (D) is dicyandiamide, however, Chiba teaches “curing accelerator, dicyandiamide” [0041]. Obara and Chiba are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy resin composition for cured product. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Obara to substitute the “curing accelerator, dicyandiamide” [0041] into the epoxy resin formulation. Doing so would further achieve the desired property of “curable epoxy composition capable of forming an electrical insulating layer having excellent desmear properties, electrical properties, and heat resistance, as well as a film, a laminated film, a prepreg, a laminate, a cured product” [0007].
Regarding Claim 9, Regard to the fracture toughness; glass transition temperature; tensile elastic modulus, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and Obara teaches the composition as being made by a substantially similar process as of “cured product” [0005]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the fracture toughness; glass transition temperature; tensile elastic modulus, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claims 10, 11, Obara, Chiba and Matsuda teach epoxy resin composition [0009] as set forth above. The epoxy composition application to fiber and tow prepreg are the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding Claim 12, Obara teaches “the present invention improves the toughness of the underfill after curing” [0016] which indicates the as-claimed curing reaction and the as-cured product.
Regarding Claims 13-15, Obara, Chiba and Matsuda teach epoxy resin composition [0009] as set forth in claim 1 above, Obara does not teach the fiber-reinforced composite material, however, Matsuda teaches the prepreg of the present invention is formed by impregnating a fiber substrate made of reinforcing fibers with the epoxy resin composition [0087] and formed into tows [0086]. Obara and Matsuda are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the functional epoxy resin composition for cured product. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Obara to add the prepreg of the present invention is formed by impregnating a fiber substrate made of reinforcing fibers with the epoxy resin composition [0087] and formed into tows [0086] into the epoxy resin product formation. Doing so would further lead to the specific product formation for applications requiring high specific strength and specific modulus of elasticity [0086].
Response to Arguments
Applicant's arguments filed 10/2/2025 have been fully considered but they are not persuasive.
In response to the “Applicants assert that nothing in Obara or Chiba would lead one of ordinary skill in the art to arrive at the mass ratio [A/B] to a range of 0.01 to 0.14”, is not persuasive.
In fact, Obara teaches the Example 7 [FOR; page 13], wherein, E1/A1=1/100=0.01, lies in the claimed range of the mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B), wherein, polypropylene glycol diglycidyl ether, E1 [0055] reads on epoxy resin (A); Epoxy resin A1: Bisphenol F type epoxy resin [0019] reads on epoxy resin (B). Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary skill in the art to have utilized mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B) of 0.01 with a reasonable expectation of success, and would have been motivated to do as Obara discloses that such amount is suitable for the invention.
In response to the “excellent heat resistance”, is not persuasive.
When Examples 1-13, and Comparative Examples C1-C6 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to a content of the core-shell rubber particle (C) is in a range of 1 to 10 mass % relative to the total mass of the epoxy resin (A), the epoxy resin (B), the core-shell rubber particle (C), and the amine curing agent (D). However, Examples 1, 4, 8, 10, 11, 13, only has the single value of 12.3 parts by mass; Comparative Examples C1-C6 only has single value as 0; furthermore, Examples 6, 12, only has the single value of 12.4 parts by mass; Examples 7, 9, only has the single value of 12.2 parts by mass. Hence, the Examples 1, 4, 6, 7, 8, 9, 10, 11, 12, 13 and Comparative Examples C1-C6 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the 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 occur over the entire claimed range. See MPEP 716.02(d).
The declaration under 37 CFR 1.132 filed in 10/2/2025 is insufficient to overcome the rejection of claim 1 because:
Obara teaches the Example 7 [FOR; page 13], wherein, E1/A1=1/100=0.01, lies in the claimed range of the mass ratio [(A)/(B)] of the epoxy resin (A) to the epoxy resin (B), wherein, polypropylene glycol diglycidyl ether, E1 [0055] reads on epoxy resin (A); Epoxy resin A1: Bisphenol F type epoxy resin [0019] reads on epoxy resin (B), as set forth in the rejection above.
In response to the “unexpected result”, is not persuasive.
When Examples 1-13, and Comparative Examples C1-C6 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to a content of the core-shell rubber particle (C) is in a range of 1 to 10 mass % relative to the total mass of the epoxy resin (A), the epoxy resin (B), the core-shell rubber particle (C), and the amine curing agent (D). However, Examples 1, 4, 8, 10, 11, 13, only has the single value of 12.3 parts by mass; Comparative Examples C1-C6 only has single value as 0; furthermore, Examples 6, 12, only has the single value of 12.4 parts by mass; Examples 7, 9, only has the single value of 12.2 parts by mass. Hence, The Examples 1, 4, 6, 7, 8, 9, 10, 11, 12, 13 and Comparative Examples C1-C6 are therefore insufficient to establish non-obviousness, therefore, the declaration is not commensurate in scope with the claim 1.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the 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 occur over the entire claimed range. See MPEP 716.02(d).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767