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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 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 4 and 8 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 4 and 8 are rejected because they fail to further limit the subject matter of Claim 1 on which they depend given that each claim recites limitations identical to that already recited in claim 1.
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.
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 1-2, 4-5, 8, 17-24, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigawa et al. (US 2018/0002485 A1) in view of Hasebe et al. (US 2016/0125971 A1) and Kobayashi (US 2017/0313854).
Regarding Claims 1-2, 4-5, and 8, Tanigawa discloses a resin composition (para 0001) comprising a compound having a maleimide group, such as 2,2-bis(4-(4-maleimidophenoxy)phenyl)propane) (i.e. first claimed compound (A)) and bis(3-ethyl-5-methyl-4-maleimidophenyl)methane (i.e. claimed compound (A), a maleimide compound corresponding to Formula (8)) (paras 0078, 0084), a catalyst such as dicumyl peroxide (para 0101) (i.e. claimed organic peroxide (B), represented by formula (1) wherein each R1 represents a methyl group; see also present spec para 0036), and an imidazole curing accelerator (para 0111) such as 2E4MZ, which is a 2-ethyl-4methyl-imidazole (para 0173(18)) (i.e. claimed imidazole compound (C), represented by formula (5); see also present spec para 0041). This resin composition is used to form a film (para 0132).
Tanigawa does not disclose the maleimide compound corresponding to Formulas (7) and (9).
Hasebe discloses using a combination of BMI-650P, BMI-1000P (both corresponding to Formula (7)), and BMI-2300 (corresponding to Formula (6) in Claim 2) in a resin composition comprising epoxy resin and cyanate ester, to achieve excellent adhesiveness and high heat resistance (paras 0066-0068).
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 Tanigawa to incorporate the teachings of Hasebe to produce the film using a resin composition further comprising a combination of BMI-650P, BMI-1000P, and BMI-2300. Doing so would achieve excellent adhesiveness and high heat resistance.
Kobayashi discloses composition comprising polymaleimide, filler, epoxy, peroxide curing accelerator and imidazole curing accelerator (paras 0015-0018, 0020, and 0057). The polymaleimide has formula identical to the Formula (9) claimed, and use of the polymaleimide improves plating adhesion strength (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 Tanigawa in view of Hasebe to incorporate the teachings of Kobayashi to produce the film using a resin composition further comprising the polymaleimide of Kobayashi. Doing so would improve plating adhesion strength.
Tanigawa further discloses the resin composition may comprise 1-95% maleimido group-containing compound (i.e. claimed compounds (A)) (para 0080), and 0.1-5% peroxide catalyst (para 0100). Therefore it is calculated that there may be 0.1-500 parts peroxide catalyst per 100 parts maleimide compound ((0.1/95)*100 to ((5/1)*100).
Tanigawa further discloses using a ratio of 0.11 parts 2E4M2 (i.e. imidazole) to 4 parts component (B) (i.e. maleimide) (Table 1, Example 5), i.e. 2.75 parts imidazole per 100 parts maleimide compound.
Regarding Claims 17 and 19, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to claim 1 above. Tanigawa further discloses the resin composition comprises inorganic filler such as silica, aluminum hydroxide, alumina, boron nitride, or magnesium hydroxide (para 0113).
Regarding Claim 18, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 17 above. Tanigawa further discloses the average particle diameter of the inorganic filler is 0.01-20 microns (para 0114).
Regarding Claim 20, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 17 above. Tanigawa further discloses the resin composition comprises 1-95% by mass maleimide compound (para 0081) and 3-75% by volume inorganic filler (para 0115).
Although there is no disclosure of the amount of filler in parts by mass based on 100 parts of maleimide compound, it would have been obvious to one of ordinary skill in the art to choose amounts of filler, including those presently claimed, in order to produce a composition with desire curability, moldability, and chemical resistance (para 0115).
Regarding Claim 21, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to claim 1 above. Tanigawa further discloses the resin composition may comprise hydroperoxide (para 0101).
Regarding Claim 22, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 21 above. Tanigawa further discloses the resin composition comprises 1-95% by mass maleimide compound (para 0081) and 0.1-5% by mass peroxide (para 0100).
Although there is no specific disclosure of the amount of hydroperoxide given that combined amount of dicumyl peroxide and hydroperoxide in the composition is 0.1-5%, it is clear that the amount of hydroperoxide would be less than 10 parts by mass based on 100 parts of maleimide compound.
Regarding Claim 23, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Tanigawa further discloses the thickness of the resin film may be 1-200 microns (para 0135).
Regarding Claim 24, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to claim 1 above.
There is no explicit disclosure of the film used in a pre-applied underfill material. However, Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Tanigawa discloses film as presently claimed, it is clear that the film would be capable of performing the intended use as presently claimed, i.e. use in a pre-applied underfill material, as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding Claim 30, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Tanigawa further discloses the resin composition may comprise thermoplastic elastomers (para 0120) and/or silane coupling agent (para 0116).
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigawa in view of Hasebe and Kobayashi as applied to claim 1 above, and further in view of Daito et al. (JP 2016/196548).
Regarding Claims 9-12, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Tanigawa in view of Hasebe and Kobayashi does not disclose benzoxazine as claimed.
Daito discloses a resin composition for prepregs and printed wiring boards (para 0001) where the composition comprises a maleimide compound (A) and a benzoxazine compound (B) (para 0006). The benzoxazine includes those of formula (3-1) (0052) which is identical to that claimed in formula (20). The composition comprises 1-25% maleimide compound and 1-25% benzoxazine (para 0054) Therefore, it is calculated there is present 4-2500 parts benzoxazine based on 100 parts maleimide compound. Daito discloses using the benzoxazine improves heat shrinkage and chemical resistance (para 0054).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the present invention to modify Tanigawa in view of Hasebe and Kobayashi to incorporate the teachings of Daito and produce the film wherein the resin composition further comprises the benzoxazine of Daito in an amount of 4-2500 parts benzoxazine based on 100 parts maleimide compound. Doing so would improve heat shrinkage and chemical resistance.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigawa in view of Hasebe and Kobayashi as applied to claim 1 above, and further in view of Tobisawa (JP 2010/077310).
Regarding Claims 13-14, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Tanigawa in view of Hasebe and Kobayashi does not disclose the propenyl compound as claimed.
Tobisawa discloses a resin composition for prepregs and circuit boards (para 0001) that comprises compound (A) bismaleimide compound (para 0016) and compound (B) which includes propenyl compound (para 0020). Example 3 discloses a composition comprising 43.4 parts maleimide compound and 21.2 parts isoeugenol (para 0050). Given that Tobisawa discloses the equivalence and interchangeability of isoeugenol and propenyl compound as component (B), it would have been obvious to use 21.2 parts propenyl compound in example 3. Therefore, it is calculated that there is 49 parts propenyl compound based on 100 parts maleimide compound. Tobisawa discloses using the propenyl compound reduces the dielectric constant and dielectric tangent and improves adhesion (para 0019).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the present invention to modify Tanigawa in view of Hasebe and Kobayashi to incorporate the teachings of Tobisawa and produce the film wherein the resin composition further comprises 49 parts propenyl compound based on 100 parts maleimide compound. Doing so would reduce the dielectric constant and dielectric tangent and improve adhesion.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigawa in view of Hasebe and Kobayashi as applied to claim 1 above, and further in view of Nakamura (US 2011/0139496).
Regarding Claims 15-16, Tanigawa in view of Hasebe and Kobayashi discloses all the limitations of the present invention according to Claim 1 above. Tanigawa in view of Hasebe and Kobayashi does not disclose the flux component as claimed.
Nakamura discloses a resin composition for prepregs (para 0002) that comprises epoxy resin (para 0009) and active ester curing agent (para 0050) that includes phenolphthalein (para 0051). The curing agent is used in an amount of 1-15% (para 0057). Nakamura discloses using the phenolphthalein produces a high peel strength and suitable coefficient of thermal expansion (para 0057).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the present invention to modify Tanigawa in view of Hasebe and Kobayashi to incorporate the teachings of Nakamura and produce the film wherein the resin composition further comprises 1-15% phenolphthalein. Doing so would produce a high peel strength and suitable coefficient of thermal expansion.
Although there is no disclosure that the phenolphthalein is a fluxing agent, given that phenolphthalein is identical to that used in the present invention, it is clear that the phenolphthalein would necessarily function as a fluxing agent.
Given that Tanigawa discloses using 5-85% by mass maleimide compound as claimed (para 0081), it is calculated that phenolphthalein is present in an amount of 1.05-300 parts based on 100 parts maleimide compound.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Applicant submitted a Declaration stating that any structures according to the claimed formulas (7), (8), and (9) would be expected to behave similarly as the specific compounds of formulas (7), (8), and (9) used in the data.
The Declaration also states that “the types of compound (A) and imidazole compound (C) are of more significance than amounts thereof and organic peroxide (B)” and therefore Applicant argues that Examples 2 and 12 should be considered properly side-by-side, comparing the types of compound (A) used, even though the amounts of (A) are also different. Applicant argues that Example 2 compared to Example 12 demonstrates the claimed invention has excellent melt viscosity.
However, this is not persuasive because the scope of the data is still not commensurate in scope with the scope of the claims. Specifically, the remaining issues with the data are the Examples use specific types of organic peroxide (B) and imidazole compound (C) while the present claims encompass any type of organic peroxide (B) as claimed and any imidazole compound (C) as claimed.
Further, there is no data at the endpoints of the claimed amounts of (A), (B), and (C). While Examiner appreciates that the Declaration states the types of (A) and (C) are “more significant” than the amounts of (A) and (C), it has not been established that the amounts used in the data are representative of any amount within the claimed ranges.
Similarly, applicant’s arguments regarding the side-by-side comparison of Examples 2 and 12 are not persuasive. While Examiner appreciates that the Declaration states the types of (A) and (C) are “more significant” than the amounts of (A) and (C), Examples 2 and 12 are still not considered properly side-by-side. Examples 2 and 12 use different amounts of BMI-80 (2,2-bis{4-(4-maleimidophenoxy)phenyl}propane), different amounts of BMI-1000P (compound of formula (7)), different amounts of BMI-70 (compound of formula (8)), and different amounts of the two compounds being compared, the MIR-3000-70MT (compound of formula (9)) and BMI-2300 (compound of formula (6)). Examples 2 and 12 also use different amounts of the imidazole compound (C). Therefore, it cannot be determined that the difference in melt viscosity is due to the use of the compounds of formula (9) vs formula (6), or if the difference is due to one of the other many differences, or a combination thereof.
Conclusion
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.
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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.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787