DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/28/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application is being examined under the pre-AIA first to invent provisions.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/28/2025 has been entered.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4, and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al, US2017/0354033 (of record), in view of Nishimori, JP2007099548 (of record), and Kawabe et al, JP2004131639.
The examiner notes that machine translations of Nishimori and Kawabe were used to prepare this rejection.
Uchida discloses a resin composition (for claim 1) comprising (A) a polyphenylene ether; (B) triallyl (iso)cyanurate, corresponding to the claimed curing agent which is an allyl compound (for claim 5); (C) a peroxide; and (D) silica, corresponding to the claimed inorganic filler (for claim 1) (abstract; ¶0019, 0029). Said polyphenylene ether has the structure shown below (¶0009), corresponding to the claimed modified polyphenylene ether having a terminal modified with a substituent having a carbon-carbon unsaturated double bond (for claim 1).
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Uchida teaches that the prior art resin composition may be used in the production of prepregs comprising the resin composition and a fiber material (for claim 7) (¶0038); a laminate comprising a layer (i.e. film) of the composition and a sheet (i.e., a support film) (for claim 8) (0043), a metal clad laminate comprising a layer of the resin composition and a metal foil (for claims 9, 10, 12) (¶0044), and wiring boards (for claims 11, 13) (¶0045).
Regarding the amounts of each component: The prior art composition comprises 29.9 to 90 wt% of the polyphenylene ether, overlapping the claimed range (for claim 4); 9.9 to 70 wt% triallyl (iso)cyanurate, overlapping the claimed range (for claim 6); and 5 to 40 wt% silica, overlapping the claimed range (for claim 2), relative to the combined amounts of components (A), (B), and (C) (¶0012, 0014, 0029). It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05). It therefore would have been obvious to prepare a composition comprising the claimed amounts of polyphenylene ether, triallyl (iso)cyanurate, and silica in view of Uchida (for claims 2, 4, 6).
Uchida is silent regarding the use of a silica having a ratio of number of silicon atoms contained in silanol groups to a total of Si atoms in the range of 3% or less and a curing agent comprising a compound having an acenaphthylene structure.
Nishimori discloses the production of a silica powder which is substantially free of silanol groups suitable for use as a filler in insulating compositions and electronics applications (page 2: lines 47-49; page 3: lines 17-20; page 7: lines 51-52). Note that “substantially free of silanol groups” refers to a silica powder wherein the ratio of [Si-OH]/[Si] is 0.10 (i.e., 10%) or less (page 4: lines 8-10), overlapping the claimed range (for claim 1). Nishimori teaches that the silica having substantially no silanol groups is more compatible with resins, and is characterized by reduced conductivity and improved flowability (page 3: lines 7-13).
Regarding the requirement that the silica is produced by surface treatment of silica contained in a silica sol: [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process"; see In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As noted in the previous paragraph, Nishimori discloses the production of a silica powder having a silanol group content in the claimed range. As the prior art silica powder appears to be the same as the claimed silica, the burden is shifted to applicant to provide evidence that the recited process step results in an unobvious difference between the claimed invention and the prior art (for claim 1).
Kawabe discloses a curable resin composition used in electronics, wherein said curable resin composition is based on a polyphenylene ether resin (abstract, ¶0006). As taught by Kawabe, it was known in the art that acenaphthylene derivatives (for claim 1) (¶0055) were suitable for use as a crosslinking agent in such compositions (¶0033, 0048, 0049).
As noted above, Uchida teaches that the composition of US2017/0354033 may comprise silica as a filler. As taught by Nishimori, it was known in the art to modify silica to reduce its silanol content to a value of 10% or less (for claim 1), overlapping the claimed range, in order to improve properties such as flowability and compatibility with resins. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Uchida by using the silica of Nishimori as the filler, in order to obtain a final resin having the improved properties taught by JP2007099548.
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…. [T]he idea of combining them flows logically from their having been individually taught in the prior art;” see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As taught by Kawabe, it was known in the art that acenaphthylene derivatives could be used as crosslinking agent in polyphenylene ether-based compositions. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Uchida by using an acenaphthylene derivative in combination with the triallyl (iso)cyanurate, with the reasonable expectation of obtaining a crosslinked resin composition suitable for use in electronics.
Response to Arguments
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
Applicant argues that neither Uchida nor Nishimori teaches the claimed acenaphthylene compound. As discussed earlier in this Action, however, Kawabe teaches that such compounds were known crosslinking agents for polyphenylene ether-based compositions. Applicant’s argument therefore is not persuasive as the current rejection does not rely on either Uchida or Nishimori to teach the required acenaphthylene compound.
Applicant argues that the claimed invention yields unexpected results, citing the results of the Examples from the instant specification.
It is well settled that a demonstration of unexpected results must compare the claimed invention to the prior art; see MPEP 716.02(e). If the evidence is to be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed (emphasis added), and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42, 227 USPQ 657, 673-674 n. 42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). The term "nexus" designates a factually and legally sufficient connection between the objective evidence of nonobviousness and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988). See also Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1363, 2023 USPQ2d 667 (Fed. Cir. 2023) (MPEP § 716.01(b)). In the instant case, it is noted that applicant’s specification only defines the silica used in the examples in terms of its silanol group content (see specification page 34: lines 13-28); no information is provided with regards to the method used to prepare the silica. The evidence in the record therefore does not establish that the compositions disclosed in the examples contain silica that was prepared using the method recited in the instant claim. As such, it is unclear whether the cited examples fall within the scope of the instant claim.
Whether the 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 In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range; see In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d)).
Assuming, arguendo, that the cited examples do contain silica that was prepared via the method recited in the instant claims, the evidence cited by applicant is not commensurate in scope with the claimed invention. As currently written, the claimed invention is merely a composition comprising the listed components. In contrast, the compositions of the examples are all crosslinked compositions obtained by curing compositions which comprise 1,3-bis(butylperoxyisopropyl)benzene as an initiator and either triallyl isocyanurate or acenaphthylene as a crosslinking agent in addition to the modified polyphenylene ether and silica. The data cited by applicant therefore was obtained from a crosslinked (i.e., cured) product, whereas the instant claims do not recite a crosslinked composition. The evidence in the record does not demonstrate that the allegedly unexpected results can be obtained from an uncured composition as allowed by the instant claims.
Furthermore, the cited examples in the specification all contain 70 parts modified polyphenylene ether, 30 parts crosslinking agent, 0.5 parts initiator, and silica in an amount of 40, 60, or 150 parts. In contrast, independent claim 1 does not recite any limitations regarding the amounts of modified polyphenylene ether and silica; the claimed invention therefore reads on compositions wherein the recited components may be present in any amount. Applicant has not demonstrated that the allegedly unexpected results may be obtained from compositions comprising the recited components in any amounts/ratios as allowed by the claimed invention.
Furthermore, the silica used in the examples has a silanol group content in the range of 1.0 to 1.5%, whereas the claimed invention reads on the use of silica having a silanol group content as high as 3.0%. No data has been presented demonstrating that the allegedly unexpected results may be obtained when the silanol group content is in the upper half of the claimed range (i.e., greater than 1.5% to 3.0%) or in the lower third of the claimed range (i.e., less than 1.0%). Applicant therefore has not demonstrated that the allegedly unexpected results may be obtained commensurate in scope with the claimed invention with regards to either the amount of each component in the composition or the range of silanol group content of the silica.
Finally, note that the examples disclose the use of a single compound-acenaphthylene- as the curing agent (specification page 34: lines 1-2, Table 1). In contrast, the claimed invention generically recites a curing agent which is “an acenaphthylene compound having an acenaphthylene structure in a molecule”; note that this reads on any compound containing an acenaphthylene ring system in its structure. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof; see In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (MPEP § 716.02(d)(I)). In the instant case, applicant’s disclosure of the use of acenaphthylene as a curing agent does not demonstrate that the allegedly unexpected results could be obtained using any compound having a structure containing an acenaphthylene ring system as allowed by the instant claims. The cited examples therefore are not commensurate in scope with the claimed invention.
Applicant argues that neither Uchida nor Nishimori teaches the preparation of a resin composition having low dielectric properties and high heat resistance. In response, it has been held that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant (MPEP § 2144(IV)). As discussed earlier in this Action, Nishimori teaches that it was known in the art to modify silica to reduce its silanol content to a value of 10% or less in order to improve properties such as flowability and compatibility with resins. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Uchida by using the silica having silanol content of 10% or less as the filler, in order to obtain a final resin having the improved flowability and compatibility as taught Nishimori. As the prior art provides a motivation to modify the silanol content of the silica used in the composition of Uchida, it is not persuasive to merely argue that the motivation provided by the prior art is not the same as applicant’s. The rejection is therefore maintained.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765