DETAILED ACTION
This Office Action is responsive to the amendment filed on 7/29/2026.
The objections and rejections not addressed below are deemed withdrawn.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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/29/2026 has been entered.
Specification
The disclosure is objected to because of the following informalities: See Table 1 of the specification. For Example 6, the word “Goof” appears to be a typographical error intended to be “Good”.
Appropriate correction is required.
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.
Claim 14 is 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.
Claim 14 depends from claim 1 and states that the polyphenylene ether (PPE) compound has an intrinsic viscosity of 0.03 to 0.12 dl/g. The intrinsic viscosity of a polymer is dependent on the temperature and the solvent in which it is measured; note that neither of these parameters is recited in the instant claims. The scope of the claim is therefore indefinite, as it is unclear under what conditions a PPE must have the recited intrinsic viscosity.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4, and 6-15 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 (PPE); (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 PPE has the structure shown below (¶0009), corresponding to the claimed modified PPE 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 PPE, 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 PPE, triallyl (iso)cyanurate, and silica in view of Uchida (for claims 2, 4, 6).
Regarding claims 14, 15: "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; see In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01). Uchida teaches that the PPE having a terminal double bond has the structure shown in paragraph 13 of this Action; Uchida further teaches that n is 1 to 200 (¶0010). Note that
the repeating unit of the prior art PPE corresponds to Formula 4 disclosed in the specification (specification ¶0027), and
the specification teaches that the claimed molecular weight is met when the number of repeating units is 1 to 50 (specification ¶0035).
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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
The prior art range for the number of repeating units overlaps the range disclosed by applicant in the instant specification. Uchida therefore renders obvious the production of a vinyl-terminated PPE having the same structure and same number of repeating units as taught by applicant. One of ordinary skill in the art would therefore reasonably expect that the weight average molecular weight (for claim 15) and the intrinsic viscosity (for claim 14) of the prior art PPE would overlap the claimed ranges.
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 PPE 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 PPE-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 7/29/2026 have been fully considered but they are not persuasive.
Applicant argues that Uchida fails to mention any silanol group content in its silica, and states that Uchida discloses the use of a methacrylate-silane treated fused silica in ¶0029. In response, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Contrary to applicant’s argument, the rejection of record does not allege that Uchida discloses any teachings regarding the silanol content of the silica filler; rather, the rejection of record relies on the teachings of Nishimori to meet this limitation. It therefore is not persuasive to argue that Uchida does not disclose any teachings regarding the silanol content of its silica, as such arguments do not address the basis of the rejection of record.
Furthermore, Uchida does not require the use of a methacrylate-treated silica. Uchida specifically states that ground silica, fused silica, or any other silica may be used in the prior art composition (¶0029); Uchida only discloses methacrylate-treated silica as an example of a type of silica that can be used. It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). Contrary to applicant’s argument, Uchida’s disclosure of the example of a methacrylate-treated silica does not teach away from its broader disclosure that any known silica can be used as the filler in the composition of US2017/0354033.
Applicant argues that Nishimori teaches the production of a silica having a silanol content in the range of 10% or less and does not describe or suggest any technical significance to the allegedly critical recited range of 1 to 1.5%. In response, 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art range of 10% or less taught by Nishimori overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a silica having the claimed silanol content in view of the teachings of Nishimori.
Applicant further argues that Nishimori does not render the claimed invention obvious as it is directed towards properties such as moldability, reliability, and fluidity rather than the dielectric properties desired by applicant. In response, it has been held that “[T]he 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; see In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (MPEP § 2144(IV)). Contrary to applicant’s argument, Nishimori’s desire to improve different properties than those desired by applicant does not teach away from the fact that the prior art range overlaps the claimed range and therefore renders it obvious.
Applicant argues that Nishimori does not teach the claimed process step of surface treating a silica contained in a silica sol to obtain the required silanol content and therefore does not teach the claimed invention.
"[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). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product; see In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (MPEP § 2113).
As defined in the instant claims, the process steps imply the structure of a silica modified such that the number of silicon atoms contain in silanol groups to the total number of silicon atoms is 1 to 1.5%. As discussed earlier in this Action, the process of Nishimori results in a silica wherein the ratio of the number of silanol groups to the total number of silicon atoms is 10% or less, overlapping the claimed range. Nishimori therefore renders obvious a silica having a structure which appears to be the same as that implied by the recited process steps. The burden is therefore shifted to applicant to provide evidence demonstrating that the claimed process step results in an unobvious difference between the silica of the instant claims and the silica of Nishimori. As such evidence has not been provided, it is not persuasive to merely argue that the prior art does not teach the same process step as used by applicant.
Applicant argues that the claimed invention yields unexpected results, citing examples 1-8 from the specification.
Regarding example 8: Evidence of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness; see In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) (MPEP § 716.02(e)). Applicant’s example 8 does not include an acenaphthylene-based curing agent as required by the claimed invention. Data obtained from example 8 therefore is not relevant to the patentability of the claimed invention, as it does not disclose a composition that is within the scope of the instant claim.
Regarding examples 1-7: 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)). As currently written, independent claim 1 recites a composition comprising a PPE having a terminal carbon-carbon double bond, a curing agent containing a compound having an acenaphthylene structure in its molecule, silica. Note that there are no restrictions on the amounts of any of the claimed components; the claimed invention therefore reads on compositions which may contain any amount of each component. In contrast, the cited examples 1-7 all disclose compositions comprising 70 parts PPE, 30 parts curing agent, 0.5 parts of an initiator, and silica in an amount of 40, 60, or 150 parts. The limited amounts of each component exemplified in the cited examples are not commensurate in scope with the claimed invention which allows all components to be present in any amount.
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)). With regards to the criticality of the claimed range, it is first noted that there are no comparative examples wherein the silanol content of the silica is less than 1% as allowed by Nishimori; the cited data therefore does not demonstrate the criticality of the claimed lower limit of 1%. Furthermore, the comparative examples were performed with silica having a silanol content of either 3.9% or 4% (specification ¶0193; Table 1); note that these values are more than twice the claimed upper limit of 1.5%. Because the difference between the value in the inventive examples and the that of the comparative examples is so large, the cited examples do not demonstrate the criticality of the claimed upper limit. Applicant therefore has not demonstrated the criticality of the claimed range.
Finally, the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (MPEP § 716.02(b)). Applicant argues that the claimed invention yields unexpected results with regards to maintaining dielectric properties even after a water absorption treatment. As reported in Table 1 of the specification, the composition of Example 2 had a change in dielectric loss tangent after water treatment of 0.0008; in contrast, comparative examples 1 and 3-5 all disclose compositions wherein the change in dielectric loss tangent after water treatment was 0.0009. The difference between the inventive example and the comparative examples therefore is small-only 0.0001. Further note that the Table does not provide any information regarding the error values in the reported measurements. Given the lack of information regarding the error in the readings and that the difference between the inventive example and the comparative example is so small, the evidence in the record does not establish that the allegedly unexpected results are of both statistical and practical significance as required. Applicant’s argument that the claimed invention yields unexpected results therefore is not persuasive.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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