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 .
As can be seen in the published application, table 1 is illegible for printing purposes. Proper correction is required with the next response.
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 7 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.
It is unclear if the maleimide is a liquid prior to contact with the solvent. Most maleimides are solids at room temperature.
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.
Claim 13 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. Claim 9 requires a carrier film. Dependent claim 13 has no carrier film. Claim 13 does not contain all the limitations of claim 9. 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1,3,4,6,7 and 9-15 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu 2020/0053877 as evidenced by Chen ACS Omega and Alunabeads brochure.
Liu exemplifies (#1) forming a 2nd dielectric composition of a blend of 30 parts A-1 with 70 parts B-3.
A-1 (paragraph 106) is a blend of 60 parts modified OPE-2St, 20 parts TAIC, 10 parts maleimide (IV), 10 parts SBR, 2 parts peroxide and 20 parts of a phosphazene in solvent.
OPE-2St (see fig 1 of the Chen article) is a PPE with two vinyl groups.
Maleimide (IV) is a polyfunctional maleimide (paragraph 68) which qualifies as applicant’s maleimide.
The peroxide qualifies as applicant’s curing accelerator.
B-3 (table 1-2) is CB-P02 aluminum oxide from Mitsubishi. Inherently, this is an aluminum oxide with 5ppm sodium atoms (see second table of the Alunabeads brochure) which qualifies as applicant’s aluminum oxide.
In regards to applicant’s dependent claims:
Lui’s peroxide (paragraph 106) is bis(t-butylperoxy)diisopropyl)benzene – meeting applicant’s claim 3.
Claim 7 is met as the method of incorporating the maleimide (whether prior mixed with solvent or added to the composition that contains solvent) would not make any difference in the final product.
Lui (paragraph 114) coats glass cloth with the composition – meeting applicant’s claims 11 and 12.
Lui (paragraph 115) stacks the sheets (meeting applicant’s claim 13) and heat/pressure bonds to copper foil (paragraph 117) – meeting applicant’s claims 9,10,14 and 15.
Claims 1-4 and 6-15 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang 2023/0235172 as evidenced by the Sumitomo Chemical brochure.
Wang exemplifies (E4) blending 100 parts PPE of example 1, 25 parts of BMI(s), 35 parts TAIC, 70 parts silica, 5 parts boron nitride, 20 parts AA5, 5 parts TiO2, 1 part 25B and 150 parts solvents.
The PPE (paragraph 133) is represented by formula (9) which has terminal vinyl groups (paragraph 43) – meeting applicant’s PPE.
The BMI are polyfunctional maleimide (paragraph 119,120) which qualify as applicant’s maleimide.
25B (paragraph 129) is a peroxide qualifying as applicant’s curing accelerator.
AA5 (paragraph 127) is an aluminum oxide from Sumitomo. Inherently, this is an aluminum oxide with 3ppm sodium atoms (see the 2nd table of the Sumitomo brochure) which qualifies as applicant’s aluminum oxide.
In regards to applicant’s dependent claims:
Wang’s peroxide (paragraph 129) is dimethyl di(t-butylperoxy)diisopropyl hexyne – meeting applicant’s claim 3.
Claim 7 is met as the method of incorporating the maleimide (whether prior mixed with solvent or added to the composition that contains solvent) would not make any difference in the final product.
The PPE (paragraph 133) has a Mw of 4500 – meeting applicant’s claim 8.
Wang (paragraph 138) impregnates glass fabric with the composition – meeting applicant’s claims 11 and 12.
Wang (paragraph 139) stacks eight of the sheets (meeting applicant’s claim 13) and heat/pressure bonds to copper foil (paragraph 139) – meeting applicant’s claims 9,10,14 and 15.
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.
Claim 2 rejected under 35 U.S.C. 103 as being unpatentable over Liu 2020/0053877 as evidenced by Chen ACS Omega and Alunabeads brochure.
Liu applies as explained above.
The cited example lacks aluminum nitride or boron nitride.
However, Liu (paragraph 61) also suggests combinations of fillers including aluminum oxide, aluminum nitride, boron nitride etc.
It would have been obvious to include any of the listed fillers to the cited example’s composition.
Claim 16 rejected under 35 U.S.C. 103 as being unpatentable over Liu 2020/0053877 as evidenced by Chen ACS Omega and Alunabeads brochure.
Liu applies as explained above.
The cited example lacks placing the composition on a metal plate.
However, Liu (paragraph 90) also suggests metal plate substrates. It would have been obvious to place the cited example’s composition on a metal plate.
Claims 1,3,4,6 and 8-14 rejected under 35 U.S.C. 103 as being unpatentable over Tsuda 2024/0190112 as evidenced by the ADAMATECH brochure.
Tsuda exemplifies (#18) a blend of 57 parts modified PPE-1, 43 parts maleimide-1, 110 parts aluminum titanate and 75 parts aluminum oxide. The PPE-1 (paragraph 153) is a PPE with vinylbenzyl terminals which qualify as applicant’s PPE. Maleimide-1 (paragraph 166) is a BPA type bismaleimide which qualifies as applicant’s maleimide. The aluminum oxide (paragraph 177) is AO-502 from ADMATECH. Inherently, this is an aluminum oxide with <1ppm sodium atoms (see page 26 of the ADMATECH brochure) which qualifies as applicant’s aluminum oxide.
This example lacks applicant’s curing accelerator. However, Tsuda (paragraph 104) teaches peroxides may be added to promote curing.
It would have been obvious to add a peroxide to the cited example to hasten cure.
In regards to applicant’s dependent claims:
Tsuda’s initiator (paragraph 104) may be bis(t-butylperoxy-m-isopropyl)benzene – meeting applicant’s claim 3.
Tsuda’s examples that include a peroxide (eg #2,4,9) have a peroxide/maleimide ratio of 1/100; 1/43; 1/43; all of which suggest applicant’s claim 4.
PPE-1 (paragraph 153) has a Mw of 1600 – meeting applicant’s claim 8.
Tsuda (paragraph 181) impregnates glass cloth with the composition – meeting applicant’s claims 11 and 12.
Tsuda (paragraph 183) stacks twelve of the prepreg sheets (meeting applicant’s claim 13) and heat/pressure bonds to copper foil – meeting applicant’s claims 9,10,14 and 15.
The Japanese priority document for Tsuda 2024/0190112 is provided to show example #18 is supported as of its filing date.
Claims 1,3-7 and 9-15 rejected under 35 U.S.C. 103 as being unpatentable over Nosaka 2022/0380538 in view of Liu 2020/0053877 and Tsuda 2024/0190112 and JP08023146.
Nosaka exemplifies (#1) a blend of 17.4 parts PPE-1, 23.2 parts DMI-7005, 11.6 parts TAIC, 0.58 parts peroxide, 5.7 parts styrenic elastomer, 11.1 parts flame retardant, 94.4 parts silica and solvent.
The PPE-1 (paragraph 381) is an allyl functional PPE – meeting applicant’s PPE.
DMI-7005 (paragraph 194,406) is a maleimide resin presumably of Nosaka’s formula (X1) – meeting applicant’s maleimide. The peroxide meets applicant’s accelerator.
This example lacks low sodium alumina.
However, Nosaka (paragraph 241) teaches alumina may be used in lieu of silica. Low sodium alumina such as CB-P02 aluminum oxide from Mitsubishi (see table 1-2 of Liu) and AO-502 from ADMATECH (see paragraph 177 of Tsuda) have been employed in similar prepregs. Additionally, keeping the sodium content low is important for insulating/dielectric varnishes. See abstract and paragraphs 2,10 of JP08023146.
It would have been obvious to select a low sodium alumina as Nosaka’s filler in the cited example for the expected superior insulating/dielectric properties relative to higher Na content aluminas.
In regards to applicant’s dependent claims:
The peroxide (paragraph 407) is bis(t-butylperoxy-m-iopropyl)benzene – meeting applicant’s claim 3.
Based on 100 parts of the maleimide, the cited example becomes:
17.4 modified PPE 75
23.2 BMI maleimide 100
11.6 TAIC 49.9
0.58 peroxide 2.5
5.7 elastomer 24.5
11.1 flame ret 47.7
94.4 filler 406
which suggests applicant’s claim 4 and 5.
The DMI-7005 (paragraph 406) is said to have a solid content of 25%. This indicates solvent was present – meeting applicant’s claim 7.
The composition is applied to copper foil – meeting applicant’s claim 9,10
The composition may also impregnate glass cloth (paragraph 321) - meeting applicant’s claim 11 and 12.
Laminates of the prepreg are also contemplated (paragraph 327) meeting applicant’s claims 13-15.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/12/26