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 .
Response to Arguments
In response to the Office Action dated 9 October 2025, the Applicant submits the following:
-- Claim 11 has been amended to overcome the prior 35 U.S.C. § 112 rejection thereof. The rejection of claim 11 under 35 U.S.C. § 112(a) is hereby withdrawn.
-- New claims 13 & 14 have been added.
-- No new matter has been entered.
The arguments provided by the Applicant have been fully reviewed and thoroughly considered but are ultimately found unpersuasive.
The Applicant disagrees with the prior art rejections of record and highlights that, when detailing component (a), the independent base claim 1 recites “…polymer having a polyphenylene ether backbone…”, emphasis added (Remarks, bottom half of p. 7).
Examiner notes those skilled in the art understand polyphenylene ether (PPE) and polyphenylene oxide (PPO) to be interchangeable terms referring to the same thermoplastic compound.
The Applicant challenges the combination of Yeager et al. in view of Lauchlan et al., stating Yeager is directed to thermosetting resins while Lauchlan is directed towards thermoplastic resins (Remarks, p.8). Applicant concludes with stating there would have been no motivation for those skilled in the art to combine Yeager with Lauchlan.
Examiner points to Yeager which expressly suggests including a thermoplastic elastomer (col. 10, lines 19-20). Yeager also suggests the use of various other polymers generally recognized in the art as thermoplastics to further modify the properties of the composition (col. 13, lines 16-37). When seeking alternatives, one skilled in the art would look to prior art teaching the use of other thermoplastic elastomers in combination with PPE resins.
Additionally, while the primary reference’s composition is generally described as a thermosetting, it is also extrudable (col. 5, lines 63-64), melt-processable, and moldable, with thermosetting taking place only after further heating (col. 1, lines 34-40). Thus, one skilled in the art would be motivated to seek out modifying materials that would provide benefits during melt processing and molding. One of ordinary skill in the art would at once recognize that benefits associated with compositionally similar thermoplastic melt-processable compositions would translate to Yeager’s compositions.
Thus, being aware of said PPE process difficulties and presented with Yeager, those skilled in the art have motivation to combine Yeager and Lauchlan, as Lauchlan alleviates deficiencies in Yeager (presented herein).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7, 8, 13 & 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Yeager et al. (US 6,352,782 B1) in view of Lauchlan et al. (US 3,660,531).
Regarding claims 1 – 4, 13 & 14, Yeager teaches a capped poly(phenylene ether) (PPE) resin composition comprising a PPE, in which the hydroxyl groups have been modified to include ethylenic groups, which is further reactive with unsaturated monomers and a curable unsaturated monomer composition (Abstract). Said PPE is further reacted with unsaturated monomers (col. 4, lines 61-66). Suitable unsaturated monomers include polyunsaturated compounds (col. 8, lines 60-65) exemplified by unsaturated polymers (col. 9, lines 46-49), such as polybutadiene (col. 9, lines 56-63). A reaction product between Yeager’s capped PPE and polybutadiene will result in a polymer according to the claimed (a), including vinyl groups contributed by polybutadiene, and methacryloyl linking groups contributed by the PPE capping group K (see, e.g., col. 8, lines 41-57). The reaction between components (a) & (b) above, (i.e., Yeager’s inventive PPE of the structure Q–(J–K)y, (corresponding to the PPE of component (a) in the instant claim 1), and the unsaturated polymer polybutadiene (corresponding to the butadiene of component (a) in the instant claim 1), results in a compound that reads on component (a) of the instant claim 1. Butadiene (also known in the art as divinyl) comprises two vinyl groups, therefore vinyl functional groups will inherently be present in component (a).
Yeager teaches the unsaturated polymer may also contain a thermoplastic elastomer such as liner or graft block copolymers (col. 10, lines 19-20), disclosing styrene-butadiene copolymers as suitable for use in this capacity (col. 10, lines 39-41). Yeager discloses additional thermoplastic elastomers that the unsaturated polymer may further comprise, providing norbornene polymers like polydicyclopentadiene and butadiene-acrylonitrile copolymers, as suitable for use in this capacity (col. 10, lines 39-46).
Yeager discloses their inventive composition may further comprise synthetic &/or natural resins to modify properties of the composition, citing polyolefins as a viable example thereof (col. 13, lines 16-23). The teachings from Yeager summarized above read on all the component-limitations established by the instant claim 1, however, Yeager is silent on the amounts of components for their inventive composition.
In the same field of endeavor, Lauchlan teaches thermoplastic blends (compositions) of polyphenylene oxide resins, optionally containing alkenyl aromatic polymers (i.e., styrene), with butadiene polymers (col. 1, lines 15-21), said compositions exhibiting improved processability without sacrificing desirable heat distortion temperature (col. 2, lines 3-7). Suitable alkenyl aromatic polymers include polystyrene, styrene-butadiene, graft copolymers of styrene or α-methyl styrene with polybutadiene (col. 3, line 68 – col. 4, line 5).
Lauchlan details a comparison of their inventive composition against a resin comprising 100% polyphenylene oxide (col. 12, Example 20). Lauchlan details this embodiment of their invention, Example 20, to be comprised of 42% polyphenylene oxide (i.e., PPE), 28% polystyrene & 30% polybutadiene-co-acrylonitrile (col. 12, lines 45-58).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the polyphenylene oxide (i.e., PPE) with Yeager’s inventive PPE as detailed above, the polystyrene with styrene-butadiene (as Lauchlan teaches their equivalence), and the polybutadiene-co-acrylonitrile with polydicyclopentadiene (as Yeager teaches their equivalence). These substitutions result in a resin composition comprising 42% PPE with butadiene, 28% styrene-butadiene, and 30% polydicyclopentadiene.
The amount of PPE with butadiene of 42% (i.e., 42 parts) in this modification is sufficiently close to the claimed amount (in claim 13) to render said claim limitation obvious, in that 40 parts vs 42 parts is not expected to have a significant effect on the resulting product, especially absent any evidence of criticality. See MPEP § 2144.05(I). Furthermore, the lowest value for said component (a) in Examples 1-9 is detailed as 20 parts (Specification, p. 21, Table 1, Example 1). Thus, Applicant has yet to present any data pertaining to an inventive composition (such as Example 1-9) wherein component (a) abides by the limitations established thereupon as required in claim 13.
The weight ratio of styrene-butadiene to polydicyclopentadiene (i.e., 0.93) in this modification is sufficiently close to the claimed weight ratio (in claim 14) to render said claim limitation obvious, in that 0.93 vs 1.0 is not expected to have a significant effect on the resulting product, especially absent any evidence of criticality. See MPEP § 2144.05(I). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Yeager in view of Lauchlan as detailed above reads on all limitations established by claims 1 – 4, 13 & 14.
Regarding claims 7 & 8, maintaining the modification of Yeager in view of Lauchlan previously detailed, the dielectric properties and moisture absorption properties of a resin depend on the compositional makeup the resin comprises. Using the same amounts of identical reactants will inherently result in a product with the same properties as claimed. A chemical composition and its properties are inseparable. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01.
Claims 5, 6, & 9 – 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Yeager et al. (US 6,352,782 B1) in view of Lauchlan et al. (US 3,660,531) in further view of Fujimoto et al. (US 2010/0129676 A1).
Regarding claims 5 & 6, maintaining the modification of Yeager in view of Lauchlan previously detailed, Lauchlan is silent on coupling agents & fillers, and while Yeager teaches a silane coupling agent and inorganic fillers, Yeager is silent on relative amounts thereof.
In the same field of endeavor, Fujimoto teaches a thermosetting resin varnish having excellent dielectric properties, moisture absorption and satisfies metallic foil peeling strength (Abstract), with said resin composition comprising a PPE as component (A), a butadiene polymer as component (B), a crosslinking agent as component (C), an inorganic filler as component (D) and a saturated thermoplastic elastomer as component (E). There are no limitations on component (E) as long as it is a saturated thermoplastic elastomer (p. 12, [0098]), with an example of a styrene-butadiene copolymer disclosed (p. 25, claim 15)
Fujimoto teaches the composition may further comprise a coupling agent which may be a silane coupling agent (p. 11, [0092]) that is surface-attached to their inorganic filler (D). Observing the empirical data provided for examples 1 – 8, the coupling agent & inorganic filler are present in amounts of 2 pbw & 100-120 pbw, respectively (p. 19, Table 1). The coupling agent is typically present in amounts of 0.05% – 10% by weight of the inorganic filler (D) (p. 11, [0093]). In view of this disclosure & the empirical data provided, Fujimoto discloses the silane coupling agent may be present in amounts from 2 pbw (inorganic filler not surface treated) up to 14 pbw (10% of 120 parts inorganic filler + 2 pbw silane coupling agent).
Fujimoto teaches the inorganic filler (D) to be present in amounts of 1 – 1,000 parts by weight, relative to 100 parts by weight of the total amount of components (A), (B), (C) & (E) (p. 25, cl. 18). The exemplary compositions provided in Table 1 (p. 19) detail the inorganic filler is present in amounts of 100 – 120 pbw for examples 1 – 8, with example 9 comprising inorganic filler in amounts of 700 pbw (p. 19, Table 1). As such, Fujimoto teaches suitable amounts of inorganic filler may be present from 110 – 700 pbw.
It would have been obvious to one of ordinary skill in the art at the time of filing to include Yeager’s silane coupling agent in amounts of 2 – 14 pbw, and the inorganic filler in amounts of 100 – 700 pbw, as both Yeager (col. 13, lines 46-49) and Fujimoto (p. 11, [0092]) state the inorganic filler may be surface treated with a silane coupling agent, and Fujimoto demonstrates these as suitable ranges for silane coupling agents & inorganic fillers in similar compositions for similar uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Yeager in view of Lauchlan in further view of Fujimoto as detailed above reads on all limitations established by claims 5 & 6.
Regarding claim 9, maintaining the modification of Yeager in view of Lauchlan in further view of Fujimoto previously detailed, Fujimoto teaches a metal-clad laminate, with a metallic foil disposed on at least one side of a prepreg obtained from the resin varnish according to their invention (p. 25, claims 1, 25, 28 & 29). The metal used in Fujimoto’s preparation examples was copper (p. 20, [0164]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01.
Regarding claim 10, maintaining the modification of Yeager in view of Lauchlan in further view of Fujimoto previously detailed, for the purpose of reducing conductor loss, Fujimoto targeted a ten-point roughness (Rz) value of 5 μm or less, referred to as ‘low-profile foil’ (p. 2, [0016]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. All inventive examples (except example 2) achieved the ‘low-profile foil’ label (p. 21, Table 2).
Regarding claims 11 & 12, maintaining the modification of Yeager in view of Lauchlan in further view of Fujimoto previously detailed, Fujimoto provides quantitative data of their inventive resin’s embodiment examples, including results of their copper foil peeling strength tests (p. 21 & 22, Table 2). Fujimoto discloses said copper foil peeling strength test of their copper-clad laminate was measured in accordance with JIS-C-6481 (p. 21, [0167]). Fujimoto tested 10 examples of their invention with the results recorded as ranging from 0.82 kN/m – 1.17 kN/m (p. 22, Table 2). This range equates to 0.84 kgF/cm – 1.19 kgF/cm. All 10 examples of Fujimoto’s invention have peel strengths greater than the limitation thereof established by the instant claims 11 & 12.
“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,416-21 (2007). See MPEP § 2141. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
In the alternative, claims 7 & 8 are rejected under 35 U.S.C. § 103 as being obvious over Yeager et. al. (US 6,352,782 B1) in view of Lauchlan et al. (US 3,660,531) in further view of Fujimoto et. al. (US 2010/0129676 A1), in further view of Ohno et. al. (US 7,192,651 B2).
Regarding claims 7 & 8, maintaining the modification of Yeager in view of Lauchlan previously detailed, Yeager teaches compounds that are suitable for their inventive PPE resin, reading on components (a), (b) & (c) of claim 1 of the present application, and Lauchlan provides teachings for appropriate amounts of said components, however, both Yeager & Lauchlan are silent about quantitative data relating to dielectric properties of their inventive resin.
In the same field of endeavor, Fujimoto teaches a thermosetting resin varnish having excellent dielectric properties, moisture absorption and satisfies metallic foil peeling strength (Abstract). Fujimoto discloses compositional breakdowns of embodiments of their invention (p. 19, Table 1) and provides quantitative data of their inventive resin’s dielectric properties (p. 21-22, Table 2). Fujimoto discloses components &/or further additives that their invention may comprise for the purpose of modifying the resin’s dielectric properties as desired (p. 6, [0065]).
Neither Yeager, Lauchlan nor Fujimoto teach quantitative data relating to their inventive resin’s dielectric properties measured at 10 GHz.
In the same field of endeavor, Ohno teaches a laminate resin composition abiding by formula (1), a prepreg and a metal-clad laminate using said resin composition (Abstract), by way of utilizing a terminal vinyl group of a multifunctional phenylene ether resulting in low/excellent dielectric properties (p. 3, col. 3, lines 59-65). Ohno provides data of dielectric properties measured at 10 GHz for several embodiment examples of their invention, with the dielectric loss tangent of example 8 reported at 0.0029 (p. 7, col. 12, table 5).
Ohno teaches example 8 to be comprised of Resin B (50%) and a flame retardant (aluminum hydroxide) (50%) (p. 7, col. 12, Table 4). Resin B is a vinyl compound synthesized from a bifunctional phenylene ether oligomer, referred to as resin A (p. 5, col. 8, lines 24-67) & (p. 6, col. 9, lines 1-13). Example 8 is also shown to have a moisture absorption ratio of less than 0.5% as no swelling of the sample was observed (p. 7, col. 12, Table 5).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ Ohno’s dielectric loss tangent and moisture absorption properties as guidelines when modifying Yeager in view of Lauchlan in further view of Fujimoto, as these properties are shown to be suitable for similar compositions with similar end uses. Additionally, the dielectric properties are recognized as suitable for electronic parts (col. 8, lines 15-22) and Ohno’s moisture absorption leads to reduced swelling (col. 12, lines 38-44). This represents the use of properties as a target for a similar composition used in a similar application. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,416-21 (2007). See MPEP § 2141. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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