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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/30/2026 has been entered. Claims 1 and 7 are amended; claim 4 is cancelled; and claims 7-16 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1-3 and 5-16 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 5 is 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 5 recites “an amount of the oligomer with n being 0 in chemical formula 1A is 80 wt% or less with respect to the total weight of the resin” and fails to further limit the scope of independent claim 1 on which it is dependent. Specifically, amount of oligomer with n being zero is limited to 20 to 80 wt% in independent claim 1, whereas less than 80 wt% in present claim 5 includes value outside 20 wt% of 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
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zupancic et al (US 4,824,920) in view of Wang et al (US 4,707,558)
Regarding claims 1-2 and 4-5, Zupancic et al teach resins having the formula:
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wherein P =
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with R1, R2, R3 and R4 = hydrogen, a=0, b=0, m, n, s, t = 0 or an integer and m + n + s + t = 1 to 10; A =
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and R5 = H (col. 3, lines 33-68 and col. 4, lines 1-21) which reads on oligomer in present claim 1, when A =
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(i.e., reads on chemical formula 2-1 to 2-3 in present claim 1 and unsaturated group in present claim 5); n, s, t = 0 and p = 1 to 10 (i.e., reads on n = 0 to 10 in present claims 1 and 5), a = 0, b = 0, R2, R3 and R4 = hydrogen (i.e., reads on the oligomer in present claims 1 and 5). The variables m, n, s, and t each are integers such that z, where z equals m + n + s + t is an integer from 1 to 10 (col. 5, lines 24-26). A desirable mixture of resins is one which consists of from about 15 to about 40 wt% by weight of a resin where z = 1 (col. 6, lines 39-41) which overlaps with wt% of oligomer with n = 0 in present claim 1. See example 1, wherein potassium hydroxide solution is added during the preparation of vinyl benzyl ether (col. 7, lines 45-68).
Zupancic et al are silent with respect to amount of alkali metal.
However, Wang et al in the same field of endeavor teach preparation of monomers and oligomers containing a plurality of vinyl benzyl ether groups (title). See example 1, wherein the sodium hydroxide is added to the reaction mixture. After maintaining the reaction mixture at 450C for 2 hours, the reaction mixture was cooled to room temperature and dry ice was added to neutralize any excess base. The solution was washed several times with water until the pH of material was 7 (col. 5. lines 15-52). Therefore, in light of the teachings in Wang et al, it would have been obvious to one skilled in art prior to the filing of present application to use any known method of neutralizing the reaction mixture to obtain low amounts of sodium (i.e., alkali metal ion in present claim 1 and Na+ ion in present claim 2), absent evidence to the contrary.
Regarding claim 3, Zupancic et al teach that filtered solution was added to methanol to precipitate the ether and solid was collected by filtration. Solid was washed with methanol (col. 7, lines 65-68). It is noted that vinylbenzyl chloride is soluble in methanol. Therefore, it is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to wash the solid obtained, with methanol, until a desired residual content of vinylbenzyl chloride (such as an amount of 3000 ppm or less) is present in the oligomer, absent evidence to the contrary.
Regarding claim 6, see example, wherein the oligomer has molecular weight in the presently claimed range (see Table 1 in col. 8).
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 8-9, of Office action mailed 2/18/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 12 below).
Applicant's arguments, filed 4/30/2026, have been fully considered but they are not persuasive. Specifically, applicant argues that examples 1-3 which satisfy the features recited in claim 1 (i.e., amount of oligomer with n being zero and content of alkali metal ions), exhibit better dielectric characteristics and higher glass transition temperature compared to comparative examples 1 and 2. Comparative examples 3 exhibits deteriorated yield due to the difference in alkali metal content.
In response, as can be seen from examples 1-3 and comparative example 3, of present application, amount of sodium ions do not appear to have a negative impact on the dielectric properties. In fact, comparative example 3 has better dielectric properties and higher glass transition temperature than inventive example 3. Further, it is not clear what process is used to prepare comparative example 3, since there does not appear to be a sodium ion in the process of U.S. Patent no. 4,824,920. Hence, applicant argument with respect to showing of unexpected results is not convincing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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