DETAILED ACTION
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5 March 2026 has been entered. Claims 1-20 as amended are pending.
Terminal Disclaimer
The terminal disclaimer filed on 5 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11,884,773 and US App. Ser. No. 18/008,666 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 7, 8, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP H05-339341 A (“Takei”).
JP H05-339341 A was made of record with applicant’s IDS dated 2 December 2022. A partial machine translation is enclosed.
As to claim 1, Takei teaches an epoxy resin composition that is an epoxidized phenolic resin, the phenolic resin being a reaction product of 2,6-xylenol and dicyclopentadiene. The resulting epoxy resin is shown at Claim 1, where n may be 0, (claim 1), corresponding to recited formula (1) where m is 1. The phenolic units from such a resin have R1 each being methyl, and otherwise is reacted such that the target product is the phenolic resin having m = 1 and R2 shown as hydrogen (see with reference to para. 0016). Takei teaches the epoxy resin in combination with a curing agent (para. 0034).
Takei does not show that any of the R2 substituents are dicyclopentenyl groups of the recited formula. However, Takei teaches the same methods of forming the resin, using 2,6-xylenol and dripping in DCPD over a period at a temperature of 50 to 200 degrees C (translation, paras. 0020-0021) in the presence of a Lewis acid catalyst (para. 0018). Takei teaches reacting 0.1 to 0.5 mol of dicyclopentadiene to 1 mole 2,6-xylenol (para. 0017). The Office notes that applicant acknowledges that dicyclopentenyl groups of the recited formula are obtained in proportions overlapping those taught by Takei (see specification, paras. 0018, 0025). While not exemplified, therefore, Takei suggests the reaction of dicyclopentadiene to 2,6-xylenol in proportions that would inherently provide some pendant cyclopentenyl groups as acknowledged by applicant, and the structure is therefore obvious as suggested by Takei.
As to claim 2, while not exemplified, Takei teaches the same ratio of DCPD to xylenol, and epoxidation, that would be expected to provide the structure of claim 1 where m is 1. Any degree of dicyclopentyl substitution would be calculated to provide an epoxy equivalent in the recited range.
As to claims 3 and 8, Takei teaches phenolic compounds, anhydrides, amine compounds (para. 0034), especially phenol novolac resins (para. 0036).
As to claims 7 and 18-20, Takei teaches a cured product of the epoxy resin composition (para. 0039).
Claim(s) 4-6 and 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP H05-339341 A (“Takei”) as applied to claims 1-3 and 8, further in view of JP 2001-240654 A (“Ogura”).
As to claims 4 and 9-11, Takei teaches the epoxy resin composition may be used in laminated material for printed circuit (para. 0041), but does not discuss prepreg. However, it is known from Ogura that dicyclopentadiene modified epoxy resins may be used to form circuit board (abstract), specifically using such epoxy with curing agent in prepreg (para. 0011). As such, the use of the dicyclopentadiene epoxy resin in such an application is known in the art from Ogura.
As to claims 5 and 12-14, Takei teaches the epoxy resin composition may be used in laminated material for printed circuit (para. 0041), but does not specifically laminated board. However, it is known from Ogura that dicyclopentadiene modified epoxy resins may be used to form circuit board (abstract), specifically using such epoxy with curing agent in prepreg (para. 0011), and teaching using the same to form a laminated board (para. 0057). As such, the use of the dicyclopentadiene epoxy resin in such an application is known in the art from Ogura.
As to claims 6 and 15-17, Takei teaches the epoxy resin composition may be used in laminated material for printed circuit (para. 0041), but does not specifically printed wiring substrate. However, it is known from Ogura that dicyclopentadiene modified epoxy resins may be used to form circuit board (abstract), specifically using such epoxy with curing agent in prepreg (para. 0011), and teaching using the same to form a laminated board (para. 0057) and forming a wiring pattern thereon (para. 0011), which may be printed (para. 0042), thus a printed wiring substrate. As such, the use of the dicyclopentadiene epoxy resin in such an application is known in the art from Ogura.
Response to Arguments
Applicant's arguments filed 5 March 2026 have been fully considered but they are not persuasive. Specifically, while Takei does not discuss the presence of pendant dicyclopentenyl groups of the recited formula, Takei teaches the same starting materials of DCPD added to 2,6-xylenol.
Furthermore, the teachings of Takei are not limited to the examples. Takei teaches that the DCPD can be added to xylenol at up to a 0.5:1 molar ratio (para. 0017), which is acknowledged by applicant to produce resins having the dicyclopentenyl groups. Thus, even if it is “impossible’ that the example of Takei would have any pendant dicyclopentenyl groups, Takei teaches that DCPD may be used in higher amounts that would provide dicyclopentenyl groups. Note that the claim requires only that the epoxy resin is “partially or fully” a resin of the recited general formula (1); thus, any amount of epoxy resin of the recited formula, even if most of the resin contains no dicylopentenyl groups, would meet the claim.
Examiner also notes that a bifunctional epoxy resin as suggested by Takei is within the recited formula.
The previous nonstatutory double patenting rejections are withdrawn in view of the terminal disclaimer filed 5 March 2026.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights