DETAILED ACTION
Applicant’s amendment dated 16 July 2026 is hereby acknowledged. Claims 1-22 as amended are pending.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.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.
Claim Rejections - 35 USC § 103
Claim(s) 1-6, 8, 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over JP H05-339341 A (“Takei”).
A partial machine translation is enclosed, to which the paragraph citations refer.
As to claims 1, 2, and 22, Takei teaches a phenol resin having two 2,6-xylenol groups connected through a dicyclopentanyl group (para. 0016). The 2,6-xylenol groups meet the recited phenol structures of general formula (1) where I is 2, R1 is methyl as required by claims 1 and 2, and the R1 groups are at ortho positions as required by claim 22.
The structure of the phenol resin of Takei meets the recited structure (1) where n is 1, with the exception that the drawn structure does not show any dicyclopentenyl groups 1a and 1b. However, Takei teaches that the phenol resin is obtained by reacting 2,6-xylenol with dicyclopentadiene, under the same conditions as set forth in applicant’s specification. Moreover, Takei teaches reacting 0.1 to 0.5 moles of dicyclopentadiene with the xylenol, which includes amounts that would provide sufficient dicyclopentadiene to cause formation of dicyclopentenyl groups (cf specification paras. 0029, 0034). Since Takei teaches adding dicyclopentadiene dropwise over hours (para. 0020), it is reasonable to expect that the formation DCPD-phenol resin followed by additional DCPD reaction with that resin.
As such, it is reasonable to presume that the addition of dicyclopentadiene according to Takei at the high end of the range would result in some portion of the resin of claims 1, 2, and 22.
As to claim 3, Takei does not explicitly teach the sequence of reacting dicyclopentadiene with the formula (3) resin. However, Takei teaches dropwise adding dicyclopentadiene to 2,6-xylenol over hours in the presence of Lewis acid catalyst (paras. 0019, 0020) and at the same temperature as recited (para. 0021). The amount metered over hours is in the same range as applicant’s explicit two step method (specification, paras. 0029, 0034) of adding dicyclopentadiene to the phenol to form DCPD-phenol resin, followed by adding DCPD to the DCPD-phenol resin, both in the presence of Lewis acid. It is thus reasonable to presume that the dropwise addition of DCPD to 2, 6-xylenol results in the formation of DCPD-xylenol resin according to formula (3), followed by addition of DCPD to that resin.
As to claim 4, Takei teaches the recited amount of Lewis acid catalyst (para. 0019).
As to claim 5, Takei teaches an epoxy resin of formula (1) which has features of the general formula (2) when n is 0, where k in general where R1 is methyl, and I is 2. Takei differs in that it does not show any of the epoxy resin having R2 being a dicyclopentenyl group 1a or 1b. However, Takei teaches that the epoxy resin is obtained by reacting a corresponding phenol compound with epichlorohydrin (para. 0025).
Takei teaches that the phenol resin is obtained by reacting 2,6-xylenol with dicyclopentadiene, under the same conditions as set forth in applicant’s specification. Moreover, Takei teaches reacting 0.1 to 0.5 moles of dicyclopentadiene with the xylenol, which includes amounts that would provide sufficient dicyclopentadiene to cause formation of dicyclopentenyl groups (cf specification paras. 0029, 0034). Since Takei teaches adding dicyclopentadiene dropwise over hours (para. 0020), it is reasonable to expect that the formation DCPD-phenol resin followed by additional DCPD reaction with that resin.
As such, it is reasonable to presume that the addition of dicyclopentadiene according to Takei at the high end of the range would result in some portion of the corresponding phenol resin having at least one group R1 being dicyclopentenyl group 1a or 1b, and thus the formation of the phenol, then epoxy resin, with the high amount of dicyclopentadiene resulting in the formation of epoxy resin according to claim 2 is an obvious modification within the range of Takei.
As to claim 6, as discussed with respect to claim 5, Takei teaches reacting epichlorohydrin with the phenol (para. 0025). In the recited ratio (para. 0027) in the presence of alkali metal hydroxide (para. 0026). The discussion with respect to the resin of formula (1) from claim 5 is incorporated herein.
As to claim 8, Takei teaches combining the epoxy resin with a curing agent (para. 0034).
As to claim 20, Takei teaches a cured product of the epoxy resin composition (para. 0041).
Claim(s) 7, 9-13, 15, 17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over JP H05-339341 A (“Takei”) as applied to claim 1, further in view of JP 2001-240654 A (“Ogura”).
As to claim 7, Takei does not teach using the dicyclopentadiene phenol of Takei as a curing agent for epoxy resin. However, Ogura teaches circuit board resin compositions using a dicyclopentadiene adduct epoxy resin, and teaches dicyclopentadiene phenol are suitable for impriving heat resistance, electrical characteristics and water resistance (para. 0030). As such, the use of the phenol compound of Takei as an epoxy resin curing agent is an obvious end use suggested by Ogura.
As to claims 10 and 11, Takei does not teach the recited end use. However, it is known from Ogura that dicyclopentadiene modified epoxy resins, including those cured with dicyclopentadiene phenol, 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 phenol resin of Takei in such an application is known in the art from Ogura.
As to claims 12 and 13, 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 including dicyclopentadiene phenol, in prepreg (para. 0011), and teaching using the same, thus to form a laminated board (para. 0057), a cured product as required by claim 13, 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 phenol resin of Takei in such an application is known in the art from Ogura.
As to claim 9, Takei teaches combining the epoxy resin with a curing agent (para. 0034). Takei does not teach using the dicyclopentadiene phenol of Takei as a curing agent for epoxy resin. However, Ogura teaches circuit board resin compositions using a dicyclopentadiene adduct epoxy resin, and teaches dicyclopentadiene phenol are suitable for impriving heat resistance, electrical characteristics and water resistance (para. 0030). As such, the use of the phenol compound of Takei as an epoxy resin curing agent is an obvious end use suggested by Ogura.
As to claims 15 and 17, Takei does not teach the recited end use. However, it is known from Ogura that dicyclopentadiene modified epoxy resins, including those cured with dicyclopentadiene phenol, 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 phenol resin of Takei in such an application is known in the art from Ogura.
As to claim 19, 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 including dicyclopentadiene phenol, in prepreg (para. 0011), and teaching using the same, thus 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 phenol resin of Takei in such an application is known in the art from Ogura.
As to claim 21, Takei teaches a cured product of the epoxy resin composition (para. 0041).
Claim(s) 14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP H05-339341 A (“Takei”) as applied to claim 8, further in view of JP 2001-240654 A (“Ogura”).
As to claims 14 and 16, 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 claim 18, 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 with respect to claim(s) 1-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764
