DETAILED 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 March 2026 has been entered. Claims 1-21 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All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.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
Claims 1-4, 7, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP H07-2830 B2 (“Sanyo”).
A partial machine translation is enclosed.
As to claims 1 and 2, Sanyo teaches a highly purified phenolic resin displayed with the general formula
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(abstract). Example 1 (translation, p. 4) teaches a reaction of dicyclopentadiene and p-cresol, which is expected to provide a structure of formula 1 with R1 being methyl and i = 1 as required by claims 1 and 2. Sanyo teaches that n ranges from 0 to 15, which substantially overlaps the recited range..
Sanyo differs from the recited structure (1) in that Sanyo does not explicitly state the structure contains at least one R2 being a dicyclopentenyl group of the type of formula (1a) and (1b) recited in claim1. However, Sanyo teaches reacting phenol and dicyclopentadiene in the same temperature (100 degrees C), by dropwise addition of DCPD to phenol in the presence of a Lewis acid catalyst, including in ratios acknowledged in applicant’s specification to provide dicyclopentenyl groups as required (see, example 2, using 0.25 mol DCPD per 1 mole of the phenol). Moreover, the IR spectra of the products, Figs. 1, 5, 7, and 9, each show a peak at approximately 3040 cm-1 acknowledged by applicant to indicate the olefin stretching arising from dicyclopentenyl groups of formulae 1a and 1b (specification, para. 0042). It would therefore be an obvious modification to obtain the resin of Sanyo in the recited length n, and that the conditions would inherently provide dicyclopentenyl groups.
As to claim 3, Sanyo teaches reacting dicyclopentadiene with phenol in the presence of Lewis acid at the recited temperature. While Sanyo does not explicitly teach reacting the dicyclopentadiene with the phenolic resin as recited, Sanyo teaches adding the DCPD gradually, and it would be expected that at least some of the resin to which the DCPD is added would have the recited structure.
As to claim 4, Sanyo teaches preferably 0.005 to 0.08 moles of Lewis acid catalyst per mole DCPD (translation, p. 3).
As to claim 7, Sanyo teaches the phenolic resin as a curing agent for epoxy resin (translation, p. 2).
As to claim 13, Sanyo teaches the phenolic resin may be used as a curing agent for an epoxy resin, thus suggesting a cured product of an epoxy resin and the phenolic resin may obtained.
Claims 5, 6, 8, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JP H07-2830 B2 (“Sanyo”) in view of US 4,764,571 (“Namba”).
As to claim 5, As to claim 1, Sanyo teaches a highly purified phenolic resin displayed with the general formula
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(abstract). Example 1 (translation, p. 4) teaches a reaction of dicyclopentadiene and p-cresol, which is expected to provide a structure of formula 1 with R1 being methyl and i = 1 as required by claims 1 and 2. Sanyo teaches that n ranges from 0 to 15.
Sanyo teaches that the phenolic resin can be used to prepare an epoxy resin (translation, p. 2), but does not teach the recited structure. However, it is known from Namba that an epoxy resin
(2:20-30)
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can be formed from a corresponding phenol resin formed from phenol and DCPD
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(3:15-20) by reaction with epichlorohydrin. As such, the general formula (2) with R1 being methyl, I being 1, and k being from greater than 0 to 10 is an obvious modification suggested by Sanyo in view of Namba.
Sanyo in view of Namba differs from the recited structure (2) in that Sanyo does not explicitly state the structure contains at least one R2 being a dicyclopentenyl group of formula 1a or 1b as recited in claim 5. However, Sanyo teaches reacting phenol and dicyclopentadiene in the same temperature (100 degrees C), by dropwise addition of DCPD to phenol in the presence of a Lewis acid catalyst, including in ratios acknowledged in applicant’s specification to provide dicyclopentenyl groups as required (see, example 2, using 0.25 mol DCPD per 1 mole of the phenol).. Moreover, the IR spectra of the products of Sanyo, Figs. 1, 5, 7, and 9, each show a peak at approximately 3040 cm-1 acknowledged by applicant to indicate the olefin stretching arising from the recited dicyclopentenyl groups of formulae 1a and 1b (see specification, para. 0042). It would therefore be an obvious modification to obtain the resin of Sanyo in the recited length n, and that the conditions would provide dicyclopentenyl groups. Furthermore, it is reasonable to expect that converting the phenolic groups to epoxy groups per Namba would result in an epoxy resin of formula (2) with some R2 being dicyclopentenyl. As such, it would be an obvious modification of Sanyo in view of Namba, to provide the recited resin length, along with the dicyclopentenyl groups as Sanyo teaches the same methods to produce the phenolic resin and the same IR peaks indicating dicyclopentenyl groups.
As to claim 6, Sanyo does not teach the recited method for obtaining epoxy resin. Namba teaches obtaining the epoxy resin from the phenolic resin by reacting 2 to 10 moles of epichlorohydrin per mole of phenolic hydroxyl groups in the presence of alkali metal hydroxide (col. 3).
Sanyo in view of Namba differs from the recited structure (2) in that Sanyo does not explicitly state the structure contains at least one R2 being a dicyclopentenyl group of formula 1a or 1b as recited in claim 5. However, Sanyo teaches reacting phenol and dicyclopentadiene in the same temperature (100 degrees C), by dropwise addition of DCPD to phenol in the presence of a Lewis acid catalyst, including in ratios acknowledged in applicant’s specification to provide dicyclopentenyl groups as required (see, example 2, using 0.25 mol DCPD per 1 mole of the phenol).. Moreover, the IR spectra of the products of Sanyo, Figs. 1, 5, 7, and 9, each show a peak at approximately 3040 cm-1 acknowledged by applicant to indicate the olefin stretching arising from the recited dicyclopentenyl groups of formulae 1a and 1b (see specification, para. 0042). It would therefore be an obvious modification to obtain the resin of Sanyo in the recited length n, and that the conditions would provide dicyclopentenyl groups. Furthermore, it is reasonable to expect that converting the phenolic groups to epoxy groups per Namba would result in an epoxy resin of formula (2) with some R2 being dicyclopentenyl. As such, it would be an obvious modification of Sanyo in view of Namba, to provide the recited resin length, along with the dicyclopentenyl groups as Sanyo teaches the same methods to produce the phenolic resin and the same IR peaks indicating dicyclpentenyl groups.
As to claim 8, Sanyo does not teach a composition containing the epoxy resin and curing agent. However, Sanyo teaches the resin may be used for epoxy resins, and Namba teaches the corresponding epoxy resin. Namba teaches the epoxy resin in combination with a curing agent (5:16-25); as such, the use of the epoxy resin of Sanyo in view of Namba in a curable composition is an obvious end use suggested by Namba.
As to claim 20, while Sanyo does not explicitly teach a cured product, it teaches the phenolic resin as a curing agent. Namba, furthermore, teaches the corresponding epoxy resin and cured product thereof (col. 5). Thus a cured product is an obvious end use suggested by Sanyo and Namba.
Claims 9 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over JP H07-2830 B2 (“Sanyo”) as applied to claim 1, further in view of US 4,764,571 (“Namba”).
As to claim 9, Sanyo teaches that the phenolic resin, which as discussed would be expected to have at least some resin having the recited dicyclopentenyl groups, may be used as a curing agent for epoxy resin and as a base for epoxy resin (translation, p. 2).
Sanyo does not discuss a composition simultaneously having the phenolic resin of claim 1 and the epoxy resin of general formula (2)., However, it is known from Namba that an epoxy resin
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can be formed from a corresponding phenol resin formed from phenol and DCPD
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(3:15-20) by reaction with epichlorohydrin. As such, the general formula (2) with R1 being methyl, I being 1, and k being from greater than 0 to 10 is an obvious modification suggested by Sanyo in view of Namba.
Sanyo in view of Namba differs from the recited structure (2) in that Sanyo does not explicitly state the structure contains at least one R2 being a dicyclopentenyl group of formula 1a or 1b as recited in claim 5. However, Sanyo teaches reacting phenol and dicyclopentadiene in the same temperature (100 degrees C), by dropwise addition of DCPD to phenol in the presence of a Lewis acid catalyst, including in ratios acknowledged in applicant’s specification to provide dicyclopentenyl groups as required (see, example 2, using 0.25 mol DCPD per 1 mole of the phenol).. Moreover, the IR spectra of the products of Sanyo, Figs. 1, 5, 7, and 9, each show a peak at approximately 3040 cm-1 acknowledged by applicant to indicate the olefin stretching arising from the recited dicyclopentenyl groups of formulae 1a and 1b (see specification, para. 0042). It would therefore be an obvious modification to obtain the resin of Sanyo in the recited length n, and that the conditions would provide dicyclopentenyl groups. Furthermore, it is reasonable to expect that converting the phenolic groups to epoxy groups per Namba would result in an epoxy resin of formula (2) with some R2 being dicyclopentenyl. As such, it would be an obvious modification of Sanyo in view of Namba, to provide the recited resin length, along with the dicyclopentenyl groups as Sanyo teaches the same methods to produce the phenolic resin and the same IR peaks indicating dicyclpentenyl groups, and that the epoxidized resin would also have the corresponding structure having dicyclopentenyl groups.
As to claim 21, while Sanyo does not explicitly teach a cured product, it teaches the phenolic resin as a curing agent. Namba, furthermore, teaches the corresponding epoxy resin and cured product thereof (col. 5). Thus a cured product is an obvious end use suggested by Sanyo and Namba.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over JP H07-2830 B2 (“Sanyo”) as applied to claim 7, further in view of JP 2001-240654 A (“Ogura”).
As to claim 10, Sanyo teaches that the phenol resin may be used as curing agent for epoxy resin(translation, p. 2), but does not discuss prepreg. However, it is known from Ogura that dicyclopentadiene modified phenol resins may be used to form circuit board (abstract para. 0029), specifically using epoxy resin composition with curing agent in prepreg (para. 0011). AS such, the use of the dicyclopentadiene phenol resin in such an application is known in the art from Ogura.
As to claim 11, Sanyo teaches that the phenol resin may be used as curing agent for epoxy resin (translation, p. 2), but does not specifically discuss laminated board. However, it is known from Ogura that dicyclopentadiene modified epoxy resins in conjunction with dicyclopentadiene phenol resins may be used to form circuit board (abstract), specifically using such epoxy resin 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 composition in such an application is obvious as taught by Ogura.
As to claim 12, Sanyo teaches that the phenol resin may be used as curing agent for epoxy resin (translation, p. 2),, but does not specifically discuss printed wiring substrate. However, it is 0known from Ogura that dicyclopentadiene modified epoxy resins may be used to form circuit board in conjunction with dicyclopentadiene phenol resin curing agent (abstract, para. 0029), specifically using such epoxy resin 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 composition in such an application is obvious as taught by Ogura.
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP H07-2830 B2 (“Sanyo”) in view of US 4,764,571 (“Namba”) as applied to claims 8 or 9, further in view of JP 2001-240654 A (“Ogura”).
As to claims 14 and 15, Sanyo teaches that the phenol resin may be used as curing agent for epoxy resin (translation, p. 2), and Namba teaches that epoxidized dicyclopentadiene phenol can be cured with a curing agent, but does not discuss prepreg. However, it is known from Ogura that dicyclopentadiene phenol based epoxy resins dicyclopentadiene modified phenol resins may be used to form circuit board (abstract para. 0029), specifically using epoxy resin composition with curing agent in prepreg (para. 0011). AS such, the use of the dicyclopentadiene phenol epoxy resin and/or dicyclopentadiene phenol resin in such an application is known in the art from Ogura.
As to claims 16 and 17, Sanyo teaches that the phenol resin may be used as curing agent for epoxy resin (translation, p. 2), and Namba teaches that epoxidized dicyclopentadiene phenol can be cured with a curing agent, but does not specifically discuss laminated board. However, it is known from Ogura that dicyclopentadiene modified epoxy resins in conjunction with dicyclopentadiene phenol resins may be used to form circuit board (abstract), specifically using such epoxy resin 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 and/or dicyclopentadiene phenol resin composition in such an application is obvious as taught by Ogura.
As to claims 18 and 19, Sanyo teaches that the phenol resin may be used as curing agent for epoxy resin (translation, p. 2), and Namba teaches that epoxidized dicyclopentadiene phenol can be cured with a curing agent,, but does not specifically discuss printed wiring substrate. However, it is 0known from Ogura that dicyclopentadiene modified epoxy resins may be used to form circuit board in conjunction with dicyclopentadiene phenol resin curing agent (abstract, para. 0029), specifically using such epoxy resin 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 composition and/or dicyclopentadiene phenol resin in such an application is obvious as taught by Ogura.
Response to Arguments
Applicant's arguments filed 19 March 2026 have been fully considered but they are not persuasive.
Applicant argues that Sanyo does not teach the pendant dicyclopentenyl groups as recited in the phenolic resins and epoxy resins, and that because Sanyo does not add the DCPD to the phenol resin in the two step fashion, that the resins of Sanyo cannot meet the recited formulae.
This is unpersuasive for two reasons. First, Sanyo teaches the addition of DCPD to the phenol compound in a dropwise fashion. It is reasonable to expect that this technique would result in the addition of DCPD to some formed DCPD-phenol resin, given the gradual nature of the addition. Second, applicant has not addressed the fact that the examples oF Sanyo, being made from the same starting materials, provides a product with a FTIR spectrum showing a peak of 3040 wavenumbers, which applicant states arises from the dicyclopentenyl group of formula 1a and 1b (see Figs. of Sanyo). Thus, it is reasonable to conclude that the addition of dicyclopentadiene to phenol, while resulting generally in the double addition of DCPD to phenol resulting in bridging dicyclopentanediyl groups, that such addition also results in resins showing single addition of DCPD to phenolic groups providing the dicyclpentenyl groups having the same vibration as shown by the FTIR spectrum.
Thus, since Sanyo teaches such resins can be epoxy curing agents, and Namba teaches the utility of epoxy resins based on DCPD phenol resins, the remainder of the claims are obvious over Sanyo itself or in combination with Namba and Ogura.
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.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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