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 .
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 1-2, 5-8, 10-13, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 110845853 A, hereinafter referring to the attached ESPACENET translation) in view of Yokoyama (US 2022/0216563 A1).
Regarding claim 1, Chen teaches a resin composition and a prepreg, a laminate, an insulating board, a circuit substrate, and a covering film of the same ([0002]) comprising:
A modified polyphenylene ether resin ([0015]) containing vinyl groups or (meth)acrylate groups (c.f. Formulae 3 and 4, [0017]-[0022] of original document) which reads on the claimed “thermosetting polyphenylene ether resin” because the instant Specification states that vinyl group-modified and methacrylate group-modified polyphenylene ether resins are preferred (see instant Specification p. 3, lines 19-22).
A silicone resin which is a vinyl-organic silicone resin (c.f. Formulae 1 and 2, [0007]-[0009] of original document), which reads on the claimed “vinyl organic silicone resin”
A thermoplastic elastomer ([0050]), which may include inter alia a hydrogenated styrene block copolymer ([0050]), which reads on the claimed “fully hydrogenated elastomeric polymer” because the instant Specification states that hydrogenated block copolymers of styrene are preferable (see instant Specification at p. 4, lines 22-25).
Chen teaches the incorporation of 10-80 parts of the silicone resin ([0014]), 10 to 50 parts of the modified polyphenylene ether resin ([0015]), and 5 to 20 parts of the thermoplastic elastomer ([0016]). This corresponds to an incorporation of between about 3.7 and about 50 parts of the thermoplastic elastomer per 100 parts of the three materials combined (5 parts of thermoplastic elastomer in a formulation which also contains 80 parts of silicone resin and 50 parts of polyphenylene ether yields 5 parts of thermoplastic elastomer per 135 total parts, equivalent to 3.7 parts per 100 total; likewise 20 parts of thermoplastic elastomer in a formulation which also contains 10 parts of silicone resin and 10 parts of polyphenylene ether yields 20 parts of thermoplastic elastomer per 40 total parts, equivalent to 50 parts per 100 total). The range taught by Chen encompasses the claimed range of “20-50.”
Chen teaches the incorporation of hydrogenated elastomers ([0050]) but differs from claim 1 because it is silent with regard to the claimed maleic anhydride-modified hydrogenated elastomers.
In the same field of endeavor, Yokoyama teaches a wiring component comprising a polyphenylene ether resin composition (Abstract). The composition further contains a block copolymer ([0082]) which may be a hydrogenated triblock copolymer of styrene and butadiene ([0087], [0088], and [0090]). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (in this case, as a block copolymer to be combined with a polyphenylene ether resin in electrical/electronics applications). See MPEP 2144.07. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the block copolymer of Yokoyama within the formulation of Chen, as Yokoyama recognizes it as a suitable polymer for compounding with polyphenylene ether resins for electrical/electronics applications.
Yokoyama teaches that the block copolymer may be a modified polymer which has been modified by maleic anhydride ([0104]), and teaches that the grafting of between 0.1 and 10 mass % ([0104]), which overlaps the claimed range of “less than or equal to 5%,” establishing a prima facie case of obviousness.
Regarding the newly added limitation requiring that the claimed range of vinyl organic silicone -- as described above, Chen teaches the incorporation of 10-80 parts of the silicone resin ([0014]) and 10 to 50 parts of the modified polyphenylene ether resin ([0015]). This corresponds to an incorporation of between about 16.7 and about 88.9 parts of the silicone resin per 100 parts of the two materials combined (10 parts of silicone resin in a formulation which also contains 50 parts of the polyphenylene ether yields 10 parts of silicone resin per 60 total parts, equivalent to 16.7 parts per 100 total; likewise 80 parts of silicone resin in a formulation which also contains 10 parts of polyphenylene ether yields 80 parts of silicone resin per 90 total parts, equivalent to 88.9 parts per 100 total). The range taught by Chen encompasses and therefore reads on he claimed range of “20-60.”
Regarding claim 2, as described above, Chen teaches a modified polyphenylene ether resin ([0015]) containing vinyl groups or (meth)acrylate groups (c.f. Formulae 3 and 4, [0020]-[0022]) which reads on the claimed “thermosetting polyphenylene ether resin.”
Regarding claim 5, Chen teaches the incorporation of peroxy initiators ([0052]), which reads on the claimed “initiator.”
Regarding claim 6, Chen teaches the formation of a film from the inventive composition ([0002] and [0061]), and teaches inter alia the drying of the film ([0151]), which reads on the claimed “resin film.”
Regarding claim 7, Chen teaches a prepreg containing a reinforcing material and the inventive composition which is attached to the surface of the reinforcing material ([0139]), which reads on the claimed “prepreg.”
Regarding claim 8, Chen teaches a laminate containing a prepreg containing the inventive formulation ([0143]).
Regarding claim 10, Chen teaches a circuit substrate comprising the same ([0002]), and explicitly points out that the circuit substrate contains the inventive prepreg sheet ([0060]).
Regarding claim 11, Chen teaches silicone resins which have a linear molecular architecture ([0010]-[0011]), which reads on the claimed “line-structure vinyl organic silicone resin.”
Regarding claim 12, Chen teaches that the modified polyphenylene ether resin may preferably be the following methacrylate-modified polyphenylene ether resin:
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Preferred Methacrylate-modified polyphenylene ether resin of Chen (CN 110845853, see [0045] of attached Original Document)
wherein a and b may range from 1 to 10 and n may range from 0 to 5 ([0105]). Using the structure of the polymer shown above and the ranges of a, b, and 5, the molecular weight of the polymer may range from about 380 g/mol to about 4,434 g/mol, which reads on the claimed range of “500-10000 g/mol.”
Regarding claim 13, Chen teaches the incorporation of between 0 and 5 parts of the initiator ([0133]), which reads on the claimed range of “1-3 parts.”
Regarding claim 17, Chen teaches the addition of a flame retardant ([0051]).
Regarding claim 18, Chen teaches the preferred incorporation of between 10 to 35 parts of flame retardant ([0132]), which reads on the claimed range of “10-30 parts by weight.”
Regarding claim 19, Chen teaches the incorporation of powdered fillers ([0054]).
Regarding claim 20, Chen teaches the preferred incorporation of between 55 and 180 parts of filler ([0134]), which reads on the claimed range of “10-70 parts.”
Response to Arguments
Applicant's arguments filed June 10, 2026 have been fully considered but they are not persuasive.
Applicant argues that Chen is silent regarding maleic-anhydride modification. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the rejection of the claims is based on Chen in view of Yokoyama, wherein Yokoyama provides motivation for the maleic anhydride modification.
Applicant states that Chen is silent regarding the claimed range of vinyl organic silicone resin, however as described above, Chen teaches a composition containing an overlapping amount thereof.
Applicant argues that the scope of Chen is broader than that of the present claims. This argument is tantamount to allegations regarding sufficient specificity. However, the question of sufficient specificity is relevant to anticipation rejections under 35 U.S.C. 102 (see MPEP 2131.03.II.). Therefore, the composition of Chen as modified reads on the claimed composition regardless of whether the range anticipates the claimed range. Furthermore, the claimed range of 20-60 parts represents about 55.4% of the range of about 16.7 to about 88.9 taught by Chen as modified. Chen therefore discloses the claimed range with a high level of specificity.
Applicant admits that Yokoyama mentions hydrogenation but stipulates that Yokoyama does not specify “full” hydrogenation. However, a disclosure of hydrogenation to one having ordinary skill in the art is reasoned to include both partial and full hydrogenation. Regardless of the specificity of 100% hydrogenation within this disclosure, it would nevertheless be obvious to one having ordinary skill in the art to pursue full hydrogenation, as full hydrogenation certainly falls within the scope of the concept of hydrogenation.
Applicant argues that Yokoyama is merely related to a wiring composition as opposed to a communication material as described by the present application. Firstly, analogous art is not required to be related to the exact same problem as the instant application – to the contrary, prior art may be analogous if within the same field of endeavor regardless of the specific goals contemplated therein (see MPEP 2141.01(a).I.). In this case, both Yokoyama and the instant application are directed towards resin compositions comprising polyphenylene ether resins and are therefore plainly relevant within the same field of endeavor.
Applicant finally rebuts the combination of prior art, asking how, since there are numerous existing prior art technologies in the field of endeavor, one having ordinary skill in the art would piece together a scheme that is the same as that of the present application. The answer lies above: the prior art renders the claimed combination obvious based on MPEP 2144.07 as well as the remainder of the technical logic supplied above. The obviousness rationale is not speculating on whether the claimed composition would be any more or less obvious compared to numerous other technologies in the relevant field of endeavor – rather, the analysis is merely showing how the claimed composition would have been obvious to one having ordinary skill in the art based on previously disclosed inventions. Obviousness is contrary to patentability, and therefore the claims are rejected from being allowed because an obviousness rationale may be appropriately applied.
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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