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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 May 2026 has been entered.
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.
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.
Claim(s) 1-3, 6, and 8-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US Serial No. 2004/0009727), in view of Yeager et al. (US Patent No. 6627704), as cited on the IDS, as evidenced by Brauckman et al. (US Serial No. 2024/0207456).
Regarding claims 1, 3, 6, and 15; Lin et al. teaches a composition comprising a polybutadiene dimethacrylate (CN-301, Sartomer) [Ex7], one or more coagents such as triallyl (iso)cyanurate and butylene glycol dimethacrylate [0080], a free radical initiator, such benzoyl peroxide and dicumyl peroxide (photoinitiator) [0062], and a UV absorber (i.e. photo-blocker) [0040]. Lin et al. teaches the triallyl (iso)cyanurate coagent is suitably employed in a concentration of 1 to 40% by weight based upon the weight of the copolymer [0066]. Looking to Example 9 as a starting point, in the instance the triallyl isocyanate is employed in an amount of 60 mg (33% by weight of the copolymer, as calculated by Examiner), the amount of triallyl isocyanate based on the entire composition is 26.5% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. Furthermore, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
Lin et al. fails to teach the composition further comprises at least one functionalized poly (phenylene ether) having the structure required by instant claim 1. Yeager et al. teaches a composition comprising a functionalized poly(arylene ether) [col2, line13-col5, line10], an acryloyl monomer, such as tris(2-hydroxyethyl) isocyanurate tri(meth)acrylate (ethylenically unsaturated isocyanurate) [col10, line36-col11, line10], 1,6-hexanediol diacrylate, cyclohexane dimethanol dimethacrylate, and stearyl (meth)acrylate [col12, line30-42], and low viscosity oligomers, such as polybutadiene urethane diacrylate CN302 ((meth)acrylated polydiene) [col11, line37-52].
Yeager et al. teaches the capped poly(arylene ether) [col2, line13-col5, line10] is represented by the structure Q(J-K)y, wherein J comprises recurring units having the structure, wherein R1 and R3 are hydrogen and R2 and R4 are a C1 alkyl.
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The capping group K may be the following structure, wherein Y is a carbonyl, R6 and R8 are hydrogen, and R7 is a C1 alkyl group.
Q is the residuum of a phenol, having the structure below, where X is a C3 alkyl (propyl), and n is 2 [col2, line13-col3, line42].
Lin et al. and Yeager et al. are analogous art because they are both concerned with the same field endeavor, namely compositions having dielectric properties, suitable for use in circuit boards. At the time of filing, a person of ordinary skill in the art, would have found it obvious to add the poly(arylene ether) compound, as taught by Yeager et al., to the composition of Lin et al., and would have been motivated to do so in order to achieve a desirable balance of toughness and processability, as suggested by Yeager et al. [col2, line1-12].
Brauckman et al. provides evidence that benzoyl peroxide and dicumyl peroxide necessarily possess the capability of functioning as a photoinitiator [0077].
Regarding claims 2 and 11; Lin et al. teaches coagents such as ethylene glycol dimethacrylate, butylene glycol dimethacrylate (e.g. 1,4-butanediol dimethacrylate), a trifunctional methacrylate such as SR 9009 [0066]. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 8; Lin et al. does not require the use of bismaleimide resin, thus the composition is free of bismaleimide resins.
Regarding claims 9-10 and 16; Lin et al. teaches a suitable compounds for the present invention is, for example, ethylene glycol dimethacrylate, however fails to teach the at least one diluent is a cycloalkyl difunctional methacrylate. Yeager et al. teaches suitable monomers to be used in the composition include stearyl acrylate, ethylene glycol di(meth)acrylate, and cyclohexanediol di(meth)acrylate [col12, line30-42]. Therefore, Yeager et al. teaches that ethylene glycol dimethacrylate, stearyl acrylate, and cyclohexanediol dimethacrylate are functional equivalents for the purpose of functioning as compounds suitable for use in achieving a composition for circuit boards having dielectric properties. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06). It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 12; wherein the initiators listed by Lin et al. function as photoinitiators, no thermal initiators are present.
Regarding claim 13; Lin et al. teaches the composition further comprises flame retardants [0040].
Regarding claim 14; Lin et al. teaches the composition may comprise particulates such as silica, however fails to teach the fillers required by the claim. Yeager et al. teaches suitable fillers to be used in the composition include silica and alumina [col15, line61-col16, line28]. Therefore, Yeager et al. teaches that silica and alumina are functional equivalents for the purpose of functioning as fillers to achieve desired mechanical properties. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US Serial No. 2004/0009727), in view of Yeager et al. (US Patent No. 6627704), as cited on the IDS, as evidenced by Brauckman et al. (US Serial No. 2024/0207456), as applied to claim 1 above, and further in view of Yoshigahara et al. (WO 2019/044051), wherein the machine English translation is used for citation.
Lin et al. in view of Yeager et al. render obvious the basic claimed composition, as set forth above, with respect to claim 1.
Regarding claim 7; Lin et al. teaches suitable initiators include benzoyl peroxide, however fails to teach the initiators required by the claim. Yoshigahara et al. teaches compositions having dielectric properties, suitable for use in the manufacture of circuit boards, comprising initiators such as benzoyl peroxide and benzophenone derivatives [para bridging p12-13]. Therefore, Yoshigahara et al. teaches that benzoyl peroxide and benzophenone derivatives are functional equivalents for the purpose of initiating compositions suitable for use in printed circuit board compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Response to Arguments
Applicant's arguments filed 28 May 2026 have been fully considered but they are not persuasive.
Applicants argue, in reviewing the examples of Lin, relative amounts of coagent to copolymer are less than 9.1%. While Applicants make arguments directed to the examples of Lin et al., applicants are reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123. Lin et al. teaches the triallyl (iso)cyanurate coagent is suitably employed in a concentration of 1 to 40% by weight based upon the weight of the copolymer [0066]. Looking to Example 9 as a starting point, in the instance the triallyl isocyanate is employed in an amount of 33% by weight of the copolymer (i.e. 60 mg), the amount of triallyl isocyanate based on the entire composition is 26.5% by weight, thus falling within the claimed range.
As such, Lin et al. (US Serial No. 2004/0009727), in view of Yeager et al. (US Patent No. 6627704), as evidenced by Brauckman et al. (US Serial No. 2024/0207456) still render obvious the basic claimed composition as required by the instant claim language.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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