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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 05/22/2026 have been entered. Claims 1, 4 and 7-15 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 4 and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigawa et al (JP 2016131243, of record, ‘243 hereafter) in view of Saito et al (US 2018/0170005, ‘005 hereafter) and Hu et al (US 20200095504. ‘504 hereafter).
Regarding claims 1, 4, 7-9 and 15, ‘243 discloses a resin composition containing a maleimide compound represented by following formula reading upon instantly claimed formula (a5) ([0060]-[0061], [0151], BMI-3000, BMI-5000, Examples 3-8), which has a maleimide group equivalent equal to or greater than 400 g/eq satisfying maleimide compound (A1):
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and a maleimide compound (A2) having a maleimide group equivalent less than 400 g/eq ([0151], and BMI 4000 is 2, 2'-bis 4-(4-maleimido phenoxy)phenyl propane with a molecular weight being 570.6, thus the maleimide group equivalent is 285.3, Example 8). The resin composition may also include an epoxy compound having an epoxy equivalent in a range of 200 g/eq to 300 g/eq with a content ratio to maleimide compound satisfying present claims 7 and 8 ([0064]-[0067], [0151], NC-3000H, biphenyl-epoxy, 84:16, Example 5, 4/24.8=16). ‘243 also discloses that the composition may further comprise a styrene copolymer ([0104]-[0109]). ‘243 does not disclose that the resin composition further include a flame retardant phosphine oxide compound with a structure represented by formula (b0). However, in the same field of endeavor of a resin composition for making a prepreg, metal-clad laminate or wiring board, ‘005 discloses a resin composition ([0010]-[0013]) comprising a phosphine oxide having two or more di-phenylphosphine oxide with a melting point equal or higher than 280°C to provide the composition having excellent flame retardancy and other properties (0012]-[0013], [0021]-[0030]), wherein the phosphine oxide having following chemical formulae ([0042]-[0043]) satisfying presently claimed formula (b0):
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,
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.
In light of these teachings, one of ordinary skill in the art would have been motivated to use phosphine oxide compound as taught by ‘005, to modify the resin composition of ‘243, in order to render a resin composition having excellent flame retardancy and other properties. Modified ‘243 does not teach the composition further comprising a reactive flame retardant. However, in the same field of endeavor of resin composition for making a prepreg, metal-clad laminate or wiring board, ‘504 discloses a resin composition ([0005]-[0023]) comprising a reactive flame retardant ([0006]-[0018], a flame retardant having crosslinkable double bonds) to render the composition having improved peal strength for metal foil, thermal resistance, and flame retardancy ([0023], [0140]). In light of these teachings, one of ordinary skill in the art would have been motivated to further add a reactive flame retardant as taught by ‘504, to modify the resin composition of modified ‘243, in order to render a resin composition having better peal strength for metal foil, thermal resistance, and flame retardancy.
Regarding claims 10-14, modified ‘243 teaches all the limitations of claim 1, ‘243 also discloses a prepreg, a film, a metal sheet/laminate and a printed wiring board comprising the resin composition and satisfying all the limitations as presently claimed ([0110]-[0147]).
Response to Arguments
Applicant's arguments filed on 12/23/2025 have been fully considered but they are not persuasive.
Applicant argues that the cited prior art does not teach that use of phosphine oxide compound (B9) with reactive flame retardant further improve flame resistance and reducing dielectric loss tangent. However, as set forth in the rejection part, the cited prior art fairly suggest a resin composition satisfying all the limitations as claimed, which inherently provides the improved flame resistance and dielectric loss tangent as argued. It is noted that the applicant has recognized another advantage which would be flow naturally from following the suggestion of the prior art cannot be basis for patentability when the difference would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In addition, the cited references ‘504 teaches that the phosphine oxide having reactive double bonds renders an epoxy resin composition having better thermal resistance and flame retardancy, thus one of ordinary skill in the art would have been motivated to add reactive flame retardant to improve thermal resistance and flame retardancy of the resin composition.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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