DETAILED ACTION
Applicant’s amendment dated 8 December 2025 is hereby acknowledged. Claims 1-19 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 All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.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.
New grounds of rejection set forth below are necessitated by applicant’s amendment filed on 8 December 2025. For this reason, the present action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-4, 6, 8-10, and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/138992 A1 (“Shigaki”) in view of EP 0572667 A1 (“Yamamoto”).
The citations for WO 2019/138992 A1 refer to US national stage publication US 2021/0032404.
As to claims 1, 2, 4, and 9, Shigaki teaches a resin composition containing a modified polyphenylene ether (abstract) which be an acrylate group of formula (2) (para. 0028) or formula (1) (para. 0041) as required by claims 1 and 4. Shigaki teaches a polymaleimide compound (abstract) which meets the recited definition of claim 2, and is therefore presumed to be reactive with the polyphenylene ether.
While not exemplified, Shigaki teaches the composition may further comprise an elastomeric component may include other components such as elastomers (para. 0080), specifically reciting styrene ethylene butylene styrene, styrene propylene styrene, styrene ethylene propylene styrene, all of which have units of formula (3) and formula (4) as recited.
Shigaki teaches the use of filler in a preferable range of 100 to 250 parts per 100 parts of resin (para. 0074), which is within the recited range, which is preferred for moldability. While not exemplified, Shigaki teaches hat the filler may be inorganic, including boron nitride (para. 0071), and as such, the use of boron nitride is an obvious substitution in the filler as suggested by Shigaki.
Shigaki teaches the use of elastomers in combination with polyphenylene oxide, including styrene block copolymers, but does not teach styrene based polymer having the structural unit of formula (5) . However, it is known from Yamamoto to use of aromatic vinyl isobutylene block copolymers, in particular styrene-isobutylene-styrene (8:25-35) is known to provide excellent heat, impact, and solvent resistance in combination with polyphenylene ether (abstract; p. 8, table 1, showing isobutylene styrene block copolymer; claim 2), which block copolymer would have a unit of formula (3) and a unit of formula (5) of claim 9. As such, the use of such a styrene isobutylene styrene elastomer is an obvious modification known for high compatibility, impact, heat and solvent resistance with polyphenylene ether.
As to claims 3 and 10, Shigaki teaches the utility of silica, which can be used in combination, (paras. 0071, 0073), and as such the use of boron nitride and silica are obvious fillers as suggested by Shigaki.
As to claim 6, while not exemplified, Shigaki teaches the polyphenylene ether may be used in amounts ranging from 15 to 60 parts per 100 parts of the resin components (para. 0069), for low dielectric loss tangent and improved reactivity. It is therefore obvious to modify the composition of Shigaki, including in the recited range, for this purpose.
As to claim 8, while not exemplified, Shigaki teaches a preferable Mw of elastomer (including recited elastomers) of 80000 or more, which includes the recited range (para. 0096). Shigaki teaches this is useful for crack resistance, and is therefore an obvious modification suggested by Shigaki.
As to claim 13, Shigaki teaches prepreg of the composition as recited (paras. 0112-0113), and prepreg is therefore an obvious end use suggested by Shigaki.
As to claim 14, Shigaki teaches the recited end use of the composition on a support film (paras. 0117-0118), and therefore this is an obvious end use.
As to claim 15, Shigaki teaches the resin composition on a metal foil (paras. 0117-0118), and therefore this is an obvious end use.
As to claim 16, Shigaki teaches curing the resin on a sheet, which may be foil (paras. 0118, 0120), and is therefore an obvious end use suggested by Shigaki.
As to claim 17, Shigaki teaches wiring board formed by a layer of the resin composition on a conductor layer which is etched to form a circuit (wiring) (para. 0115), and therefore this is an obvious end use suggested by Shigaki.
As to claim 18, Shigaki teaches a cured product of the prepreg on metal foil (para. 0114), and as such, this is an obvious end use suggested by Shigaki.
As to claim 19, Shigaki teaches a cured product of prepreg with a circuit (wiring) thereon (para. 0115), and as such, this is an obvious end use suggested by Shigaki.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/138992 A1 (“Shigaki”) in view of EP 0572667 A1 (“Yamamoto”) as applied to claim 1, further in view of WO 2018/159080 A1 (“Saito”).
The citations for WO 2018/159080 A1 (“Saito”) are taken from US national stage publication US 2020/0001573.
As to claim 5, Shigaki teaches elastomers, including elastomers meeting the recitation of the styrene resin, but does not teach an amount. Saito teaches compositions of unsaturated group modified polyphenylene ether, and compound including maleimide compound, and elastomer including styrene based compounds of the recited type (paras. 0052-0056), and teaches the use of 5 to 50 parts preferably, which overlaps the recited range, with respect to the polyphenylene ether, maleimide, and elastomer. Saito teaches that this amount provides excellent dielectric properties and viscosity sufficiently low to impregnate (para. 0061). As such, it would be an obvious modification, using styrene elastomer, including in the recited amounts, to provide the advantages as taught by Saito.
As to claim 7, Shigaki teaches various styrene block elastomers, such as styrene (ethylene butylene) styrene, but is silent as to the mole fraction of formula (3) (styrene units). Saito teaches compositions of unsaturated group modified polyphenylene ether, and compound including maleimide compound, and elastomer including styrene based compounds of the recited type (paras. 0052-0056), and teaches SEBS polymers, and teaches a preferred SEBS polymer having 18 mole percent styrene units (paras. 0055, 0056). Saito teaches these elastomers provide improved dielectric properties (para. 0061), and as such, the use of the recited resin is an obvious modification suggested by Saito for improved dielectric properties.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/138992 A1 (“Shigaki”) in view of EP 0572667 A1 (“Yamamoto”) as applied to claim 1, further in view of JP 2008-050526 A (“Abe”).
A partial machine translation of JP 2008-050526 A is enclosed.
As to claim 11, Shigaki teaches the filler may be fillers including boron nitride and silica, but does not teach the recited proportions. Abe teaches polyphenylene ether compositions for similar dielectric purposes. Abe teaches the use of boron nitride that is low dielectric constant in combination with spherical silica for flowability (para. 0028-0029). Abe exemplifies combinations of boron nitride and silica in proportions within the recited range (see e.g., para. 0046, example 1, and table 1, teaching 40 parts boron nitride to 80 parts silica, or 33:67 ratio).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/138992 A1 (“Shigaki”) in view of EP 0572667 A1 (“Yamamoto”) as applied to claim 1, further in view of US 2016/0362527 (“Koes”) and WO 2018/093987 A1 (“Zhang”).
As to claim 12, Shigaki does not teach the recited dielectric loss tangent and thermal conductivity. However, Koes teaches similar compositions of vinyl terminated polyphenylene ether, and teaches forming layers such that the Df (dielectric loss tangent) is preferably less than 0.003 at 10 GHz (para. 0090), and therefore it would be obvious to modify the composition to obtain such a Df. Koes teaches that boron nitride may be added to increase thermal conductivity, but does not discuss the overall thermal conductivity of the cured product. Zhang teaches the use of boron nitride in polymeric matrix (abstract), including polyphenylene ethers (para. 0096). Zhang teaches obtaining Df of 0.006 or lower (para. 0112), which includes the recited range, and thermal conductivity of 0.5 to 10 W/mK, which substantially overlaps the recited range (para. 0025). Given the teaching of Koes that dielectric loss tangent in the recited range can be obtained with curable polyphenylene ether compositions, and the teaching of Zhang that thermal conductivity of the recited range can be obtained using boron nitride, t is considered to be within the skill of a person of ordinary skill in the art to obtain the recited dielectric loss factor and thermal conductivity in recited ranges.
Response to Arguments
Applicant's arguments filed 8 December 2025 have been fully considered but they are not persuasive.
Specifically, applicant’s arguments all stem from Shigaki’s nondisclosure of SIBS copolymer. However, applicant’s arguments do not address that the SIBS copolymer was addressed in the previous action by the rejection of claim 9 over Shigaki in view of Yamamoto, the latter of which teaches the utility of SIBS type resins for providing excellent heat, impact, and solvent resistance in combination with polyphenylene ether. Moreover, a review of applicant’s examples and comparative examples in the specification do not suggest a significant difference that would suggests unexpected results.
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.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764